WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
TBNR, LLC. v. Host Master, Transure Enterprise Ltd
Case No. D2020-1158
1. The Parties
Complainant is TBNR, LLC., United States of America (“United States”), represented by Brackett & Ellis, P.C., United States.
Respondent is Host Master, Transure Enterprise Ltd, United States.
2. The Domain Names and Registrar
The disputed domain names <prestonstyles.com> and <prestonstylez.com> are registered with Above.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 8, 2020. On May 11, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 12, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 14, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May 14, 2020.
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 Respondent of the Complaint, and the proceedings commenced on May 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 4, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 6, 2020.
The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on June 13, 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 operates an online retail store selling clothing and related items targeting youth and young adults under its PRESTONS STYLEZ mark (“Complainant’s Mark”). Complainant has been continuously using the PRESTONS STYLEZ mark since September 1, 2015. It owns various trademark registrations for the PRESTONS STYLEZ mark, including United States registration number 5108401 (registered on December 27, 2016). Complainant primarily conducts its sales through its main website located at “www.prestonsstylez.com”.
The disputed domain names, <prestonstylez.com> and <prestonstyles.com>, were registered on September 9, 2015 and October 1, 2015, respectively. The disputed domain name <prestonstylez.com> resolved to a webpage notifying Internet users that they must download an extension to their web browser before being able to proceed to the actual destination website. The disputed domain name <prestonstyles.com> resolved to a webpage displaying links relating to clothing similar to the goods covered by Complainant’s Mark along with names or taglines that Complainant also uses in connection with the clothing it sells.
Respondent has been the losing respondent in previous UDRP proceedings. See, e.g., FCA US LLC v. Host Master, Transure Enterprise Ltd, WIPO Case No. D2019-31011 (“[Transure Enterprises Ltd.] has been named in many other cases in which it targeted well-known marks in a domain name, which the panels ordered transferred to the trademark owner.”
5. Parties’ Contentions
Complainant contends that the disputed domain names are confusingly similar to its PRESTONS STYLEZ trademark because they reproduce almost identically and entirely the PRESTONS STYLEZ mark. Complainant argues that the disputed domain names are intentional misspellings of the terms “PRESTONS” and “STYLEZ”, the two words comprising the entirety of Complainant’s registered trademark.
Complainant also alleges that Respondent has no rights or legitimate interests in the disputed domain names. Complainant contends that there is no evidence that Respondent used or engaged in demonstrable preparations to use the disputed domain names in connection with bona fide offerings of goods and services. Complainant also alleges that there is no evidence that Respondent is commonly known by either of the disputed domain names nor making legitimate noncommercial or fair use of them.
Lastly, Complainant contends that the disputed domain names were registered and are being used in bad faith. According to Complainant, Respondent must have had actual knowledge of Complainant’s rights in the PRESTONS STYLEZ mark because Complainant was already operating its online retail store selling clothing and merchandise under the PRESTONS STYLEZ mark at the time the disputed domain names were registered. According to Complainant, Respondent is engaging in typosquatting behavior targeting Complainant’s Mark in an effort to divert traffic from customers misspelling Complainant’s Mark and domain name. This, according to Complainant, constitutes an intentional attempt to attract Internet users, for commercial gain, to Respondent’s websites, by creating a likelihood of confusion with Complainant’s Mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites or of a product or service on Respondent’s websites. Furthermore, Complainant argues that Respondent’s past practice of registering and using domain names consisting of variations of known trademarks only reinforces the possibility that it registered and used the disputed domain names in bad faith.
Respondent did not reply to Complainant’s contentions.
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:
“Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding?
Noting 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.” Thus, even though Respondent has failed to address Complainant’s contentions, the burden remains with Complainant to establish the 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 PRESTONS STYLEZ trademark through its United States registration.
With Complainant’s rights in the PRESTONS STYLEZ mark established, the remaining question under the first element of the Policy is whether the disputed domain names (typically disregarding the Top-Level Domain (“TLD”) in which each domain name is registered) are 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. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. Id.
Both disputed domain names simply remove the letter “s” that comes immediately after the letter “n” in Complainant’s Mark. Furthermore, the disputed domain name <prestonstyles.com> also substitutes the letter “z” found in Complainant’s Mark with the letter “s.” Therefore, the disputed domain names are mere misspellings of the terms “prestons” and “stylez”, the two words comprising the entirety of Complainant’s Mark. 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 names are confusingly similar to Complainant’s PRESTONS STYLEZ trademark.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or legitimate interests in the disputed domain name:
(i) before any notice of the dispute, respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed 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 disputed 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 disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
As expressed in previous UDRP decisions, non-exhaustive examples of prior use, or demonstrable preparations to use the domain name, in connection with a bona fide offering of goods or services may include: (i) evidence of business formation-related due diligence/legal advice/correspondence, (ii) evidence of credible investment in website development or promotional materials such as advertising, letterhead, or business cards (iii) proof of a genuine (i.e., not pretextual) business plan utilizing the domain name, and credible signs of pursuit of the business plan, (iv) bona fide registration and use of related domain names, and (v) other evidence generally pointing to a lack of indicia of cybersquatting intent. WIPO Overview 3.0, section 2.2.
