WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
TBNR, LLC v. Whois Privacy, Private by Design LLC / Hoan Mr
Case No. D2021-2570
1. The Parties
The Complainant is TBNR, LLC, United States of America (the “United States”, represented by Brackett & Ellis, P.C., United States.
The Respondent is Whois Privacy, Private by Design LLC, United States / Hoan Mr, Viet Nam.
2. The Domain Names and Registrars
The disputed domain names <prestonsstyleez.com> and <prestonsstyless.com> are registered with Porkbun LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 7, 2021. On August 9, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 10, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 18, 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 August 18, 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 August 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 12, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 24, 2021.
The Center appointed Miguel B. O’Farrell as the sole panelist in this matter on September 29, 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, TBNR, LLC, is involved in on-line retail services featuring clothing and accessories, toys, electronics and other goods.
The Complainant owns United StatesTrademark Registration No. 5108401 PRESTONS STYLEZ, registered on December 27, 2016 for services in class 35, which it claims to have used continuously since at least September 1, 2015 and United States Trademark Registration No. 6158275 PRESTONSSTYLEZ, registered on September 22, 2020 for services in class 35, which it claims to have used continuously since November 29, 2010.
The Complainant is also the owner of the domain name <prestonsstylez.com>, registered on September 4, 2015, with which it operates a website providing retail store services related to clothing, toys and electronics.
The disputed domain names <prestonsstyleez.com> and <prestonsstyless.com> were registered, respectively, on August 3, 2021 and July 30, 2021 and relate to websites offering similar goods to those offered on the Complainant’s website.
5. Parties’ Contentions
The Complainant claims that the disputed domain names are confusingly similar with the trademarks PRESTONS STYLEZ and PRESTONSSTYLEZ in which the Complainant has rights; and that the Respondent has no rights or legitimate interests in the disputed domain names, which were registered and are being used in bad faith.
The Respondent registered the disputed domain names more than ten years after the Complainant began using its trademarks.
The Respondent´s websites are virtually identical to the Complainant´s website. The Complainant’s website uses a particular color schematic and style throughout, which features a stylized flame and offers for sale various items depicting the flame. The Respondent’s websites utilize the same color scheme and other elements which appear on the Complainant’s website.
The Respondent appears to have purchased Google search- terms reflecting the Complainant’s mark, as searching the Complainant’s mark on the popular engine results in the Respondent’s website appearing first.
The Respondent does not appear to otherwise offer goods or services unrelated to those of the Complainant.
Finally, the Complainant requests the Panel to issue a decision ordering that the disputed domain names be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely that:
the disputed domain names are identical or confusingly similar with a trademark or service mark in which the Complainant has rights; and
the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
the disputed domain names were registered and are being used in bad faith.
A. Identical or Confusingly Similar
As set forth in section 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) the standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the trademark and the disputed domain name to determine whether the disputed domain name is confusingly similar with the trademark. The test involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.
The Panel considers that the disputed domain names are confusingly similar with the Complainant’s PRESTONS STYLEZ and PRESTONSSTYLEZ trademarks. Both disputed domain names commence with the word “prestons” and continue with misspellings of the word “stylez”. In the case of <prestonsstyless.com> the letter “z” has been replaced by “ss” and <prestonsstylees.com> includes a additional “e” and the final “z” has been replaced by an “s”, which makes them two clear cases of what is known as “typosquatting”. Such differences do not prevent a finding of confusing similarity between the disputed domain names and the Complainant’s trademarks.
The “.com” generic Top-Level Domain (“gTLD”) is viewed as a standard registration requirement and is generally disregarded under the first element confusing similarity test, as set forth in section 1.11 of WIPO Overview 3.0.
Accordingly, the Panel finds that the disputed domain names are confusingly similar with the PRESTONS STYLEZ and PRESTONSSTYLEZ trademarks in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy are fulfilled.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is 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.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a domain name, it is well established, as it is put in section 2.1 of WIPO Overview 3.0, that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
There is no evidence in the present case that the Respondent has been commonly known by the disputed domain names, enabling it to establish rights or legitimate interests therein.
Furthermore, there is no evidence in the file to prove any of the circumstances mentioned in paragraph 4(c) of the Policy, nor any other circumstances to suggest that the Respondent has rights or legitimate interests in the disputed domain names.
Likewise, and as further discussed under section 6.C of this decision, it does not seem that the Respondent is making any legitimate noncommercial or fair use of the disputed domain names, but rather that it intends to use the disputed domain names for the purpose of deriving unfair monetary advantage by confusing Internet users and leading them to believe that the sites to which the disputed domain names relate are official sites of the Complainant.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the disputed domain names (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names and that the requirements of paragraph 4(a)(ii) of the Policy have been fulfilled.
C. Registered and Used in Bad Faith
The Panel is satisfied that the Respondent must have been aware of the Complainant’s trademarks PRESTONS STYLEZ and PRESTONSSTYLEZ mentioned in paragraph 4 above (Factual Background) when it registered the disputed domain names <prestonsstyleez.com> on August 3, 2021 and <prestonsstyless.com> on July 30, 2021.
The Complainant has registered and used the trademarks mentioned in the above paragraph many years before the Respondent registered the disputed domain names, which relate to websites offering goods similar to those offered by the Complainant in its website at the domain name <prestonsstylez.com> since 2015.
The Respondent when registering the disputed domain names has targeted the Complainant’s PRESTONS STYLEZ and PRESTONSSTYLEZ trademarks by including in both of them the word “prestons” followed by misspellings of the word “stylez”. In other words, the Respondent has incurred in what is known as “typosquatting”, which is tantamount to bad faith, for the purpose of confusing Internet users and capitalize on the fame of the Complainant’s trademarks for its own monetary benefit.
The fact that there is a clear absence of rights or legitimate interests coupled with no credible explanation for the Respondent’s choice of the disputed domain names is also a significant factor to consider that the disputed domain names were registered in bad faith (as stated in section 3.2.1 of WIPO Overview 3.0).
The Respondent has also imitated the look and feel of the Complainant’s website to further try to confuse Internet users to make them think that they have reached the Complainant’s official website when that is not the case.
The Panel finds that the Respondent has registered and uses the disputed domain names intentionally to attempt to attract for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement. This amounts to bad faith under paragraph 4(b)(iv) 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 disputed domain names, <prestonsstyleez.com> and <prestonsstyless.com> be transferred to the Complainant.
Miguel B. O’Farrell
Date: October 8, 2021