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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ThredUp Inc. v. Super Privacy Service LTD c/o Dynadot / domain admin

Case No. D2020-1443

1. The Parties

The Complainant is ThredUp Inc., United States of America (“United States”), represented by Gerben Law Firm, PLLC, United States.

The Respondent is Super Privacy Service LTD c/o Dynadot, United States / domain admin, China.

2. The Domain Name and Registrar

The disputed domain name <thredupbasement.com> (the “Domain Name”), is registered with Dynadot, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 4, 2020. On June 5, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 8, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 9, 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 June 9, 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 June 10, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 30, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 1, 2020.

The Center appointed Tony Willoughby as the sole panelist in this matter on July 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.

The invitation to the Complainant to file an amended Complaint stemmed from the fact that the Domain Name was registered in the name of a privacy service. In response to the Center’s registrar verification request, the Registrar disclosed the name and address of the entity in whose name the Domain Name had been registered. The amendment to the Complaint added the underlying registrant as a Respondent. For the purposes of this Decision the Panel treats the underlying registrant, domain admin, as the Respondent.

4. Factual Background

The Complainant is a United States-based provider of online retail and consignment store services, which commenced business under the name, “ThredUp”, in 2009.

The Complainant is the proprietor of several trade mark registrations covering its name, including United States Trademark Registration No. 3,791,488 THREDUP (standard character mark) registered on May 18, 2010, (application filed on July 20, 2009) in class 35 for various website services.

On December 1, 2019, the Complainant filed a trade mark application (Serial Number 88711261) with the United States Commissioner for Trademarks for registration of the standard character mark, THREDUP BASEMENT, in class 35 for various retail services.

The Domain Name was registered on December 4, 2019. It is not currently connected to any active website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to its THREDUP registered trade mark and identical to its THREDUP BASEMENT trade mark, the subject of its trade mark application referred to in Section 4. The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(i) of the Policy.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. General

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:

(i) the 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 Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

B. Identical or Confusingly Similar

The Complainant’s THREDUP registered trade mark is readily recognizable in its entirety in the Domain Name. Thus, the Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights.

C. Rights or Legitimate Interests

The Complainant’s THREDUP trade mark is an unusual made-up word. In combination with the word, “basement”, it constitutes the trade mark, which the Complainant applied to register only a few days prior to registration of the Domain Name. The Respondent does not appear to have made any use of the Domain Name, whether commercial or noncommercial, and the Respondent’s name bears no relation to the Domain Name. Moreover, the Complainant has not granted the Respondent any permission to use its THREDUP trade mark.

The Panel finds that the Complainant has made out a prima facie case under this element of the Policy, in other words a case calling for an answer from the Respondent. The Respondent has not responded to the Complaint.

The Panel can conceive of no basis upon which it could be said, on the evidence, that the Respondent has any rights or legitimate interests in respect of the Domain Name. In the absence of any explanation from the Respondent, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.

D. Registered and Used in Bad Faith

The Complainant has produced evidence to show that a few days prior to registration of the Domain Name, the Complainant had filed a trade mark application in the United States for the trade mark THREDUP BASEMENT. The Complainant asserts that it first started using its THREDUP BASEMENT trade mark on its website in November 2019. The final page of Annex 5 to the Complaint features a screenshot of a page from the Complainant’s website on which the word “BASEMENT” is used, but the page is undated. Despite the absence of a date on this screenshot, the Panel is of the view that the Domain Name is so uniquely referable to the Complainant that the Respondent must have had the Complainant in mind when registering the Domain Name and must therefore have been aware of the Complainant’s use of THREDUP BASEMENT prior to registration of the Domain Name. The Panel accepts that the Complainant is likely to have started using the THREDUP BASEMENT trade mark in November, 2019, as the Complainant claims.

The Complainant asserts that following registration of the Domain Name, the Domain Name was listed with a domain name broker as being for sale for USD 990, a sum well in excess of the Respondent’s out-of-pocket costs directly related to the Domain Name. However, the Complaint features no documentary evidence in support of that claim.

Nonetheless, the Panel can think of no good faith reason why the Respondent should have registered the Domain Name and concludes that the Respondent failed to respond to the Complaint because it had no adequate answer to the Complainant’s contentions.

The Panel finds on the balance of probabilities that the Respondent registered the Domain Name in bad faith to exploit the trade mark value of the Domain Name and most likely to sell it to the Complainant for a figure in excess of its out-of-pocket costs directly related to the Domain Name. However, even in the absence of supported evidence that the Respondent had offered the Domain Name for sale for USD 990, the Panel finds that the Domain Name represents an unjustifiable threat hanging over the head of the Complainant and, as such, constitutes a continuing bad faith use of the Domain Name.

Furthermore, the fact that the Domain Name does not resolve to an active website does not prevent a finding of bad faith in the circumstances of this case.

The Panel finds that the Domain Name has ben registered and is being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <thredupbasement.com>, be transferred to the Complainant.

Tony Willoughby
Sole Panelist
Date: July 24, 2020

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