WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Strellson AG v. WhoisGuard, Inc. / Dipesh Patel
Case No. D2021-0112
1. The Parties
The Complainant is Strellson AG, Switzerland, represented by SKW Schwarz Rechtsanwälte, Germany.
The Respondent is WhoisGuard, Inc., Panama / Dipesh Patel, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <joopclothing.com> 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 14, 2021. On January 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 14, 2021, 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 January 19, 2021 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 January 19, 2021.
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 January 25, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 14, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 16, 2021.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on March 1, 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.
4. Factual Background
The Complainant is in the fashion business, exploiting JOOP as a lifestyle brand that spams from clothing, bags, shoes, jewelry and watches to a complete living collection. It is the owner, amongst others, of the following trademark registrations (Annexes 3 and 4 to the Complaint):
- European Union Trademark Registration No. 007543119 for the word mark JOOP! ONLINESHOP, filed on January 22, 2009 and registered on July 23, 2009, in classes 18, 25 and 35; and
- European Union Trademark Registration No. 013083852 for the word mark JOOP, filed on July 15, 2014 and registered on February 3, 2015, in classes 4, 8, 9, 11, 14, 16, 18, 20, 21, 24, 25, 27, 34, 35 and 42.
The disputed domain name <joopclothing.com> was registered on October 10, 2020, and has allegedly been used in connection with a website operating as an online store. Presently no active webpage resolves from the disputed domain name.
5. Parties’ Contentions
The Complainant asserts to be the owner of various trademark registrations for its JOOP trademark which enjoys “above-average distinctiveness” and has been considered a well-known trademark by the German Courts (Federal Court of Germany (BGH), case no. KZR 71/08, dated 7 December 2010; District Court of Hamburg, case no. 315 O 657/05, dated 15 June 2006).
According to the Complainant, the Respondent has been using the disputed domain name in connection with an online shop selling clothes and shoes from unidentified brands, what could cause confusion and create in Internet users an undue association between the disputed domain name and the Complainant’s well-known JOOP trademark, used in connection to clothing and with the Complainant’s own web shop available at <joop.com>.
As to the absence of rights or legitimate interests, the Complainant argues that:
i. the Complainant has not licensed the Respondent to use or register the disputed domain name;
ii. the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name given that it has been using the disputed domain name in connection with an online shop selling unidentified clothes and shoes; and
iii. the Respondent’s web shop available at the disputed domain name does not identify the Respondent or the operator of the website what potentially indicates that it is actually a fake web shop.
The registration and use of the disputed domain name in bad faith, according to the Complainant, arises from the Respondent’s use of the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s trademark and products.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements, which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present in order to obtain the transfer of the disputed domain name.
In accordance with paragraph 14(a) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.
A. Identical or Confusingly Similar
The Complainant has established rights in the JOOP trademark.
The disputed domain name includes the entirety of the Complainant’s trademark. The addition of the “clothing” suffix does not avoid a finding of confusing similarity under the Policy which, as recognized by past UDRP panels, involves a “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” (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (WIPO Overview 3.0), sections 1.7 and 1.8).
The first element of the Policy has been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that may indicate a respondent’s rights to or legitimate interests in a domain name. These circumstances are:
(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 not acquired 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.
The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make a prima facie case against the Respondent.
In that sense, and as the evidence submitted clearly indicates, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Panel notes that the Respondent has allegedly used the disputed domain name in connection with an online store selling clothing and shoes not properly identifying the store operator nor disclosing the products’ brands. The Respondent was thereby using the Complainant’s trademark to attract Internet users to purchase third party products. The Panel notes that upon the Complainant starting the UDRP proceeding, the website at the disputed domain name now directs to an inactive web page.
The Respondent’s use of the disputed domain name that clearly reproduces a well-known fashion brand in connection with an online store selling third party clothes and shoes cannot be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert the Complainant’s consumers.
Also, the lack of evidence as to whether the Respondent is commonly known by the disputed domain name or the absence of any trademarks registered by the Respondent corresponding to the disputed domain name, corroborates the finding of absence of rights or legitimate interests in the disputed domain name.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in respect of a disputed domain name, where, by using the 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, both the registration and use of the disputed domain name in bad faith can be found in view of the Respondent’s webpage that resolved from the disputed domain name and at which it operated as an online store offering for sale third party clothing items in direct competition of the Complainant’s products.
The Respondent’s use of the disputed domain name not only clearly indicates full knowledge of the Complainant’s trademark but also an attempt to misleadingly divert consumers for its own commercial gain. The Panel notes that the website at the disputed domain name is currently inactive. The current passive holding of the disputed domain name further suggests bad faith of the Respondent in the circumstances of this case. See also, WIPO Overview 3.0, section 3.3.
Another factor that corroborates a finding of bad faith is the Respondent’s lack of reply to the proceeding, failing thereby to invoke any circumstance which could demonstrate good faith in the registration or use of the disputed domain name.
For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain name.
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 <joopclothing.com> be transferred to the Complainant.
Wilson Pinheiro Jabur
Date: March 15, 2021