Furthermore, panels applying UDRP paragraph 4(c) have found that the use of a domain name to host a parked page comprising pay-per-click links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users. WIPO Overview 3.0, section 2.9.
In this case, the Panel finds that Complainant has made out a prima facie case. Respondent is not using the disputed domain names in connection with any bona fide offering of goods or services, nor is Respondent making a legitimate noncommercial or fair use of them. The disputed domain name <prestonstylez.com> merely resolved to a webpage seeking to have Internet users download some sort of software to their browser, which cannot be considered a bona fide offering of goods and services nor legitimate noncommercial or fair use. WIPO Overview 3.0, section 2.2. Neither is the disputed domain name <prestonstyles.com> being used in connection with a bona fide offering of goods and services. This disputed domain name originally resolved to a website offering links to clothing goods that compete with goods Complainant sells under its PRESTONS STYLEZ mark. Displaying links selling products highly similar to those being sold under Complainant’s Mark through a domain which is almost identical to Complainant’s Mark clearly shows that Respondent is attempting to capitalize on the goodwill and reputation of Complainant’s Mark and not for any bona fide offering of goods and services or noncommercial or fair use.
Respondent has not submitted any arguments or evidence to rebut Complainant’s contention that it has never authorized, licensed or permitted Respondent to use Complainant’s Mark in any way. There is also no evidence on record suggesting that Respondent is commonly known by the disputed domain names. Respondent has failed to rebut Complainant’s allegations and evidence, and therefore, 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)(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. Panels have found the following types of evidence to support a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark: (i) actual confusion, (ii) seeking to cause confusion (including by technical means beyond the domain name itself) for the respondent’s commercial benefit, even if unsuccessful, (iii) the lack of a respondent’s own rights to or legitimate interests in a domain name, (iv) redirecting the domain name to a different respondent-owned website, even where such website contains a disclaimer, (v) redirecting the domain name to the complainant’s (or a competitor’s) website, and (vi) absence of any conceivable good faith use.” WIPO Overview 3.0, section 3.1.4.
UDRP panels have held that establishing a pattern of bad faith conduct requires more than one, but as few as two instances of abusive domain name registration. This may include a scenario where a respondent, on separate occasions, has registered trademark-abusive domain names, even where directed at the same brand owner. WIPO Overview 3.0, section 3.1.2.
In this case, bad faith can be found in the registration and use of the disputed domain names. Complainant provided ample evidence to show the widespread use of the PRESTONS STYLEZ mark that predates Respondent’s registration of the disputed domain names. Therefore, Respondent was likely aware of the PRESTONS STYLEZ trademark when it registered the disputed domain names, or knew or should have known that they were identical or confusingly similar to Complainant’s 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. Furthermore, the disputed domain names are clearly targeting Complainant’s Mark since both of them consist of obvious typographical errors of Complainant’s Mark, which further demonstrates that Respondent was aware of Complainant’s Mark when Respondent registered the disputed domain names.
The disputed domain name <prestonstyles.com> was being used in bad faith. It resolved to a website displaying links selling goods similar or identical to goods covered by Complainant’s Mark. This is clear evidence that Respondent is engaging in a typosquatting efforts to attract Internet users, for commercial gain, to Respondent’s website, by creating a likelihood of confusion with Complainant’s Mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service on the Respondent’s website. The disputed domain name <prestonstylez.com> was also being used in bad faith. Respondent, similar to its use of the disputed domain name <prestonstylez.com>, is clearly engaging in typo squatting efforts targeting Complainant’s Mark to merely lead Internet users to a website requiring them to allegedly download some software to their browser. There is simply no conceivable good faith basis for such use of a domain.
That Respondent has also engaged in a pattern of registering and using domain names that are variations of known third-party trademarks, which further confirms the existence of bad faith use and registration of the disputed domain names in this case. Complainant has provided evidence of at least one other UDRP proceeding where Respondent was found to have been engaging in bad faith conduct targeting well-known trademarks. Past UDRP panels have considered that providing at least one other instance where a respondent has been found to have engaged in bad faith conduct is sufficient to establish a pattern of bad faith conduct. That the specific panelist in the UDRP proceeding referenced by Complainant explicitly mentioned that Respondent has been named in various other similar proceedings only makes it more probable that Respondent has engaged in a pattern of bad faith. The Panel has independently confirmed that Respondent has been the losing respondent in a number of previous UDRP proceedings.
For these reasons, this Panel finds that Respondent’s registration and use of the disputed domain names were in bad faith, pursuant to paragraphs 4(b)(ii) and (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 names <prestonstyles.com> and <prestonstylez.com> be transferred to the Complainant.
Brian J. Winterfeldt
Date: June 26, 2020