WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Maggie Sottero Designs, LLC v. Domain Admin, Whois Privacy Corp.

Case No. D2020-2677

1. The Parties

The Complainant is Maggie Sottero Designs, LLC, United States of America (“U.S.”), represented by Sparke Helmore Lawyers, Australia.

The Respondent is Domain Admin, Whois Privacy Corp., Bahamas.

2. The Domain Name and Registrar

The disputed domain name <maggiesotero.com> (“Disputed Domain Name”) is registered with TLD Registrar Solutions Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 14, 2020. On October 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 15, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that 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 October 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 5, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 6, 2020.

The Center appointed Haig Oghigian as the sole panelist in this matter on November 24, 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

The Panel finds the following as uncontested facts:

The Complainant, Maggie Sottero Designs, LLC, is an American company with a principal place of business in Salt Lake City, Utah. It is a well-known designer, manufacturer and wholesaler of bridal gowns. The gowns are sold under the MAGGIE SOTTERO brand (the “MAGGIE SOTTERO Mark”).

Since 1997, the Complainant has: designed over 3,000 styles of Maggie Sottero gowns; manufactured and sold over 1.5 million Maggie Sottero gowns worldwide; and launched over 50 collections of Maggie Sottero gowns. The Complainant carries on business globally, including through entities incorporated in Hong Kong, China, Australia, and the United Kingdom, each of which also uses the MAGGIE SOTTERO Mark.

The Complainant is the owner of at least 55 registered trademarks worldwide for the MAGGIE SOTTERO Mark, which were filed between January 21, 2000 and December 28, 2017. These trademarks include the U.S. trademark MAGGIE SOTTERO registered on December 26, 2000 with registration no. 2415876 in respect of “bridal wear, namely wedding gowns, veils and headwear”.

The Complainant is also the owner of at least 15 domain names that incorporate the MAGGIE SOTTERO Mark, including the domain name <maggiesottero.com>, which it has held since 1997. Since at least July 2001, the Disputed Domain Name has been the primary online location for the official Complainant’s website.

The Complainant has invested, and continues to invest, substantially in maintaining the goodwill and reputation of the MAGGIE SOTTERO Mark.

The Dispute Domain Name was registered on September 12, 2004. The Disputed Domain Name resolves to a webpage with pay-per-click links (the “Infringing Website”).

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the Disputed Domain Name incorporates the entirety of the MAGGIE SOTTERO Mark, with the only difference being the misspelling of “sotero” with one “t”, and that this misspelling does not distinguish the Disputed Domain Name from the MAGGIE SOTTERO Mark. The Complainant relies on the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), which states in section 1.9: “A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark…”

The Complainant submits that the Disputed Domain Name is confusingly similar, if not identical, to the MAGGIE SOTTERO Mark, and that there is a real risk that traffic will be diverted away from the genuine Complainant website to the Infringing Website.

The various screenshots submitted by the Complainant show that the Infringing Website contains links with the text “Maggie Sottero” and “Maggie Sottero Wedding Dresses” (among others). These links lead to
pay-per-click advertising unrelated to the Complainant, and include direct competitors of the Complainant (including for example, third party bridal wear businesses).

The Complainant also submits that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Complainant submits that there is no evidence that the Respondent satisfies the criteria set out at paragraph 4(c) of the Policy to establish a right or legitimate interest:

- Paragraph4(c)(i) of the Policy: There is no evidence of the Respondent using, or preparing to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name for a bona fide offering of goods or services. To the Complainant’s knowledge, the content of the Infringing Website relates solely to the provision of pay-per-click advertising for direct competitors of Maggie Sottero.

- Paragraph 4(c)(ii) of the Policy: There is no evidence that the Respondent is commonly known by the name “Maggie Sotero”. There is also no evidence of any pending or registered trademark with the words “Maggie Sotero”.

