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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The White Company (U.K.) Limited v. Domain Administrator, Fundacion Privacy Services LTD

Case No. D2021-1963

1. The Parties

The Complainant is The White Company (U.K.) Limited, United Kingdom (“UK”), represented by Dechert, UK.

The Respondent is Domain Administrator, Fundacion Privacy Services LTD, Panama.

2. The Domain Name and Registrar

The disputed domain name <thewhitescompany.com> (the “Disputed Domain Name”) is registered with Media Elite Holdings Limited dba Register Matrix (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 22, 2021. On June 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 30, 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 July 7, 2021. In accordance with the Rules, paragraph 5, the due date for the Response was July 27, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 5, 2021.

The Center appointed Gabriela Kennedy as the sole panelist in this matter on August 10, 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 has been operating an international, multi-channel business selling a variety of products since it was established in the UK in 1994. The Complainant owns more than 50 stores throughout the UK as well as stores throughout the United States (“US”), and ships its products across the world, including to Panama. The Complainant achieved a turnover of over GBP 273 million for the 70 week period ending August 3, 2019. The Complainant has built a strong reputation for its products and services in the industry, and is the recipient of multiple awards.

The Complainant is the owner of several trade mark registrations for THE WHITE COMPANY and THE LITTLE WHITE COMPANY trade marks in various jurisdictions, including, inter alia, THE WHITE COMPANY trade mark (Reg. No. 2450213) registered in the UK on March 21, 2007, THE WHITE COMPANY trade mark (Reg. No. 902788578) registered in the UK on June 30, 2004, THE WHITE COMPANY trade mark (Reg. No. 2349982) registered in the UK on November 28, 2003, THE WHITE COMPANY trade mark (Reg. No. 3029459) registered in the US on December 13, 2005, and THE LITTLE WHITE COMPANY trade mark (Reg. No. 2349977) registered in the UK on November 26, 2003.

The Respondent registered the Disputed Domain Name on December 1, 2020. The Disputed Domain Name resolves to a website consisting of a directory of multiple pay-per-click links to secondary pages of other businesses, which compete with the Complainant’s products and services.

5. Parties’ Contentions

A. Complainant

The Complainant’s primary contentions can be summarised as follows:

(a) The Disputed Domain Name is confusingly similar to the Complainant’s THE WHITE COMPANY trade mark. The Disputed Domain Name incorporates the Complainant’s THE WHITE COMPANY trade mark in its entirety with the addition of the letter “s”. This is clearly a case of typosquatting.

(b) The Disputed Domain Name was registered long after the Complainant established its business and applied for the registration of THE WHITE COMPANY trade mark. The Respondent must have been aware of the Complainant and its rights at the time the Disputed Domain Name was registered. The Respondent selected the Disputed Domain Name to trade off the reputation of the Complainant’s trade marks and was not licensed or authorized to use the Complainant’s trade marks. The Respondent has no rights or legitimate interest in respect of the Disputed Domain Name.

(c) The Respondent has registered the Disputed Domain Name primarily for the purpose of disrupting the Complainant’s business and to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trade marks. The Respondent’s mere act of typosquatting presents evidence of bad faith. The Disputed Domain Name has also been used in a manner that is likely to dilute the reputation of the Complainant’s trade marks. The Respondent must have been aware of the Complainant’s rights in its trade marks when registering the Disputed Domain Name, which is confusingly similar to THE WHITE COMPANY trade mark. As such, the Disputed Domain Name was registered, and is being used, in bad faith.

B. Respondent

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

The fact that the Respondent has not submitted a formal Response does not automatically result in a decision in favour of the Complainant. However, the Respondent’s failure to file a Response may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complaint as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403).

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:

(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used by the Respondent in bad faith.

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has rights in THE WHITE COMPANY and THE LITTLE WHITE COMPANY trade marks based on its various trade mark registrations, such as THE WHITE COMPANY trade mark (Reg. No. 2450213) registered in the UK on March 21, 2007, THE WHITE COMPANY trade mark (Reg. No. 902788578) registered in the UK on June 30, 2004, THE WHITE COMPANY trade mark (Reg. No. 2349982) registered in the UK on November 28, 2003, THE WHITE COMPANY trade mark (Reg. No. 3029459) registered in the US on December 13, 2005, and THE LITTLE WHITE COMPANY trade mark (Reg. No. 2349977) registered in the UK on November 26, 2003.

