WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wacoal Corp. and Wacoal America, Inc. v. Domain Administrator, Fundacion Privacy Services LTD
Case No. D2019-0905
1. The Parties
The Complainants are Wacoal Corp., Japan and Wacoal America, Inc., United States of America (“United States”), represented by Mauriel Kapouytian Woods LLP, United States.
The Respondent is Domain Administrator, Fundacion Privacy Services LTD, Panama.
2. The Domain Name and Registrar
The disputed domain name <wacol-america.com> is registered with Media Elite Holdings Limited dba Register Matrix (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 22, 2019. On April 23, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 24, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 29, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 19, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 20, 2019.
The Center appointed Marilena Comanescu as the sole panelist in this matter on May 31, 2019. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainants, with headquarters in Kyoto, Japan are engaged in the design, manufacture and distribution of intimate apparel, including undergarments.
The Complainants own several trademark registrations for or including the word WACOAL, such as the United States word trademark registration No. 1839485 filed on August 23, 1993 and registered on June 14, 1994 for goods in IC 25.
The Complainants claim to have used the trademark WACOAL since at least as early as 1980 for intimate apparel and they contend that this name has achieved an international reputation for luxurious high-quality products as well as fame, distinctiveness, and significant good will in the United States, Asia and Europe.
The Complainants’ official website is available at “www.wacoal-america.com”, registered in April 1996.
The disputed domain name <wacol-america.com> was registered on March 16, 2006 and, according to the evidence provided in the Complaint and not rebutted by the Respondent, it was used to redirect Internet users to the Complainants’ competitors’ websites or to malware websites.
5. Parties’ Contentions
The Complainants contend that the disputed domain name is confusingly similar to their coined famous WACOAL trademark with a minor misspelling and additional word “america”, the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
In view of the Respondent’s default, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel will further analyze the potential concurrence of the above circumstances.
A. Identical or Confusingly Similar
The Complainants hold rights in the WACOAL trademark.
The disputed domain name <wacol-america.com> incorporates the Complainants’ trademark WACOAL with an obvious misspelling – the omission of the second letter “a” and the addition of the geographical term “america”. However, such minor alterations do not prevent a finding of confusing similarity as the Complainants’ trademark is clearly recognizable within the disputed domain name.
Numerous UDRP panels have considered that the addition of other terms (whether geographical, descriptive, pejorative, meaningless or otherwise) to trademarks in a domain name does not avoid a finding of confusing similarity. Also, a domain name which consists of a common, obvious or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for the purpose of the first element. See sections 1.8 and 1.9 of theWIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Further, it is well established in decisions under the UDRP that the generic Top-Level Domain (“gTLD”) (e.g., “.net”, “.info”, “.com”, “.org”) may typically be disregarded for the purposes of consideration of confusing similarity between a trademark and a domain name.
Given the above, the Panel finds that the disputed domain name <wacol-america.com> is confusingly similar to the Complainants’ trademark WACOAL, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Complainants assert that the Respondent does not hold any trademark rights, license or authorization whatsoever to use their mark WACOAL, that the Respondent is not commonly known by the disputed domain name and that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or fair use or a bona fide offering of goods and services.
Under the Policy, “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”. See section 2.1 of theWIPO Overview 3.0.
The Respondent has not replied to the Complainants’ contentions and has not come forward with relevant evidence to rebut the Complainants’ prima facie case.
There is nothing in the record suggesting that the Respondent has ever been commonly known by the disputed domain name.
The Respondent has used the disputed domain name in connection with a website promoting competing goods to those offered by the Complainants or in relation to malware websites. This is definitely not an activity falling under the circumstances listed by paragraph 4(c) of the UDRP as demonstrating the Respondent’s rights or legitimate interests in the disputed domain name.
Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The Complainants hold trademark rights since at least 1994 and their mark is a distinctive and invented word. The disputed domain name was created in 2006 and incorporates the Complainant’s mark with an obvious misspelling and a geographical term. For the above, the Panel finds that the disputed domain name was registered in bad faith, knowing and targeting the Complainants and their WACOAL trademark.
According to the evidence provided in the Complaint, the disputed domain name was used to redirect Internet users to the Complainants’ competitors’ websites and to malware websites.
Paragraph 4(b)(iv) of the Policy provides that the use of a domain name to intentionally attempt “to attract, for commercial gain, Internet users to [the respondent’s] website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location” is evidence of registration and use in bad faith.
The Respondent was using without permission the Complainants’ trademark in order to get traffic on its web portal and to obtain commercial gain from the false impression created for the Internet users with regard to a potential affiliation or connection with the Complainants. Except for maliciously diverting Internet users searching for the Complainant to other websites or malware websites, such action also tarnishes the Complainants’ trademark.
Furthermore, the Respondent registered the disputed domain name under a proxy service and refused to participate in the present proceeding in order to provide arguments in its favor. Having in view the other circumstances of this case, such facts constitute further evidence of bad faith behavior.
For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith, pursuant to the Policy, paragraph 4(a)(iii).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <wacol-america.com> be transferred to the Complainants.
Date: June 10, 2019