- Paragraph 4(c)(iii) of the Policy: There is no evidence of the Respondent using the Disputed Domain Name for a legitimate noncommercial or fair use, without intent for commercial gain. The Infringing Website is comprised solely of pay-per-click advertising links that are misleadingly labelled with the MAGGIE SOTTERO Mark and that lead to direct competitors of the Complainant. The Complainant submits that the Disputed Domain Name is being used with intent for commercial gain to misleadingly divert consumers to the Infringing Website. Further, the words “Maggie Sotero” are not descriptive of any goods or services. There is therefore no conceivable legitimate noncommercial or fair use that could be made of the Disputed Domain Name by the Respondent in these circumstances.

In addition, at no time has the Complainant authorized the Respondent to use the MAGGIE SOTTERO Mark (or any sign that is identical with or confusingly similar to its MAGGIE SOTTERO Mark) for the Disputed Domain Name, the Infringing Website, or at all.

The Complainant submits that any association between the MAGGIE SOTTERO Mark and the Infringing Website will damage the valuable reputation of the MAGGIE SOTTERO Mark. Both reputational harm and consumer diversion are likely because the Disputed Domain Name contains a common “typo” of the MAGGIE SOTTERO Mark and the Complainant’s domain name. Internet users intending to visit the Complainant’s website are likely to enter the Disputed Domain Name in error and be directed to the Infringing Website instead.

Finally, the Complainant submits that the Disputed Domain Name was registered and is being used in bad faith. The Complainant submits that the Respondent knew, or should have known, at the time of acquisition that the Disputed Domain Name was identical or confusingly similar to the MAGGIE SOTTERO Mark, in which the Complainant had (and continues to have) rights. In this regard, the Complainant relies on section 3.1.4 of the WIPO Overview 3.0, which provides that “the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.”

In the case, the Disputed Domain Name was first registered in September 2004, well after the Complainant had been operating under the MAGGIE SOTTERO Mark since 1997, and well after the MAGGIE SOTTERO Mark was registered in December 2000 (in addition to other trademark filings prior to September 2004). Further, the Complainant’s website has been continuously live since July 16, 2001 and a search for “Maggie Sotero” on Google leads to results relating exclusively to the Complainant (including where the word “Sottero” has been misspelled as “Sotero”).

The Complainant relies on paragraph 2 of the Policy, which provides that it is registrants’ “responsibility to determine whether your domain name registration infringes or violates someone else’s rights”, and on sections 3.2.2 and 3.2.3 of the WIPO Overview 3.0. Those provisions emphasize that a registrant should undertake “good faith efforts to screen such registrations against readily-available online databases to avoid the registration of trademark-abusive domain names”, and that given “the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known… a respondent cannot credibly claim to have been unaware of the mark.”

In this case, any due diligence by the Respondent, for example, an online search for “Maggie Sotero”, would have shown that the Disputed Domain Name is identical with, or confusingly similar to the MAGGIE SOTTERO Mark. Accordingly, the Complainant argues that it should be inferred that the Respondent was aware, or ought to have been aware of the MAGGIE SOTTERO Mark and that Internet users would very likely be confused by the use of the Disputed Domain Name at the time the Disputed Domain Name was acquired.

The Complaint submits that there is no conceivable good faith use that the Respondent could make of the Disputed Domain Name, nor any conceivable good faith explanation for the Respondent’s choice of the Disputed Domain Name. It should therefore be inferred that the Respondent intended to take unfair advantage of the likelihood of confusion by Internet users.

The Complainant submits that the inference of bad faith can be drawn from the fact that the Infringing Website contains links with the text “Maggie Sottero” and “Maggie Sottero Wedding Dresses” (among others) that lead to pay-per-click advertising unrelated to the Complainant, that advertise direct competitors of the Complainant. The Infringing Website also states that the Disputed Domain Name may be for sale.

Finally, the Complainant relies on the fact that the Respondent’s details are not available. Section 3.6 of the WIPO Overview 3.0 states that the use of a privacy or proxy registration service can support a finding of bad faith in certain circumstances, such as where the respondent is operating a commercial or
trademark-abusive website.

B. Respondent

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

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the transfer of the Disputed Domain Name may be ordered if the Complainant demonstrates three elements:

(A) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(B) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

A. Identical or Confusingly Similar

The Disputed Domain Name incorporates the MAGGIE SOTTERO Mark with the exception of a common and obvious misspelling. The WIPO Overview 3.0 states in section 1.9: “A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element.”

