WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

2XU Pty Ltd v. Domain Administrator, PrivacyGuardian.org / Kristi Krautkremer

Case No. D2021-0562

1. The Parties

The Complainant is 2XU Pty Ltd, Australia, represented by SILKA AB, Sweden.

The Respondent is Domain Administrator, PrivacyGuardian.org, United States of America (“United States”) / Kristi Krautkremer, United States.

2. The Domain Name and Registrar

The disputed domain name <2xuclearancesale.buzz> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 23, 2021. On February 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 23, 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 February 24, 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 February 25, 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 March 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 23, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 24, 2021.

The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on March 30, 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’s name and trademark 2XU, pronounced “Two Times You”, refer to specialist sports clothing such as tights that provide compression. The material was created in Melbourne, Australia, in 2005 and its benefits have been the subject of scientific testing in collaboration with other groups. The Complainant’s products are worn by well-known athletes, for example Ted Ligety, Will Ryan and Terenzo Bozzone, and partners include Rowing New Zealand, Victorian Institute of Sport and Hockey Australia.

The Complainant holds the following registered trademarks:

2XU, International Trademark, registered June 10, 2005, registration number 853952, in classes 25 and 28;
2XU, International Trademark, registered May 30, 2013, registration number 1165665, in class 35;
2XU, International Trademark, registered November 30, 2020, registration number 1573191, in classes 10, 25 and 35;
2XU, United States Trademark Patent and Trademark Office, registered September 11, 2018, registration number 87787626, in class 18.

The Complainant also owns and uses for promotional purposes the domain names <2xu.com>, <2xu.us> and <2xu.com.au>. The Complainant is represented on Facebook, Instagram and Youtube.

The Respondent has not provided any background information and is unknown except for the contact information provided for the purpose of registration of the disputed domain name on January 8, 2021. The disputed domain name has resolved to a website (the “Respondent’s website”) headed with a representation of the Complainant’s logo comprising its trademark is a stylised italic script, offering what appear to be the Complainant’s products at “up to 90% off”, with facilities to open an account and to provide personal details. More recently, it has not resolved to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that its registered trademark is prominent and present in its entirety in the disputed domain name, which is therefore confusingly similar to the trademark. The additional dictionary terms “clearance” and “sale” are insufficient to distinguish the disputed domain name from Complainant’s trademark.

The Complainant says that the Respondent has no rights or legitimate interests in respect of the dispute domain name. The website to which it resolves has displayed the Complainant’s trademark, without the Complainant’s authorisation, and furthermore the Respondent is not known by the Complainant’s trademarked name. The Complainant presumes the goods offered through the disputed domain name are counterfeit and are not the Complainant’s. Images appearing on the Respondent’s website were images in which the Complainant has copyright. The Respondent’s website invited visitors to provide personal information purportedly in order to open an account, which constitutes attempted phishing. For all these reasons, the Respondent’s use of the disputed domain name cannot be for a bona fide offering of goods or services, and cannot be for a noncommercial or fair purpose.

The Complainant also contends that the dispute domain name was registered and is being used in bad faith. The Complainant’s trademark, first registered in 2005, predates the registration of the disputed domain name by 15 years.

The Complainant says it seems unlikely that the Respondent was unaware of its trademark. The Respondent’s website displayed the trademark in several places. The Respondent has created a misleading impression for financial gain that the disputed domain name is associated with the Complainant, whereas goods offered for sale on the website are counterfeit copies of the Complainant’s products.

The Complainant has cited previous UDRP decisions under the Policy that it considers will support its case.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute-resolution provider, in compliance with the Rules, that:

“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith.”

The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.

A. Identical or Confusingly Similar

The Complainant has produced evidence satisfactory to the Panel of its ownership of the registered trademark 2XU.

The disputed domain name is <2xuclearancesale.buzz>, of which the generic Top-Level Domain (“gTLD”) “.buzz” may be disregarded as being a technical necessity. The remainder of the disputed domain name may be read as the Complainant’s trademark, 2XU, followed by the terms “clearance sale”. An objective comparison shows the Complainant’s trademark to feature prominently in the disputed domain name, which is generally sufficient for the Complainant to clear the first hurdle under the Policy. The terms “clearance sale” do not prevent a finding of confusing similarity between the disputed domain name and the trademark.

Accordingly the Panel finds confusing similarity and finds for the Complainant under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant states, prima facie, that the Respondent has no rights or legitimate interests in respect of the Complainant’s trademark or the disputed domain name.

Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:

“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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.”

According to the screen capture evidence produced by the Complainant, the Respondent’s website to which the disputed domain name resolves has been used for an offering of goods, namely sports clothing resembling the Complainant’s compression products. Since the Respondent’s website displays the Complainant’s trademark under specific products, and in the form of its distinctive logo at the top of pages, which can create an impression of association with the Complainant, without the Complainant’s permission, this cannot be a bona fide offering of goods in the terms of paragraph 4(c)(i) of the Policy, and cannot be a legitimate noncommercial or fair use within the meaning of paragraph 4(c)(iii) of the Policy. There is no evidence of the Respondent having been commonly known by the disputed domain name.

The Respondent has not made any assertion to the contrary. The Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name and finds for the Complainant under paragraph 4(a)(ii) of the Policy.

C Registered and Used in Bad Faith

The Complainant has the onus of proof under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

The provisions of paragraph 4(b) of the Policy are without limitation and bad faith may be found alternatively by the Panel. In the present case paragraph 4(b)(iv) of the Policy is particularly relevant.

Examination of the screen capture of the website to which the disputed domain name resolved before it was taken down shows a prominent display of the Complainant’s characteristic logo and an array of sports clothing similar to the Complainant’s products. The Complainant states in evidence that images of clothing on the Respondent’s website are the Complainant’s own copyright images. On the evidence, it may reasonably be concluded that the Respondent was well aware of the Complainant’s distinctive trademark at the time of registration of the disputed domain name, constituting registration in bad faith.

The apparent function of the Respondent’s website is to sell sports clothing under the Complainant’s trademark at prices described on the website as “Up to 90% OFF”, above a box marked “SHOP NOW”. The Respondent’s website has elements of the look and feel of the Complainant’s website, for example a picture of two people running side by side and partial pictures of people wearing close-fitting sports clothing. The Complainant believes the goods actually shipped would likely be counterfeit. Whether or not that is so, the Respondent is found to have been using the disputed domain name to attract visitors for commercial gain, and to have done so with intent to cause confusion with the Complainant’s trademark, representing use in bad faith under paragraph 4(b)(iv) of the Policy.

The Complainant has pointed out that the Respondent’s website displayed a head-and-shoulders icon leading to a facility for visitors to create an account, meaning the visitors who opted to do so would of necessity be disclosing personal information to the Respondent after being misled into thinking they were in contact with the Complainant. This is found to be seriously misleading conduct and a further act of use of the disputed domain name in bad faith by the Respondent.

On the totality of the evidence, and on the balance of probabilities, the Panel finds the Respondent to have registered and used the disputed domain name in bad faith in the terms 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 disputed domain name <2xuclearancesale.buzz> be transferred to the Complainant.

Dr. Clive N.A. Trotman
Sole Panelist
Date: April 12, 2021