WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Flamagas S.A. v. Domains By Proxy, LLC, DomainsByProxy.com / Aaron Schimmel, Rock Star Inc.
Case No. D2021-0849
1. The Parties
The Complainant is Flamagas S.A., Spain, represented by Herrero & Asociados, Spain.
The Respondent is Domains By Proxy, LLC, DomainsByProxy.com, United States of America (“United States”). / Aaron Schimmel, Rock Star Inc., United States.
2. The Domain Names and Registrar
The disputed domain names <customclipperlighter.com> and <customclipperlighters.com> (the “Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 25, 2021. On March 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On March 26, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 29, 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 April 6, 2021.
The Center verified that the Complaint together with the amended Complaint (hereafter 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 April 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 2, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 6, 2021.
The Center appointed Nicholas Smith as the sole panelist in this matter on May 14, 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 a Spanish corporation specializing in the manufacture and marketing of cigarette lighters. In 1971, the Complainant launched the first plastic cigarette lighter under the trade mark “Clipper” (the “CLIPPER Mark”). The Complainant has continuously sold cigarette lighters under the CLIPPER Mark since 1971 and has developed a considerable reputation in the mark, both through third party recognition and through marketing and promotion (including online promotion through the Complainant’s social media pages and its website at “www.clipperofficial.com”).
The Complainant has registered the CLIPPER Mark, generally for goods in Class 34, in various jurisdictions including the United Kingdom, the United States, and the European Union. In particular, the Complainant is the owner of a Spanish trade mark registration for the CLIPPER Mark (no.629911) with a filing date of November 30, 1970.
The Domain Names were registered on March 8, 2015. The Domain Names do not redirect to an active website and there is no evidence that they have ever redirected towards an active website.
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) that the Domain Names are confusingly similar to the Complainant’s CLIPPER Mark;
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) that the Domain Names have been registered and are being used in bad faith.
The Complainant is the owner of the CLIPPER Mark, being the owner of trade marks registered in various international jurisdictions for the CLIPPER Mark. The Complainant has also registered domain names that incorporate the CLIPPER Mark, including <clipperlighter.com> and <clipperofficial.com>. The Domain Names are confusingly similar to the CLIPPER Mark as each of the Domain Names reproduces the word mark CLIPPER in its entirety and adds the descriptive terms “custom” and “lighter(s)”.
The Respondent is not commonly known by the Domain Names nor does it have any trade marks that correspond to the Domain Names. The Complainant has not authorized or licensed the Respondent to use the CLIPPER Mark or any confusingly similar variations thereof. The Respondent has not made demonstrable preparations to use the Domain Names for a bona fide offering of goods and services or made a legitimate noncommercial or fair use of the Domain Names as the Domain Names do not resolve to an active webpage.
The Respondent has registered and uses the Domain Names in bad faith. There is no plausible circumstance under which the Respondent could use the Domain Names, which combine the CLIPPER Mark and the word “lighter(s)”, other than to falsely create an impression of an association with the Complainant. The Respondent also failed to respond to a cease and desist letter sent by the Complainant. In such circumstances, the Respondent’s passive holding of the Domain Names amounts to use of the Domain Names in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Names must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the CLIPPER Mark, having registrations for the CLIPPER Mark as a trade marks in various countries around the world.
Each of the Domain Names incorporates the CLIPPER Mark in its entirety with the addition of the dictionary terms “custom … lighter(s)”. The addition of a dictionary term (or terms) to a complainant’s mark is insufficient to dispel the impression of confusing similarity, see Wal-Mart Stores, Inc. v. Henry Chan, WIPO Case No. D2004-0056. The Panel finds that each of the Domain Names is confusingly similar to the Complainant’s CLIPPER Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant may make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. If such a prima facie case is made out, the respondent then has the burden of demonstrating rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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 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 is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Names or to seek the registration of any domain name incorporating the CLIPPER Mark or a mark similar to the CLIPPER Mark. There is no evidence that the Respondent is commonly known by the Domain Names or any similar name.
There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Names in connection with a bona fide offering of goods or services or for a legitimate noncommercial use. In fact there is no evidence of any demonstrable preparations to use the Domain Names at all.
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or interests in the Domain Names. The Respondent has chosen not to respond to the Complaint and thus has failed to provide any evidence of rights and legitimate interests in the Domain Names. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Names in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registrations to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Names; or
(ii) the Respondent has registered the Domain Names in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the Domain Names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Names, the 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 the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
The Panel finds that the Respondent must have been aware of the Complainant and its reputation in the CLIPPER Mark at the time the Respondent registered the Domain Names. The Complainant has been offering cigarette lighters under the CLIPPER Mark for over 40 years and had registered the domain name <clipperlighter.com> in 2005, almost 9 years prior to the registration of the Domain Names. There is no obvious reason, nor has the Respondent offered an explanation, for the Respondent to register two domain names both incorporating the CLIPPER Mark and adding the word “lighter(s)” which describes the product sold by the Complainant under the CLIPPER Mark unless there was an intention to create a likelihood of confusion between the Domain Names and the Complainant and the CLIPPER Mark.
The Domain Names are currently inactive. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 established that a UDRP panel must examine all the circumstances of the case to determine whether a respondent is acting in bad faith in circumstances where the domain names are unused.
The Panel is prepared to infer, based on the conduct of the Respondent, including the passive holding of the Domain Names for the last 6 years following their registration, the failure to reply to the Complainant’s cease-and-desist letter, the failure by the Respondent to participate in this proceeding or otherwise provide any explanation of its conduct in registering two domain names that combine the CLIPPER Mark and the word “lighter(s)”, that the Domain Names are most likely being held for sale or pending use as a website that, without the license of the Complainant, will offer or make reference to the Complainant’s lighters, or products that purport to compete with the Complainant’s lighters. As such, the Panel finds that the passive holding of the Domain Names amounts to use in bad faith.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Names in bad faith under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <customclipperlighter.com> and <customclipperlighters.com> be transferred to the Complainant.
Date: May 24, 2021