WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Expresso Realty, Inc. d/b/a Poetic French Bulldogs v. Domain Privacy Service FBO Registrant, The Endurance International Group, Inc. / Saahkem Winnie Nayoh, poeticbulldogfrenchies
Case No. D2021-3552
1. The Parties
Complainant is Expresso Realty, Inc. d/b/a Poetic French Bulldogs (“Complainant”), United States of America (“United States”), represented by The Concept Law Group, P.A., United States.
Respondent is Domain Privacy Service FBO Registrant, The Endurance International Group, Inc., United States / Saahkem Winnie Nayoh, poeticbulldogfrenchies (“Respondent”), United States.
2. The Domain Name and Registrar
The disputed domain name <poeticbulldogfrenchies.com> (“Domain Name”) is registered with FastDomain, Inc. (“Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 25, 2021. On October 26, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 26, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on November 2, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on November 5, 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 Respondent of the Complaint, and the proceedings commenced on November 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 5, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 6, 2022.
The Center appointed John C. McElwaine as the sole panelist in this matter on January 12, 2022. 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
Complainant is a privately held company located in Florida. Complainant is engaged in the business of breeding and selling pure breed and designer mix dogs, specifically, French bulldogs. Complainant began doing business under the POETIC FRENCH BULLDOGS trademark in 2010. Complainant claims common law rights in the POETIC FRENCH BULLDOGS trademark dating back to Complainant’s founding in 2010.
Complainant registered the <poeticfrenchbulldogs.com> domain name on June 13, 2010, and has used and continues to use the domain name to host Complainant’s website, which Complainant utilizes exclusively for purposes of advertising and marketing Complainant’s dog breeding services.
The Domain Name was registered on July 20, 2021. Respondent has been using the Domain Name to host a website that is virtually identical to Complainant’s website.
5. Parties’ Contentions
As background, Complainant alleges that it is a breeder of pure breed and designer mix dogs, specifically, French bulldogs. Complainant contends that they have offered these services under the POETIC FRENCH BULLDOGS trademark since Complainant’s founding in 2010. Complainant alleges to have sold dogs in all 50 states in the United States as well as sales internationally and Complainant’s sales have exceeded USD 5 million with all of Complainant’s advertising for being conducted online via Complainant’s website and Complainant’s social media platforms.
Complainant alleges that Respondent is using the Domain Name to display a virtually identical replica of Complainant’s website in order for Respondent to attract visitors to the website for Respondent’s own financial gain by creating a likelihood of confusion with Complainant’s POETIC FRENCH BULLDOG trademark. Complainant has not provided authorization for the creation of this webpage.
With respect to the first element of the Policy, Complainant contends that it owns common law trademark rights in the POETIC FRENCH BULLDOG trademark by virtue of nearly twelve (12) years of use of the mark and substantial investment and marketing and actual sales. Complainant contends that the Domain Name domain incorporates the POETIC FRENCH BULLDOG trademark in its entirety, more specifically, a transposed version with a misspelling of the trademark, and therefore, asserts that the Domain Name is identical and/or confusingly similar to a trademark in which Complainant has rights.
Moving on to the second element of the Policy, Complainant asserts that Respondent is not commonly known by the name “poetic french bulldog” or “poetic bulldog frenchie”. Moreover, Complainant contends that Respondent cannot be making a bona fide offering of services because Respondent is utilizing a counterfeit website to offer counterfeit, fraudulent, non-existent services and is using Complainant’s trademarks and copyright protected images without authorization to create the impression that the website displayed at the Domain Name is authorized by or related to Complainant. In addition, Complainant points out that potential customers are asked to provide sensitive information, such as name, email address, phone number, and city/country in order to begin the dog purchasing process.
Lastly, concerning the third element of the Policy, Complainant alleges that Respondent’s bad faith registration and use of the Domain Name is evidenced by (i) Respondent registering the Domain Name in order to prevent Complainant from reflecting the POETIC FRENCH BULLDOG trademark in the Domain Name, (ii) Respondent primarily registering the Domain Name for the purpose of disrupting the business of a competitor, and (iii) Respondent registering the Domain Name to intentionally attract for commercial gain, Internet users to the Domain Name, by creating a likelihood of confusion with Complainant’s trademark, specifically, by developing an infringing website offering to sell counterfeit services.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Even though Respondent did not reply to the Complaint, paragraph 4 of the Policy requires that, in order to succeed in this UDRP proceeding, Complainant must still prove its assertions with evidence demonstrating:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Because of the absence of a Response, the Panel may accept as true the reasonable factual allegations stated within the Complaint and may draw appropriate inferences therefrom. See St. Tropez Acquisition Co. Limited v. AnonymousSpeech LLC and Global House Inc., WIPO Case No. D2009-1779; Bjorn Kassoe Andersen v. Direction International, WIPO Case No. D2007-0605; see also paragraph 5(f) of the Rules (“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”). Having considered the Complaint, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel’s findings on each of the above cited elements are as follows.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires Complainant show that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. In this matter, Complainant alleges to have unregistered or common law rights in the POETIC FRENCH BULLDOG mark. With respect to common law trademark rights, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), Section 1.3 states that “to establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services.”