The addition of the Top-Level Domain suffix “.com” does not avoid a finding of confusing similarity. It is well established that that addition of a Top-Level Domain to the end of a trademark does not negate the identity or confusing similarity between a disputed domain name and a trademark, as Top-Level Domains are a required element of every domain name (see F.Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451 and Rollerblade, Inc. v. McCrady, WIPO Case No. D2000-0429).

The Panel determines that the Disputed Domain Name is confusingly similar to the Complainant’s MAGGIE SOTTERO Mark.

B. Rights or Legitimate Interests

No evidence exists to show that (i) the Respondent’s use of the Disputed Domain Name relates to a bona fide offering of goods or services; (ii) the Respondent is commonly known by the Disputed Domain Name; or (iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name.

At no time has the Complainant authorized the Respondent to use the MAGGIE SOTTERO Mark (or any sign that is identical with or confusingly similar to its MAGGIE SOTTERO Mark) for the Disputed Domain Name, the Infringing Website, or at all.

There is also no evidence that the Respondent is commonly known by the Disputed Domain Name or that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name. Rather the Infringing Website contains pay-per-click links to websites advertising the Complainant’s competitors. The use of the Disputed Domain Name to redirect to third-party websites is not a bona fide offering of goods or services, in accordance with paragraph 4(c)(i) of the Policy (see InterContinental Hotels Group PLC, Six Continents Hotels, Inc., Six Continents Limited v. Domain Admin, Whois Privacy Corp. / Maddisyn Fernandes, Fernandes Privacy Holdings, WIPO Case No. D2017-1072).

Finally, the Respondent’s lack of rights or legitimate interests in the Disputed Domain Name may be inferred from the Respondent’s failure to submit a response to the Complaint (see InterContinental Hotels Group PLC, Six Continents Hotels, Inc., Six Continents Limited v. Domain Admin, Whois Privacy Corp. / Maddisyn Fernandes, Fernandes Privacy Holdings, WIPO Case No. D2017-1072 and Pomellato S.p.A v. Richard Tonetti, WIPO Case No. D2000-0493, holding that “non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights”).

Accordingly, based on the available record and Policy, the Panel finds that the Complainant has made out a prima facie case, which has not been rebutted by the Respondent, and that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

C. Registered and Used in Bad Faith

The Respondent registered the Disputed Domain Name in bad faith by doing so with knowledge of the Complainant’s rights in the MAGGIE SOTTERO Mark. It is not credible that the Respondent was unaware of the Complainant’s activities and the existence of the MAGGIE SOTTERO Mark when it acquired the Disputed Domain Name that incorporates the Complainant’s mark (see WIPO Overview 3.0, section 3.2.2). As the Complainant has submitted, Internet searches for both the MAGGIE SOTTERO Mark and the MAGGIE SOTTERO Mark misspelled did or would have drawn the Respondent’s attention to the Complainant’s mark. It is also clear that the Respondent was aware of the Complainant’s business, as the links on the Infringing Website resolve to websites of the Complainant’s competitors.

Section 3.1.4 of the WIPO Overview 3.0 states: “the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.” This principle is applicable here.

In addition, the registration of a domain name that is identical or confusingly similar to a trademark by an entity that has no relation to that mark may be suggestive of bad faith (see Price Costco International, Inc. v. Truong Do Thanh Nhan, WIPO Case No. D2020-0936; Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163). A finding of bad faith is supported in this case by the fact that “the disputed domain name incorporates the Complainant’s well-known trademark” and that “there appears to be no conceivable good faith use that could be made by the Respondent of the disputed domain name” (see Jazzercise, Inc. v. Fundacion Privacy Services LTD, WIPO Case No. D2020-1133).

Finally, the use of the website for pay-per-click advertising links to websites of third parties that offer products competitive to those of the Complainant is also evidence of bad faith (see Jazzercise, Inc. v. Fundacion Privacy Services LTD, WIPO Case No. D2020-1133).

Consequently, the Panel finds that the Disputed Domain Name was registered and is being used in bad faith.

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 Disputed Domain Name <maggiesotero.com> be transferred to the Complainant.

Haig Oghigian
Sole Panelist
Date: December 8, 2020