It is well established that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the Top-Level Domain extension (“.com” in this case) may be disregarded. See section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Disputed Domain Name incorporates the Complainant’s THE WHITE COMPANY trade mark in its entirety with the addition of the letter “s” inserted between the words “white” and “company”. The Panel finds that there is a reasonable likelihood that Internet users may not notice the difference and may mistakenly perceive the website to which the Disputed Domain Name resolves as being one of the Complainant’s official websites. Such variation does not distinguish the Disputed Domain Name from the Complainant’s THE WHITE COMPANY trade mark and does not prevent a finding of confusing similarity between the Disputed Domain Name and the Complainant’s THE WHITE COMPANY trade mark.

As such, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s THE WHITE COMPANY trade mark, and accordingly, paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent in a disputed domain name, the respondent then carries the burden of production of evidence that it has rights or legitimate interests in the domain name – with the burden of proof always remaining on the complainant. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of the WIPO Overview 3.0.

The Panel finds that the Complainant has not authorised the Respondent to use THE WHITE COMPANY trade mark, and there is no relationship between the Complainant and the Respondent, which would otherwise entitle the Respondent to use THE WHITE COMPANY trade mark. Accordingly, the Panel is of the view that a prima facie case has been established by the Complainant and it is for the Respondent to show rights or legitimate interests in the Disputed Domain Name. As the Respondent has not submitted a Response, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence.

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following:

(i) before any notice to him of the dispute, the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services;

(ii) the Respondent has been commonly known by the Disputed Domain Name, even if he has acquired no trade mark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

The Disputed Domain Name resolves to a parked page consisting of pay-per-click links to third party websites offering products and services that directly compete with the Complainant’s business. In light of such use, the Panel finds that the Respondent’s use of the Disputed Domain Name or a name corresponding to the Disputed Domain Name is not in connection with any bona fide offering of goods or services and cannot be regarded as legitimate noncommercial or fair use. Such use of the trade mark in/as the Disputed Domain Name itself gives a false impression that the Disputed Domain Name is associated with and/or endorsed by the Complainant and is capable of misleading and diverting visitors seeking the Complainant and its trade marks.

In addition, the Respondent has not provided any evidence to prove that it has any trade mark rights corresponding to the Disputed Domain Name, or that it has become commonly known by the Disputed Domain Name.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

UDRP panels have consistently found that the mere registration of a domain name that is confusingly similar to a widely-known trade mark by an unaffiliated entity (particularly domain names which incorporate a mark plus a descriptive term) can already by itself create a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0.

The Complainant’s THE WHITE COMPANY trade mark appears to be fairly well-known. A quick Internet search shows that the top search results returned for “THE WHITE COMPANY” are the Complainant’s official website and social media sites, and several third party websites making references to the Complainant’s products and services. Therefore, taking this into consideration, together with the fact that the Disputed Domain Name incorporates a deliberately misspelled version of the Complainant’s THE WHITE COMPANY trade mark – with no obvious explanation except to trade on the Complainant’s mark, the Respondent must have been aware of the Complainant and its rights in THE WHITE COMPANY trade mark when registering the Disputed Domain Name.

In addition, the Panel finds that the following factors further support a finding that the Disputed Domain Name was registered and is being used by the Respondent in bad faith:

(i)The Respondent failed to respond to the Complainant’s contentions and has provided no evidence of any actual or contemplated good faith use by it of the Disputed Domain Name;

(ii) The Respondent registered the Disputed Domain Name using a privacy shield to conceal its identity (see Primonial v. Domain Administrator, PrivacyGuardian.org / Parla Turkmenoglu, WIPO Case No. D2019-0193); and

(iii) It is difficult to conceive of any plausible use of the Disputed Domain Name that would amount to good faith use, given that the Disputed Domain Name contains a typosquatted version of the Complainant’s THE WHITE COMPANY trade mark and is being used by the Respondent to host a parked page that contains links to third-party websites offering competing products and services. Such use of trade mark in/as the the Disputed Domain Name itself would likely mislead third parties into believing the Disputed Domain Name is associated with and/or endorsed by the Complainant, thereby causing harm to the Complainant’s legitimate rights.

In the circumstances, the Panel finds that the Respondent registered and has been using the Disputed Domain Name in bad faith, and paragraph 4(a)(iii) of the Policy has been satisfied.

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, <thewhitescompany.com> be transferred to the Complainant.

Gabriela Kennedy
Sole Panelist
Date: August 24, 2021

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