WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
B.Z. Moda S.R.L. v. Clifford Reichert
Case No. D2019-1605
1. The Parties
The Complainant is B.Z. Moda S.R.L., Italy, represented by Weber & Sauberschwarz, Germany.
The Respondent is Clifford Reichert, United States of America.
2. The Domain Name and Registrar
The disputed domain name <everybody-shoes.com> is registered with 1API GmbH (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2019. On July 9, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 10, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 10, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 15, 2019.
The Center verified that the Complaint, together with the amended 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 July 16, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 5, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 6, 2019.
The Center appointed Antony Gold as the sole panelist in this matter on August 13, 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 Complainant is a shoe manufacturer located in Stra, Veneto, Italy. It sells its shoes through online markets directed at a number of European countries, such as the websites “www.amazon.de”, “www.zalando.de”, and “www.zalando.co.uk”. It does not, at present, sell products via a website of its own.
The Complainant has an International Trade Mark, registration number IR 1060920, for the stylized word mark EVERYBODY BY B.Z. MODA, dated August 10, 2010, in class 25 (footwear). The word EVERYBODY is placed above, and in larger font, than the remaining text. The registration describes the mark in the following terms; “[t]he mark consists of a sign depicting the wording EVERYBODY in fancy characters, placed under which, between the lower portions of the two Y letters, is the wording BY B.Z. MODA in fancy characters and of a smaller size, both letters that comprise the initials BZ followed by a full stop”.
When the Complainant’s shoes are sold in online markets they are typically described as “EVERYBODY” shoes, although its stylized mark sometimes features at the top of webpages promoting a range of its footwear.
The disputed domain name was registered on May 26, 2017. It resolves to a website branded, on the home page and throughout, as “everybody” in upper case letters. It advertises for sale shoes, also branded as “everybody”, which appear to be those of the Complainant.
5. Parties’ Contentions
The Complainant says that the disputed domain name is identical or confusingly similar to a trade mark in which it has rights. It refers to its International Trade Mark for EVERYBODY BY B.Z. MODA, full details of which are given above. The disputed domain name constitutes an identical adoption of the main element of the Complainant’s trade mark EVERYBODY. “Shoes” is a generic term in relation to footwear and the likelihood of confusion between the registered trade mark and the disputed domain name is obvious.
The Complainant says that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Its contentions (in full) are; “[t]here are no circumstances present which give rise to a right or legitimate interest in the domain name. In addition, the website is not used for a legitimate noncommercial or fair use”.
Lastly, the Complainant says that the domain name was registered and is being used in bad faith. The Complainant registered its trade mark in 2010, seven years before the disputed domain name was registered. Accordingly, there can be no contention that the Complainant staked its trade mark claim well in advance of the Respondent’s registration of the disputed domain name. The Complainant’s trade mark has been registered in many countries outside the European Union. Therefore, it was obvious that the Complainant would need a domain name for an international website with the top-level domain “.com”. Accordingly, it can be assumed that the Respondent was in bad faith when he registered the disputed domain name.
A further indication is that the disputed domain name resolves to an online shop offering the Complainant’s EVERYBODY shoes at reduced prices. So, the circumstances indicate that the disputed domain name was registered primarily for the purpose of resolving to an online shop that evokes the impression of being an authorized dealer. The online shop is not a serious online shop and does not disclose the underlying legal entity which runs it. The Respondent’s intention in registering and using the disputed domain name has been to cause confusion with the Complainant’s mark.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Dealing, first, with the Respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.
Paragraph 4(a) of the Policy provides that the Complainant proves each of the following three elements in order to succeed in its Complaint:
(i)the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name is not identical to the Complainant’s registered trade mark. In order to determine whether it is confusingly similar, the starting point for the comparison is, first, to disregard the generic Top Level Domain (“gTLD”) component of the disputed domain name, that is “.com”, as this is a technical requirement of registration.
