WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kayser-Roth Corporation v. Contact Privacy Inc. Customer 0156126995 / Madison Whittaker
Case No. D2020-1068
1. The Parties
The Complainant is Kayser-Roth Corporation, United States of America (“United States”), represented by Fox Rothschild LLP, United States.
The Respondent is Contact Privacy Inc. Customer 0156126995, Canada / Madison Whittaker, United States, self-represented.
2. The Domain Name and Registrar
The disputed domain name <nononsensenyc.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 30, 2020. On April 30, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 1, 2020, 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 May 4, 2020 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 amendment to the Complaint on May 5, 2020.
The Center verified that the Complaint together with the amendment to 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 May 12, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 1, 2020. The Response was filed with the Center on May 31, 2020.
The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on June 10, 2020. 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
Complainant owns rights to the trademark NO NONSENSE used in connection with various clothing and apparel products, including belts, sweaters, jackets, slacks, blouses, undershorts, hosiery, socks, ties, and shirts. Complainant has been using its NO NONSENSE trademark (“Complainant’s Mark”) since at least as early as 1972 and owns various trademark registrations for the mark, including United States Trademark Registration Nos. 5,498,081 (registered on June 19, 2018), 4,645,159 (registered on November 25, 2014), and 3,394,492 (registered March 11, 2008). Complainant also owns and operates the “www.nononsense.com” website, through which it sells its clothing and apparel products under the NO NONSENSE mark.
The disputed domain name, <nononsensenyc.com>, was registered on August 14, 2019, and resolves to a website where users can purchase shirts, outerwear, and tote bags bearing the text “nononsense”.
5. Parties’ Contentions
Complainant argues that the disputed domain name is confusingly similar to its NO NONSENSE trademarks because it reproduces identically and entirely the NO NONSENSE mark. Complainant further argues that Respondent has no rights or legitimate interests in the disputed domain name because Complainant’s rights in the NO NONSENSE mark precede any trademark rights Respondent may claim over the NO NONSENSE mark. Lastly, Complainant alleges that Respondent has registered and is using the disputed domain name in bad faith to benefit from the goodwill associated with Complainant’s Mark. According to Complainant, Respondent’s complete reproduction of Complainant’s Mark in the disputed domain name demonstrates that Respondent intended to disrupt Complainant’s business. Such conduct, according to Complainant, represents an intentional attempt to attract for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s apparel products advertised on the Respondent’s website.
Respondent alleges that the disputed domain name is “distinctly different” from and “in no way similar to” Complainant’s Mark because it includes the abbreviation for New York City, “NYC”. Furthermore, Respondent asserts that the “website company name” is “nononsensenyc” again implying that the name is distinct from Complainant’s Mark. Respondent also asserts that “Nononsencenyc is primarily a blog and the fashionable apparel sold is a tote bag, hoodie and tee shirt. The sales are primarily in New York for local models”. Respondent further alleges that there was no intention of infringing the Complainant’s NO NONSENSE mark or logo.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
Furthermore, section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that given the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true. Panels have typically treated a respondent’s submission of a so-called “informal response” (merely making unsupported conclusory statements and/or failing to specifically address the case merits as they relate to the three UDRP elements, e.g., simply asserting that the case “has no merit” and demanding that it be dismissed) in a similar manner as a respondent default. Id.
Thus, even though Respondent has failed to address some of Complainant’s contentions in the Response, the burden remains with Complainant to establish all three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006‑0340.
A. Identical or Confusingly Similar
Ownership of a nationally registered trademark constitutes prima facie evidence that the complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has provided evidence that it has rights in the NO NONSENSE trademarks through its United States registrations.
With Complainant’s rights in the NO NONSENSE marks established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the Top-Level Domain (“TLD”) in which the domain name is registered) is identical or confusingly similar to Complainant’s marks. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview 3.0, section 1.7. It is also well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of a descriptive word or suffix. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo, WIPO Case No. D2011-0795. As stated in section 1.8 of the WIPO Overview 3.0, “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. See Hoffmann-La Roche Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923.
Here, Complainant’s NO NONSENSE mark is fully incorporated in the disputed domain name, and the addition of the geographical term “NYC” does not prevent a finding of confusing similarity. See, e.g., Merck KgaA v. Registrant : Chen Yan Hua, WIPO Case No. D2011-1010. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its trademark rights and showing that the disputed domain name is confusingly similar to Complainant’s NO NONSENSE mark.
B. Rights or Legitimate Interests
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such a prima facie case is made, the respondent carries the burden of production of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.
Paragraph 4(c) of the Policy lists the ways that a respondent may demonstrate rights or legitimate interests in the domain name:
(i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
While 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 “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. WIPO Overview 3.0, section 2.1. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden then shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. Id.
