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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Steiner Wilson & Webster Pty Ltd trading as Abbey Bridal v. WhoisGuard Protected, WhoisGuard, Inc. / mahi khan

Case No. D2021-0898

1. The Parties

The Complainant is Steiner Wilson & Webster Pty Ltd trading as Abbey Bridal, Australia, represented by Sparke Helmore, Australia.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / mahi khan, Pakistan.

2. The Domain Name and Registrar

The disputed domain name <abbykbridal.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 March 25, 2021. On March 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 25, 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 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 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 April 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 28, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 29, 2021.

The Center appointed Taras Kyslyy as the sole panelist in this matter on May 6, 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 distributor and retailer of high-quality wedding gowns in Australia incorporated back in 1986. The Complainant owns trademark registrations for its ABBEY BRIDAL mark, including Australian trademark registration No. 1117069, registered from June 5, 2006.

The Complainant operates its website using domain names incorporating the ABBEY BRIDAL trademark, including <abbeybridal.com>, <abbeybridal.com.au> amongst others.

The disputed domain name was registered on February 15, 2021 and resolved to a website featuring ABBYKBRIDAL sign and offered gambling services and suggested unrelated articles in English. At the time of the decision in the present case the disputed domain name resolves to an inactive webpage.

5. Parties’ Contentions

A. Complainant

The disputed domain name is identical or confusingly similar to the Complainant’s trademark. The disputed domain name incorporates the entirety of the Complainant's trademark as its essential element, with the only differences being the misspelling of “Abbey” without the letter “e”; and the addition of the letter “k” in the middle of the disputed domain name. Further, for the purpose of assessing identity or confusing similarity the generic Top-Level Domain (“gTLD”), “.com”, and the absence of spaces in the disputed domain name may be disregarded.

The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant never authorized the Respondent to use its trademark in the disputed domain name or otherwise. The Respondent has infringed the Complainant's rights in its trademark by acquiring the disputed domain name and using the Complainant's trademark as an essential element of the disputed domain name. There is no evidence of the Respondent using, or preparing to use, the disputed domain name or a name corresponding to the disputed domain name for a bona fide offering of goods or services. As of the date of the Complaint, the infringing website appeared to be an inactive template, with no substantive content at all, let alone any offering of goods or services. Clicking each of the available tabs “News”, “Tech”, “Gaming” and “Miscellaneous” lead to the words “Sorry, no content matched your criteria”. Also, there was no reference on the infringing website to “abbykbridal”, other than in the header, nor any indication at all as to the identity of the Respondent. The Respondent does not offer any goods or services at the website at the disputed domain name. The Respondent is not commonly known by the disputed domain name. The Respondent does not have any pending or registered trademark consisting of “abbykbridal” or “abbyk”. The Respondent is not using the disputed domain name for a legitimate non-commercial or fair use, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant's trademark. The Internet users intending to visit the Complainant's website may be directed to the website at the disputed domain name instead, including by entering or searching for the disputed domain name or “abbykbridal” in error. The current passive holding or non-use of the domain name itself is evidence of a lack of rights or legitimate interests on the part of the Respondent.

The disputed domain name was registered and is being used in bad faith. The Respondent knew, or should have known, at the time of registration of the disputed domain name that it was identical or confusingly similar to the Complainant's trademark. The Respondent has no legitimate rights or interests in the disputed domain name or the name “abbykbridal”. The Respondent registered, is using, and has at all times used, the disputed domain name for the purpose of taking unfair advantage of the confusing similarity between the disputed domain name and the Complainant's trademark in order to attract Internet users to its infringing website. There is no conceivable good faith use that the Respondent could make of the disputed domain name, nor any conceivable good faith explanation for the Respondent’s choice of the disputed domain name. The Respondent is concealing its location and contact information, including to avoid being contacted in relation to a domain name dispute, which supports a finding of bad faith. The use of the disputed domain name for an “immature website template” is a form of passive holding or non-use to which the “passive holding” doctrine may apply. The Respondent registered or acquired the disputed domain name primarily for the purpose of selling it to the Complainant or its competitor, for valuable consideration in excess of the Respondent's out-of-pocket costs directly related to the disputed domain name. The Respondent registered the disputed domain name primarily for the purpose of disrupting the business of the Complainant. By using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of its website.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

According to section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”) the applicable gTLD in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. Thus, the Panel disregards the gTLD “.com” for the purposes of the confusing similarity test.

According to section 1.9 of the WIPO Overview 3.0 a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element. The Panel considers the disputed domain name consisting of intentional misspelling of the Complainant’s trademark.

Considering the above the Panel finds the disputed domain name is confusingly similar to the Complainant’s trademark, therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain name.

Furthermore, the Respondent provided no evidence that it holds a right or legitimate interest in the disputed domain name.

The Respondent is not commonly known by the disputed domain name, which could demonstrate its right or legitimate interest (see, e.g., World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe, WIPO Case No. D2008-0642).

The Complainant did not license or otherwise agree for use of its prior registered trademarks by the Respondent; thus, no actual or contemplated bona fide or legitimate use of the disputed domain name could be reasonably claimed (see, e.g., Sportswear Company S.P.A. v. Tang Hong, WIPOCase No. D2014-1875).

The Respondent has no right or legitimate interests in the disputed domain name resolving to an inactive website at the time of the decision in the present case (see, e.g., Philip Morris USA Inc. v. Daniele Tornatore, WIPO Case No. D2016-1302).

Considering the above, the Panel finds the Respondent does not have rights or legitimate interests in the disputed domain name. Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

According to section 3.2.2 of the WIPO Overview 3.0 noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark. The Panel finds that registration of the disputed domain name being intentional misspelling of a highly specific Complainant's trademark confirms the Respondent knew and targeted the Complainant and its trademark when registering the disputed domain name, which is bad faith.

According to section 3.1 of the WIPO Overview 3.0 bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. To facilitate assessment of whether this has occurred, and bearing in mind that the burden of proof rests with the complainant, paragraph 4(b) of the Policy provides that any one of the following non-exclusive scenarios constitutes evidence of a respondent’s bad faith:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or

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

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on the respondent’s website or location.

In this regard, the Complainant has submitted evidence that at some point in time the website at the disputed domain name offered gambling services, and hence the Panel finds that at least the fourth of the above scenarios apply to the present case confirming the Respondent's bad faith.

At the time of the decision the disputed domain name resolves to an inactive webpage. According to section 3.3 of the WIPO Overview 3.0 from the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. In this regard the Panel takes into account (i) the high degree of distinctiveness and reputation of the Complainant’s trademark, (ii) the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the failure of the Respondent to address the Complainant’s cease and desist letter, (iv) the Respondent’s concealing its identity while registering the disputed domain name, and (v) the implausibility of any good faith use to which the disputed domain name may be put. The Panel finds that the circumstances of the present case confirm the non-use of the disputed domain name at the time of the present decision does not prevent the finding of the bad faith.

Considering the above the Panel finds the disputed domain name was registered and is being used in bad faith. Therefore, the Complainant has established its case under 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, <abbykbridal.com> be transferred to the Complainant.

Taras Kyslyy
Sole Panelist
Date: May 11, 2021

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