Section 1.10 of theWIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) explains the approach to be taken in respect of the remaining text; “[p]anel assessment of identity or confusing similarity involves comparing the (alpha-numeric) domain name and the textual components of the relevant mark. To the extent that design (or figurative/stylized) elements would be incapable of representation in domain names, these elements are largely disregarded for purposes of assessing identity or confusing similarity under the first element”. The comparison is then between the word-only component of the Complainant’s stylized word mark, namely EVERYBODY BY B.Z. MODA, and the “everybody-shoes” component of the disputed domain name.
Applying the principles articulated above, the extent to which the disputed domain name could be considered confusingly similar to the Complainant’s trade mark, given the additional elements of each beyond the “everybody” position, may benefit from further analysis. That is, there are three additional, and somewhat obvious in UDRP practice terms, factors which require consideration. First, the way in which a complainant’s obligations under paragraph 4(a) of the Policy are generally interpreted is that the bar is as relatively straightforward for the first element of the Policy. As section 1.7 of the WIPO Overview 3.0 explains: “[p]anels view the first element as a threshold test concerning a trademark owner’s standing to file a UDRP complaint, i.e., to ascertain whether there is a sufficient nexus to assess the principles captured in the second and third elements”. Second, as section 1.7 of the WIPO Overview 3.0 also explains; “…in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”. The “everybody” component of the Complainant’s trade mark, on the evidence before the Panel, is apparently distinctive in relation to footwear and would generally be considered as the dominant feature of the mark. Moreover, it is clearly recognizable in the disputed domain name.
The final factor impacting on the Panel’s assessment arises from the practice of some UDRP panels, when assessing circumstances in which the question of whether a domain name is considered to be confusingly similar to a complainant’s trade mark may benefit from further analysis, to have had regard to the content of the website to which the domain name resolves. See, again section 1.7 of the WIPO Overview 3.0; “[i]n specific limited instances, while not a replacement as such for the typical side-by-side comparison, where a panel would benefit from affirmation as to confusing similarity with the complainant’s mark, the broader case context such as website content trading off the complainant’s reputation… may support a finding of confusing similarity”. And also; “…panels have also found that the overall facts and circumstances of a case (including relevant website content) may support a finding of confusing similarity, particularly where it appears that the respondent registered the domain name precisely because it believed that the domain name was confusingly similar to a mark held by the complainant”.
For these reasons, in Supercell Oy v. WhoisProxy.com Ltd / Jordan Rash, Application Automation LLC, WIPO Case No. D2015-1445, following consideration of the respondent’s website content, the domain name <clashbot.org> was found confusingly similar to the complainant’s CLASH OF CLANS trade mark. Similarly, in Golden Goose S.p.A. v. Phillipp Fischer, WIPO Case No. D2017-1010, the domain name <goldenoutlet2017.com> was found to be confusingly similar to the complainant’s mark for GOLDEN GOOSE DELUXE BRAND.
The Panel’s assessment of the Respondent’s website is set out in greater detail below but, in summary, it appears intended deliberately to confuse Internet users into believing either that it is selling the Complainant’s goods with its authority or (more likely) that the website is actually that of the Complainant. This has a direct bearing on whether the disputed domain name should be considered confusingly similar to the Complainant’s mark as the disputed domain name was evidently registered because of its propensity to suggest a commercial affiliation with the Complainant. For this reason, taken in combination with the other two factors outlined above, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s mark and that the first element of the Policy is therefore satisfied.
B. Rights or Legitimate Interests
The Policy sets out at paragraph 4(c) examples of circumstances, without limitation, by which a respondent may demonstrate rights or legitimate interests in a disputed domain name. These are, summarized very briefly: (i) if the respondent has been using the domain name in connection with a bona fide offering of goods and services; (ii) if the respondent has been commonly known by the domain name; or (iii) if the respondent has been making a legitimate noncommercial or fair use of the domain name.
How these provisions are usually applied in practice is explained in the WIPO Overview 3.0. This explains that the consensus view of panelists is that “[w]hile the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ʻproving a negativeʼ, requiring information that is often primarily within the knowledge or control of the respondent. As such, 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”.
