WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Ann Summers Limited v. Domain Admin, Whois Privacy Corp.

Case No. D2021-1113

1. The Parties

The Complainant is Ann Summers Limited, United Kingdom, represented by SafeNames Ltd., United Kingdom.

The Respondent is Domain Admin, Whois Privacy Corp., Bahamas.

2. The Domain Name and Registrar

The disputed domain name <annsumers.com> is registered with Internet Domain Service BS Corp (the “Registrar”), hereinafter referred to as the “disputed domain name”.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 12, 2021. On April 12, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 13, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that 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 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 10, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 11, 2021.

The Center appointed Richard C.K. van Oerle as the sole panelist in this matter on May 19, 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 British multinational retailer company, specializing in lingerie and accessories. It was founded in the 1970s and has used ANN SUMMERS since then.

According to the evidence submitted the Complainant holds various national and international registrations for the trademark ANN SUMMERS, inter alia European Union trademark No. 000048421, registered on October 5, 1998. It concerns a figurative mark in which the words ANN SUMMERS are written in a special script:

The trademark will be referred to hereunder as “the Trademark”.

The disputed domain name was registered on February 20, 2004.

The disputed domain name used to redirect to various third-party websites, amongst others to <stripchat.com>. This website appears to provide videos which are pornographic in content. Now it resolves to a pay-per-click (PPC) website that displays sponsored links for sexual-related products and services.

It is also offered for sale on <perfectname.com> for USD 336.38.

5. Parties’ Contentions

A. Complainant

The Complainant was founded in the 1970s and has used ANN SUMMERS since then in connection with brick-and-mortar retail stores. Now there are just under a hundred “Ann Summers” stores, and the company’s annual turnover regularly exceeds GBP 100 million. The Complainant also offers services online via its website “www.annsummers.com”. The website is estimated to average around 1.5 million visits a month.

The Complainant submits that the disputed domain name is confusingly similar to the Trademark. The Trademark clearly displays ANN SUMMERS alongside a logo in the shape of an apple. The omitting of a letter in the disputed domain name is not sufficient to distinguish the disputed domain name from the Trademark. The omitting of a letter is closer to being deceptive, rather than distinguishing, given it is indicative of typo squatting.

The Respondent lacks a right or a legitimate interest in the disputed domain name. The Respondent has no trademark rights to, nor is it commonly known by the term “Ann Summers” nor “Annsumers”. The Respondent also did not receive a license to use a domain name featuring the Trademark. The Respondent uses the disputed domain name to redirect to a website providing pornographic content; this indicates a clear lack of bona fide offering of goods and services. The disputed domain name takes unfair advantage of the success and popularity of the Trademark. The obvious misspelling itself also demonstrates the intention to mislead consumers.

The disputed domain name was registered and is being used in bad faith. The Complainant’s earliest trademark was registered 12 years before the registration of the disputed domain name. The obvious misspelling is indicative of typosquatting: the Respondent registered this disputed domain name hoping to capture traffic intended for the Complainant. The fact that the Respondent solely replied to the cease and desist letter to incite purchase of the disputed domain name, is further evidence of bad faith. Moreover, redirecting Internet users to a website with adult content, when the disputed domain name does not relate to that content, constitutes bad faith use. It is not possible to conceive of any potential legitimate use of the disputed domain name. In addition, the Respondent committed a pattern of bad faith domain name registrations, as follows from previous UDRP proceedings.

B. Respondent

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

6. Discussion and Findings

As the Respondent has not filed a Response, the Panel shall rule on the basis of the Complaint.

The Panel notes that, in accordance with paragraph 2 of the Rules, the Center has fulfilled its obligation to employ reasonably available means to achieve actual notice of the Complaint to the Respondent.

Based on the Policy, a request to transfer a domain name must meet three cumulative conditions:

a. The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
b. The respondent has no rights to or legitimate interests in the domain name; and
c. The domain name has been registered and is being used in bad faith.

Considering these conditions, the Panel rules as follows:

A. Identical or Confusingly Similar

The Complainant has established that it has registered trademark rights in the Trademark.

The Trademark is figurative in nature and consists of a stylized representation of the letters ANN SUMMERS. The textual element ANN SUMMERS is, however, dominant. The non-textual elements of the Trademark do not detract in any way from the prominence of the word element of the Trademark, which is the most prominent element.

The disputed domain name fully incorporates the Trademark and is identical to the Trademark but for the missing of one of the letters “m”. This missing letter does not change the appearance, pronunciation, nor connotation of the Trademark. It is obviously an intentional misspelling of the Trademark.

The Top-Level Domain (“TLD”) “.com” is typically disregarded under the confusing similarity test, since it is a technical registration requirement (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11).

The Panel therefore finds that the disputed domain name is confusingly similar to the Trademark in which the Complainant has rights.

The first condition of the Policy is met.

B. Rights or Legitimate Interests

While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (see WIPO Overview 3.0, section 2.1).

There is no evidence suggesting that the Respondent has any rights or legitimate interests in the disputed domain name. The Respondent has no trademark rights to, nor is it commonly known by the term “Ann Summers” nor “Annsumers”. The Complainant has not granted any authorization to the Respondent.

The disputed domain name used to redirect to a third-party website providing pornographic content. Additionally, applying UDRP paragraph 4(c), panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users (see WIPO Overview 3.0, section 2.9). The disputed domain name takes unfair advantage of the success and popularity of the Trademark.

The obvious misspelling itself also demonstrates the intention to mislead consumers.

The Panel did not find any indications that the Respondent has rights to or legitimate interests in the disputed domain name in any other way.

The Panel finds that the Complainant has made out an unrebutted prima facie case.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

In the absence of any explanation from the Respondent for its choice of the disputed domain name, the Panel accepts the Complainant’s submission that the Respondent is likely to have registered the disputed domain name with the Complainant’s distinctive Trademark in mind and with the intention of taking unfair advantage of the Complainant’s rights in the Trademark.

The registration of the disputed domain name was clearly abusive, targeting the Complainant’s Trademark, which has been used long before the registration of the disputed domain name.

The Panel also accepts the Complainant’s unrebutted submissions and evidence that the Respondent registered the disputed domain name with the intention of selling it for a sum in excess of its out-of-pocket costs of registration (paragraph 4(b)(i) of the Policy), given that the disputed domain name has a minimum indicated price of USD 336.38 without any evidence from the Respondent as to its expenses.

The redirection of Internet users to a website providing adult content is further evidence of bad faith.

It is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the disputed domain name.

The circumstances of this case justify a finding of registration and use in bad faith.

The Panel concludes that the disputed domain name was registered and is being used in bad faith, within the meaning of the 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 <annsumers.com> be transferred to the Complainant.

Richard C.K. van Oerle
Sole Panelist
Date: June 2, 2021