WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hilltop Business Solutions dba The Dressage Pony v. Registration Private, Domains By Proxy, LLC, DomainsByProxy.com / Lara Osbourne

Case No. D2021-0227

1. The Parties

The Complainant is Hilltop Business Solutions dba The Dressage Pony, United States of America (“United States”), represented by Cohen Law, PLC, United States.

The Respondent is Registration Private, Domains By Proxy, LLC, DomainsByProxy.com, United States / Lara Osbourne, United States.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 26, 2021. On January 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 27, 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 28, 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 amended Complaint on February 1, 2021.

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 the Respondent of the Complaint, and the proceedings commenced on February 2, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 22, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 23, 2021.

The Center appointed Lynda M. Braun 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 an online retail store that sells horse-related supplies and products. The Complainant is doing business as “The Dressage Pony” and has been using the name “The Dressage Pony Store” in connection with its online retail store services featuring horse tack, bridles, and horse related supplies and products since at least August 1, 2015.

The Complainant is the owner of the pending service mark THE DRESSAGE PONY STORE, United States Trademark Serial No. 90324483 in international class 35, filed with the United States Patent and Trademark Office (“USPTO”) on November 17, 2020. The pending application claims that the first use was August 1, 2015. The Complainant also has shown evidence of common law trademark rights given that the Complainant has been using the trademark in connection with its online retail services since 2015 (hereinafter collectively referred to as “THE DRESSAGE PONY STORE Mark”).

The Complainant registered and has maintained the domain name <thedressageponystore.com> since May 28, 2015, which resolves to the Complainant’s official website at “www.thedressageponystore.com”, and where THE DRESSAGE PONY STORE Mark is used prominently on each page of its website.

The Disputed Domain Name was created on October 18, 2018. At that time, a person visiting the Disputed Domain Name was immediately redirected to the Respondent’s website at “www.thecollectedpony.com”, which website offers for sale competing horse-related products.¹ The Complainant sent a cease-and-desist letter to the Respondent, demanding that the Respondent cease using the Disputed Domain Name, but received no response.

The Respondent purportedly registered the Disputed Domain Name to retaliate against the Complainant after the Complainant requested that the Respondent cease using the Complainant’s registered trademark, FOR THE SMALLER EQUINE ATHLETE, that the Respondent used on its own competing online retail website at “www.thecollectedpony.com”. The Complainant registered and used FOR THE SMALLER EQUINE ATHLETE on its website prior to October 18, 2018, when the Respondent registered the Disputed Domain Name.

5. Parties’ Contentions

A. Complainant

The following are the Complainant’s contentions:

- the Disputed Domain Name is confusingly similar to the Complainant’s THE DRESSAGE PONY STORE Mark;

- the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and,

- the Disputed Domain Name was registered and is being used in bad faith.

The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainant prove the following three elements in order to prevail in this proceeding:

(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 was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The first issue here is whether the Complainant has protectable rights in THE DRESSAGE PONY STORE Mark. The Complainant owns a pending trademark, rather than a registered trademark. Paragraph 4(a)(i) of the Policy refers merely to a “trademark or service mark” in which a complainant has rights and does not expressly limit the application of the Policy to a registered trademark or service mark. Therefore, the fact that in this case the Complainant does not yet have a registered trademark or service mark for THE DRESSAGE PONY STORE does not preclude a finding that it has established trademark or service mark rights for purposes of the Policy. See Imperial College v. Christophe Dessimoz, WIPO Case No. D2004-0322.

To establish unregistered or common law trademark rights for purposes of the UDRP, a complainant must show that its mark has become a distinctive identifier which consumers associate with that complainant’s goods and/or services. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.3. The Panel finds that the Complainant has provided grounds for a finding that its Mark has acquired distinctiveness and significant goodwill so as to have established common law trademark rights at least for purposes of the Policy. Further, it is well-established that “[u]se of a mark in commerce and marketing, including displaying the mark prominently on a company website, is evidence of common law trademark ownership [and] the UDRP recognizes and protects common law trademarks”. See BlackBerry Limited v. Bryan Fan, WIPO Case No. D2015-0464. In addition, the fact that a respondent is shown to have been targeting the complainant’s mark (e.g., based on the manner in which the related website is used or the composition of the domain name) may demonstrate that its mark has achieved significance as a source identifier.

Based on the above, the Panel finds that the Complainant has established rights in THE DRESSAGE PONY STORE Mark based on its several years of use prior to applying for THE DRESSAGE PONY STORE Mark, and prior to and at the time that the Respondent registered the Disputed Domain Name.