It is a straightforward exercise to discount the applicability of the second and third circumstances outlined at section 4(c) of the Policy; there is no evidence that the Respondent has been known by the disputed domain name and his use of the disputed domain name is commercial in character. Whether the Respondent’s website might be considered to comprise a bona fide offering of goods and services requires more detailed consideration. Whilst the Complainant has provided screen prints of parts of the Respondent’s website, it is helpful to have as informed an understanding as possible of the entire website. The circumstances in which a panel might visit a respondent’s website are outlined at section 4.8 of the WIPO Overview 3.0; “[n]oting in particular the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the UDRP Rules, it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision. This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent or its use of the domain name”.
The Panel, having visited the website to which the disputed domain name resolves, the product range, style and product descriptors on the Respondent’s website are the same, or very similar, to the products the Complainant offers for sale through third party websites. The descriptor “Everybody” is applied to each item of footwear offered for sale by the Respondent. In addition, each page of the Respondent’s website is prominently headed with the word “Everybody”. The fact that this is the word most frequently used to denote the Complainant’s products is likely to lead Internet users to conclude that the Respondent’s website is either a website established by the Complainant for the purposes of selling its products online or that it is a website of an authorized distributor of the Complainant. This is particularly the case because the website is devoid of any branding, other than that which alludes to the Complainant, and does not contain any information which might identify the party operating it. By way of example, there is no “About us” section, the “Contact us” section does not provide any contact details, and the “Privacy Notice” and the “Shipping & Returns” policy also lack any information which would identify the site operator.
To the extent that Internet users might conclude that the Respondent’s website is that of a reseller of its products, UDRP panels generally apply the criteria first set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, when considering whether a reseller might have rights or a legitimate interest in a domain name incorporating a complainant’s trade mark. These indicate that, in order to for a respondent’s website to comprise a bona fide offering of goods and services the following cumulative requirements should be satisfied: (i) the respondent must actually be offering the goods or services at issue; (ii) the respondent must use the site to sell only the trademarked goods or services; (iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and (iv) the respondent must not try to “corner the market” in domain names that reflect the trademark. The third condition under Oki Data is not fulfilled; as outlined above, there is no information at all on the Respondent’s website about him, his business or his lack of any relationship with the Complainant, and the concealment of the party operating the website is very likely to be intentional on his part. The Panel therefore concludes that the disputed domain name is not being used in connection with a genuine offer of goods and services.
For these reasons, and notwithstanding that the Complainant’s submissions in respect of the second element under the Policy have been unusually brief, there is a prima facie case that this element is satisfied and the burden of production shifts to the Respondent. The Respondent having failed to respond to the Complaint, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant’s registered trade mark rights were acquired approximately seven years prior to the Respondent’s registration of the disputed domain name. It is reasonable to infer that the Complainant’s products have been on the market for at least a similar period of time and that the Respondent was aware of the Complainant as at the date of registration of the disputed domain name.
Paragraph 4(b) of the Policy sets out, without limitation, circumstances which, if found by a panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The circumstance at paragraph 4(b)(iv), in summary, is that, by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.
The use to which the Respondent has put the disputed domain name falls within these circumstances in that it points to a website which purports to be operated by the Complainant or with its authority and makes liberal use of “everybody”, being the most distinctive element of the Complainant’s trade mark. The belief of Internet users that the Respondent’s website is operated by, or on behalf of, the Complainant will be reinforced because of the confusing similarity between the disputed domain name and the Complainant’s registered trade mark. Moreover, having regard to the fact that the disputed domain name combines the dominant feature of the Complainant’s trade mark with the word “shoes”, being the products for which the mark has been registered, there is no conceivable good faith use which the Respondent could make of the disputed domain name. Indeed, the Respondent has not made any attempt to justify its conduct or to rebut the Complainant’s assertions.
For these reasons, the Panel finds that the disputed domain name was both registered and is being used in bad faith.
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, <everybody-shoes.com>, be transferred to the Complainant.
Date: August 27, 2019