WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
DK Company Vejle A/S v. Cody Favre, C4 Squared
Case No. D2019-2676
1. The Parties
The Complainant is DK Company Vejle A/S, Denmark, represented by Patrade A/S, Denmark.
The Respondent is Cody Favre, C4 Squared, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <shopcasualfriday.com> (the “Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 31, 2019. On November 1, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 4, 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 November 4, 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 November 6, 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 November 7, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 27, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 29, 2019.
The Center appointed Nick J. Gardner as the sole panelist in this matter on December 3, 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 contains a great deal of detail about the Complainant’s registered trademarks but very little information about the Complainant or its business. It appears to be a company incorporated in Denmark. Exercising its discretion the Panel has visited the Complainant’s website at “www.casual-friday.eu”. The Complainant appears to be a manufacturer or retailer of clothing. It appears to sell its products online in various European jurisdictions. It owns various figurative trademarks which feature the words “casual friday” within the design in question – for example European Union trademark No. 014878714 registered on March 25, 2016. These trademarks are referred to collectively in this decision as the “CASUAL FRIDAY trademark”.
The Panel does not know anything further about the extent of the Complainant’s business or whether it has any retail outlets. There is no evidence before the Panel of it having any business activity in the United States. None of its trademark registrations relate to the United States so far as the Panel can see on the evidence as filed.
The Disputed Domain Name was registered on March 15, 2019. The Disputed Domain Name resolves to a website (the “Respondent’s Website”) which is an online shop offering clothing and leisurewear for sale. The Panel has exercised its discretion and visited that website. It appears to be a bona fide online retailer of clothing. The “about” page describes its business as follows: “Casual Friday is an online boutique based in New Orleans, LA, full of comfortable athleisure [sic] and loungewear with a fashion edge…the kind of clothes that look stylish and fit a woman’s busy daily routine. Each piece is picked with the fast paced life of the modern woman in mind and designed for many body types, personalities and lifestyles. Customers will find the clothing is not only well made and flattering, it is affordable and classically trendy”.
5. Parties’ Contentions
The Complainant says that the words “Casual Friday” are the dominant part of the figurative CASUAL FRIDAY trademark and on this basis the Disputed Domain Name is confusingly similar to this trademark. The Complainant argues that the addition of the descriptive term “shop” does not distinguish the Disputed Domain Name.
So far as the Respondents lack of any rights or legitimate interests is concerned the Complainant says as follows:
“In our search related to this matter we have not been able to identify that the Respondent is making a legitimate noncommercial or fair use of the domain name. The disputed domain name points to a webpage which features a webshop selling various types of clothes and is having worldwide shipping options. As stated above in section A, it is substantiated that the domain name is confusingly similar with the Complainant’s trademark. The entire use of the trademark in the domain name is likely to confuse the visitors of the webpage to believe that the webpage is operated by the Complainant or associated with the Complainant. The Respondent has no right to use the ‘Casual Friday’ trademark, which is either contained purposely within the domain name as a means to attract customers in a commercial sense or carries the risk of confusion and thus unwarranted commercial gain.”
So far as bad faith is concerned the Complainant in effect relies on the fact its trademarks were registered before the Disputed Domain Name and that the Complainant must have had knowledge of them. Thus, it says for example:
“the Respondent should have had knowledge of the Complainant’s trademark at the time of the registration of the domain name, because of the sale and marketing of the Respondent’s goods to Europe.”
The Complainant also relies on the fact the Respondent has not replied to correspondence the Complainant has sent asserting its rights.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Panel notes that no communication has been received from the Respondent. However, given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar then the Panel considers that this satisfies the requirement in paragraph 2(a) of the Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) the Disputed Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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 Panel finds that the Complainant has rights in the CASUAL FRIDAY trademark. The Complainant has submitted detailed evidence that it is the owner of various trademarks, which include the words Casual Friday. Each of the trademarks is a device mark but each features prominently as part of the registered device the words “Casual Friday” and in these circumstances, the Panel concludes the Disputed Domain Name is similar to each of the above trademarks. Similarity between a domain name and a device mark which includes words or letters is a readily accepted principle where the words or letters comprise a prominent part of the trademark in question – see for example EFG Bank European Financial Group SA v. Jacob Foundation, WIPO Case No. D2000-0036 and Sweeps Vacuum & Repair Centre, Inc. v. Nett Corp, WIPO Case No. D2001-0031.
The Disputed Domain Name is confusingly similar to the CASUAL FRIDAY trademark. The test for confusing similarity involves the comparison between the trademark and the Disputed Domain Name. Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).
It is also well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar – see for example Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Accordingly the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
In view of the Panel’s finding below in relation to bad faith, the Panel does not need to resolve this issue.
C. Registered and Used in Bad Faith
The Panel finds that there is no evidence to suggest that the Disputed Domain Name has been registered and used in bad faith. The difficulty the Complainant faces is that the words “Casual Friday” are two ordinary English words. Moreover they are, as a matter of general knowledge, words which are commonly adopted by businesses to describe a practice allowing employees to dress in less formal attire at work on a Friday. It seems to the Panel given that situation it is likely that retailers of casual clothing may well independently derive a name based on or including that term. The Panel finds that on the evidence before it that it is more likely than not that this is why the Respondent has adopted the Disputed Domain Name.
In reaching this conclusion, the Panel has considered the Complainant’s case that the Respondent must have had the Complainant’s use of the words “Casual Friday” in mind when it registered the Disputed Domain Name. The Panel finds on balance that case to be unconvincing. The difficulty with that case is that the Complainant has provided no information as to the size or reputation of its business, and such limited evidence as it does provide indicates its business is entirely European. The Complainant says that its CASUAL FRIDAY trademark is “widely known” in the European Union but provides no evidence to substantiate that assertion. There is nothing before the Panel to suggest that a United States retailer would have had any knowledge of the Complainant or, had it carried out searches, would have found any reason to conclude it could not adopt the words as part of a name for use in the United States.
The Complainant’s case, such as it is, appears to be based on an argument that because the Respondent offers to ship goods worldwide it must have been aware of the Complainant. The entire basis for that argument appears to be that the relevant “drop down” address form on the Respondent’s Website contains a worldwide list of countries (as is commonplace on such forms) and hence includes European countries. There is no evidence before the Panel that the Respondent has ever shipped anything to Europe or even whether it would be prepared to do so. In any event, the Panel finds the Complainant’s argument unconvincing. The Respondent’s Website is clearly directed at the United States. Its products are priced in USD and it offers free shipping to United States addresses. The fact it may be prepared to ship elsewhere (assuming that is the case) if a buyer pays the relevant delivery cost does not in the Panel’s opinion mean it either was or should have been aware of the Complainant or its CASUAL FRIDAY trademarks.
The Panel does not consider that the Respondent’s failure to reply to correspondence alters this analysis. The Respondent is entitled if it wishes to ignore correspondence that set out a claim which was without merit.
Accordingly, the Panel concludes there is no credible evidence to establish bad faith on the part of the Respondent and the Complainant has failed to discharge its burden of proof and has failed to establish that the third condition of paragraph 4(a) of the Policy has been fulfilled.
For the foregoing reasons, the Complaint is denied.
Nick J. Gardner
Date: December 17, 2019