In this case, the Panel finds that the Complainant has made out a prima facie case by demonstrating its rights in the NO NONSENSE mark that long predate the disputed domain name’s registration and that Respondent is not making a bona fide commercial or legitimate noncommercial use of the disputed domain name, nor is Respondent (as an individual or business) commonly known by the disputed domain name. The burden was therefore on Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Respondent offered no such evidence. The most that could be drawn from Respondent’s minimal Response is that Respondent is asserting that he or an affiliated company has become known by the disputed domain name, which could be potential grounds for establishing a defense under paragraph 4(c)(ii) of the Policy. However, the record shows that the disputed domain name is registered in Respondent’s individual name, not on behalf of this alleged company, and Respondent has not provided any further evidence to support the apparent claim that Respondent’s business is commonly known by the disputed domain name. Thus, the Panel is unable to find that Respondent has presented evidence to show potential rights or legitimate interest in the disputed domain name on this ground, and thereby overcoming Complainant’s prima facie case.
Respondent is also not using the disputed domain name in connection with any bona fide offering of goods or services, nor is Respondent making a legitimate noncommercial or fair use of the disputed domain name. Complainant has established that it has rights in the NO NONSENSE mark that long predate the disputed domain name’s registration and Complainant has asserted that it has never authorized Respondent to use the Complainant’s Mark or any variation thereof. Therefore, Respondent’s offering of goods highly similar to those offered under a trademark he was not authorized, licensed nor permitted to use cannot be considered bona fide within the meaning of paragraph 4(c)(i) of the Policy. A finding to the contrary would run against the intent of paragraph 4(c)(i) of the Policy. See American Eyewear, Inc. v. Thralow, Inc., WIPO Case No. D2001-0991 (stating “[a]lthough use in connection with the sale of goods and services, is apparent, our inquiry must go further since not all such use qualifies as bona fide use. ‘To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy.’” (quoting Ciccone v. Parisi, WIPO Case No. D2000-0847)). Further, given the use of the disputed domain name to offer products for sale, Respondent cannot demonstrate that the disputed domain name has been used for a legitimate noncommercial use.
Therefore, Respondent has failed to rebut Complainant’s allegations and evidence, and the Panel concludes that Respondent does not have rights or a legitimate interest in the disputed domain names within the meaning of Policy paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b)(ii) that bad faith registration and use can be found when a respondent registered the domain name primarily for the purpose of disrupting the business of a competitor.
The Policy also indicates in paragraph 4(b)(iv) that bad faith registration and use can be found when, by using a disputed domain name, a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
In this case, bad faith can be found in the registration and use of the disputed domain name. Complainant provided ample evidence to demonstrate its long-standing rights in the NO NONSENSE mark that long predate Respondent’s registration of the disputed domain name. Therefore, Respondent was likely aware of the NO NONSENSE trademark when he registered the disputed domain name, or knew or should have known that the disputed domain name was identical or confusingly similar to Complainant’s NO NONSENSE marks. See WIPO Overview 3.0, section 3.2.1; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited, WIPO Case No. D2016-1973. This is particularly true given that Respondent appears to be familiar with the fashion and apparel industry in which Complainant operates.
Respondent is also using the disputed domain name in bad faith. Despite assertions by Respondent that the disputed domain name and content thereon are not similar to Complainant’s NO NONSENSE mark, the Panel has found that the disputed domain name is confusingly similar to this mark. Further, while Respondent has contended that the primary use of the disputed domain name is for a blog, which by itself could potentially be considered a legitimate noncommercial use of the disputed domain name, Respondent’s admission that he sells tote bags, hooded sweatshirts, and tee shirts – which are substantially similar to goods offered by Complainant under its NO NONSENSE mark – must be deemed to constitute a commercial use of the disputed domain name by Respondent which trades on the goodwill associated with Complainant’s Mark for Respondent’s benefit. Furthermore, other panels have also found this kind of activity as an indication that a respondent was seeking to disrupt the business of a competitor. Travellers Exchange Corporation Limited v. Travelex Forex Money Changer Case, WIPO Case No. D2011-1364 (“[T]he Panel concludes that Respondent undoubtedly had Complainant’s TRAVELEX mark in mind when registering the Domain Name[…] The Panel concludes that Respondent is seeking to disrupt the business of a competitor, Complainant, by offering at its website the very services Complainant has offered….”).
Respondent has not presented any evidence contradicting these allegations. Therefore, the Panel finds that Respondent intentionally attempted to attract, for commercial gain, Internet users to his website or other online location, by creating a likelihood of confusion with a complainant’s mark and registered the disputed domain name primarily for the purpose of disrupting the business of a competitor as this term is broadly understood in the context of the Policy. See, e.g., WIPO Overview 3.0, section 3.1.3 (Noting that panels have applied the notion of a “competitor” beyond the concept of an ordinary commercial or business competitor to also include the concept of “a person who acts in opposition to another” for some means of commercial gain, direct or otherwise).
For these reasons, this Panel finds that Respondent’s registration and use of the disputed domain name were in bad faith, within the meaning of paragraphs 4(b)(iii) and 4(b)(iv) of the Policy.
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, <nononsensenyc.com> be transferred to the Complainant.
Brian J. Winterfeldt
Date: June 24, 2020