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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Spinrite Inc. v. WhoisGuard, Inc. / Gabriella Garlo

Case No. D2021-0012

1. The Parties

The Complainant is Spinrite Inc., Canada, represented by Cassels Brock & Blackwell, LLP, Canada.

The Respondent is WhoisGuard, Inc., Panama / Gabriella Garlo, Brazil.

2. The Domain Name and Registrar

The disputed domain name <yarnspiration.shop> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 5, 2021 in respect of the domain name <yarnspirations.shop>. On January 5, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with <yarnspirations.shop>. On January 5, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for <yarnspirations.shop>which differed from the named respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 19, 2021 (copied to the disclosed registrant), providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On January 20, 2021, the disclosed registrant contacted the Center concerning <yarnspirations.shop>.

The Complainant filed an amended Complaint on January 23, 2021, requesting the addition of the Domain Name and the addition of the Respondent, and the consolidation of the complaints in respect of both domain names. The Complainant and the registrant of <yarnspirations.shop> reached a settlement agreement in respect of that domain name on February 2, 2021. The proceeding continued regarding the Domain Name.

The Center verified that the Complaint together with 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 February 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 7, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 8, 2021.

The Center appointed Ian Lowe as the sole panelist in this matter on March 16, 2021. 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.

In light of the settlement of the complaint in relation to <yarnspirations.shop> and the findings below, the Panel does not consider it necessary to consider the Complainant’s request for consolidation.

4. Factual Background

The Complainant is based in Canada and was founded in 1952. For nearly 70 years it has developed, manufactured and sold a diverse range of craft knitting yarns, threads and related products. Between 2015 and 2019, the Complainant’s total North American sales were in excess of CAD 1 billion.

The Complainant is the proprietor of Canada trademark number TMA 1057722 YARNSPIRATIONS registered on October 7, 2019 and has used the YARNSPIRATIONS mark in connection with the marketing and sale of its products since as early as September 2013. It operates a website at the domain name <yarnspirations.com> and has since at least 2014 sold its yarn and thread products and related tools and accessories through the website.

The Domain Name was registered on January 20, 2021. It was registered the day after the registrant of the domain name <yarnspirations.shop> responded to the email from the Center dated January 19, 2021 in relation to the original complaint.

The Domain Name resolves to a web portal of knitting related links to other web pages each comprising a number of hyperlinks to a variety of websites including those of competitors of the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to its YARNSPIRATIONS trademark (the “Mark”), that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Respondent registered and is using the Domain Name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

B. Respondent

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

6. Discussion and Findings

For this Complaint to succeed in relation to the Domain Name, the Complainant must prove that:

(i) the Domain Name is identical or confusingly similar to a trademark 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.

A. Identical or Confusingly Similar

The Complainant has uncontested rights in the Mark, both by virtue of its trademark registration and as a result of the goodwill and reputation acquired through its use of the Mark for more than seven years. Ignoring the generic Top-Level Domain (“gTLD”) “.shop”, the Domain Name comprises the entirety of the YARNSPIRATIONS mark save for the deletion of the last letter “s”. In the view of the Panel, this difference does not detract from the confusing similarity between the Domain Name and the Mark. Accordingly, the Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant has made out a strong prima facie case that the Respondent could have no rights or legitimate interests in respect of the Domain Name. The Respondent has used the Domain Name not in connection with a bona fide offering of goods or services, but for a website with links to other webpages featuring pay-per-click links to third party websites offering products similar to those of the Complainant. There is no suggestion that the Respondent has ever been known by the Domain Name. The nature of the Domain Name suggests that it has been registered for the purposes of what is commonly known as typosquatting. The Respondent has chosen not to respond formally to the Complaint or to take any steps to counter the prima facie case established by the Complainant. In the circumstances, the Panel finds that the Respondent does not have any rights or legitimate interests in respect of the Domain Name.

C. Registered and Used in Bad Faith

In light of the use to which the Domain Name has been put, and since the Domain Name comprises what the Panel considers clearly to be a misspelling of the Mark, the Panel is in no doubt that the Respondent had the Complainant and its rights in the Mark in mind when it registered the Domain Name. The Respondent has used the Domain Name for pay-per-click links to third party websites. In the Panel’s view, the legitimate inference is that the Respondent undertook such activity with a view to commercial gain, intending to attract Internet users mistyping “yarnspirations” to the webpage to which the Domain Name resolves by creating a likelihood of confusion with the Mark and as to the affiliation or endorsement of that webpage. Accordingly, the Panel considers that this amounts to paradigm bad faith registration and use for the purposes 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 <yarnspiration.shop> be transferred to the Complainant.

Ian Lowe
Sole Panelist
Date: March 29, 2021

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