The second issue is whether the Disputed Domain Name is identical or confusingly similar to THE DRESSAGE PONY STORE Mark. The Panel finds that the Disputed Domain Name is confusingly similar to THE DRESSAGE PONY STORE Mark.

The Disputed Domain Name <dressageponystore.com> consists of the entirety of THE DRESSAGE PONY STORE Mark excluding the word “the” and followed by the generic Top-Level Domain (“gTLD”) “.com”. It is well-established that a domain name that wholly incorporates a trademark may be deemed confusingly similar to that trademark for purposes of the Policy. See WIPO Overview 3.0, section 1.7 (where a domain name incorporates the entirety of a trademark, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing). Here, the Disputed Domain Name is almost identical to the Complainant’s Mark save for the word “the”. Thus, the above rule applies.

Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well-established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182. Thus, the Disputed Domain Name is confusingly similar to the Complainant’s Mark.

Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy has been met by the Complainant.

B. Rights or Legitimate Interests

Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence that demonstrates rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.

In this proceeding, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case. Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use THE DRESSAGE PONY STORE Mark. Nor does the Complainant have any type of business relationship with the Respondent. There is also no evidence that the Respondent is commonly known by the Disputed Domain Name or by any name similar to it.

When Internet users arrived at the Disputed Domain Name, they were immediately redirected to a website hosted by the Respondent at “www.thecollectedpony.com”, where the Respondent offered horse-related products to customers, which products competed with those offered by the Complainant on its website. The Respondent was not making a legitimate noncommercial or fair use of the Disputed Domain Name, but rather was using the Disputed Domain Name for commercial gain with the intent to mislead the Complainant’s customers into thinking that they had arrived at the Complainant’s website.

Further, with the exception of the omitted “the”, the composition of the disputed domain name is identical to the Complainant’s Mark, carrying a high risk of implied affiliation with the Complainant, which cannot constitute fair use seeing as it effectively impersonates or suggest sponsorship by the Complainant. See WIPO Overview 3.0, section 2.5.1. As such, the Panel determines that the Respondent does not have rights or legitimate interests in the Disputed Domain Name.

Accordingly, the Panel finds that the second element of paragraph 4(a) of the Policy has been met by the Complainant.

C. Registered and Used in Bad Faith

The Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.

Based on the circumstances here, the Respondent has engaged in bad faith registration and use by attracting, for commercial gain, Internet users to the Respondent’s website and creating a likelihood of confusion with the Complainant’s Mark. The use of a domain name to attract Internet users to a registrant’s 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 registrant’s online location for commercial gain demonstrates registration and use in bad faith. Thus, the Respondent’s use of the significant goodwill in THE DRESSAGE PONY STORE Mark by registering the Disputed Domain Name and using that Disputed Domain Name to misdirect visitors to the Respondent’s own website that competes with the Complainant’s website demonstrates the Respondent’s bad faith registration and use of the Disputed Domain Name under the Policy, paragraph 4(b)(iv).

Moreover, the Disputed Domain Name was registered after the Complainant first began using THE DRESSAGE PONY STORE Mark. The Panel finds it likely that the Respondent (a competitor) had the Complainant’s Mark in mind when registering the Disputed Domain Name. The Disputed Domain Name <dressageponystore.com> is almost identical to the Complainant’s domain name, <thedressageponystore.com>, and the Complainant’s Mark, THE DRESSAGE PONY STORE, save for the use of the word “the” in the Complainant’s domain name and the Complainant’s Mark.

Notwithstanding the prior use of the Disputed Domain Name to redirect to the Respondent’s competing web store, the current passive holding of the Disputed Domain Name does not prevent a finding of bad faith. When viewing the totality of the circumstances mentioned in the preceding paragraphs, it is difficult to imagine any plausible good faith use to which the Disputed Domain Name may be put. See WIPO Overview 3.0, section 3.3.

Accordingly, the Panel finds that the third element of paragraph 4(a) of the Policy has been met by the Complainant.

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 <dressageponystore.com> be transferred to the Complainant.

Lynda M. Braun
Sole Panelist
Date: March 5, 2021

¹ As of the writing of this decision, however, the Disputed Domain Name no longer automatically redirects to the Respondent’s website, rather the Disputed Domain Name resolves to a “Shopify” page indicating that the necessary steps have not been taken to activate a webpage.