Here, while certain elements of Complainant’s mark are descriptive of Complainant’s services, namely, “French” ”bulldog”, the remaining and dominant term, “poetic” renders the mark as a whole distinctive of Complainant’s services. As such, the Panel can say for present purposes that Complainant in effect has common law service mark rights in the POETIC FRENCH BULLDOG mark, taken as a whole, because the term “poetic” renders the combined mark inherently distinctive and Complainant has been using the trademark in commerce for nearly twelve (12) years.
It is well established that the addition of a descriptive (or other) word to a trademark in a domain name does not avoid a finding of confusing similarity. See Mastercard Int’l Inc. v. Dolancer Outsourcing Inc., WIPO Case No. D2012-0619; Air France v. Kitchkulture, WIPO Case No. D2002-0158; DHL Operations B.V., et al. v. Diversified Home Loans, WIPO Case No. D2010-0097. In this case, the addition of “bulldog frenchies” does nothing to avoid a finding of confusing similarity with Complainant’s POETIC FRENCH BULLDOG trademarks. See Golden Goose S.p.A. v. WhoisGuard Protected, WhoisGuard, Inc. / Wei Zhang, WIPO Case No. D2018-0287; Statoil ASA (Statoil) v. Liheng, Just Traffic Supervision Consulting, WIPO Case No. D2016-2115; Dassault Aviation, Groupe Industriel Marcel Dassault v. N Rahmany, WIPO Case No. D2015-0999.
Furthermore, 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. See WIPO Overview 3.0, Section 1.9. The fact that Respondent has swapped the position of terms (and changed the spelling of one of the terms) in the Domain Name that correspond to Complainant’s trademark has the same effect and does not prevent the Panel from finding the Domain Name is confusingly similar. See Association des Centres Distributeurs E. Leclerc - A.C.D Lec v. Noorinet, WIPO Case No. D2015-0024 (“the disputed domain name…incorporates the [c]omplainant’s existing trademark, and merely switches the word order…[t]he disputed domain name incorporates the dominant feature of the [c]omplainant’s mark and is, in the [p]anel’s view, confusingly similar to the [c]omplainant’s mark.”)
Accordingly, the Panel finds that Complainant has met its burden under the first element.
B. Rights or Legitimate Interests
Under the Policy, paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent has no rights or legitimate interests in the Domain Name. Complainant need only make a prima facie showing on this element, at which point the burden of production shifts to Respondent to present evidence that it has rights or legitimate interests in the Domain Name. If Respondent has failed to do so, Complainant is deemed to have satisfied its burden under paragraph 4(a)(ii) of the Policy. See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc., WIPO Case No. D2010-1141; seealso Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi, WIPO Case No. D2000-0252. In this matter, Complainant contends Respondent developed a website at the Domain Name using Complainant’s trademarks, graphics, and images to offer counterfeit services. Respondent has been properly notified of the Complaint by the Center; however, Respondent failed to submit any response concerning these serious accusations.
Although Complainant has satisfied its burden, Respondent may establish a right or legitimate interest in the Domain Name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
“(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 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.”
The Panel finds that Respondent has failed to show rights or legitimate interests under any of the three conditions or otherwise.
As an initial matter, there is no evidence that Respondent is commonly known by the Domain Name, as the WhoIs information lists Respondent as Saahkem Winnie Nayoh. Respondent cannot rely upon paragraph 4(c)(ii) of the Policy.
Also, the Panel finds that Respondent’s use is not legitimate use of the Domain Name because Respondent is using the Domain Name to resolve to a website engaged in unlawfully offering counterfeit services. WIPO Overview 3.0, section 2.13.1 (“Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.”) In addition, the use of the Domain Name to divert Internet traffic to an infringing webpage is not a bona fide offering of goods or services. See Chicago Mercantile Exchange Inc., CME Group Inc. v. Registration Private, Domains By Proxy, LLC, DomainsByProxy.com / Nikolay Korobeynikov, WIPO Case No. D2016-0654 (finding no legitimate interest in a website resolving from the disputed domain name, which mirrored, and purported to be, the website of “CME Group” and which provided information relating to the trading of futures and options).
Furthermore, under the second element, panels will normally find that employing a misspelling signals an intention on the part of respondent (typically corroborated by infringing website content) to confuse users seeking or expecting complainant. See WIPO Overview 3.0, section 1.9. Here, Complainant’s trademark is POETIC FRENCH BULLDOGS and the Domain Name is comprised of a transposition of “French” and “bulldogs” with Respondent pluralizing the word “French” combined with a website offering counterfeit services. The Panel is satisfied that these factors signal a deliberate intention by Respondent to confuse consumers and is further evidence of Respondent’s lack of rights or legitimate interest in the Domain Name.
Lastly, Respondent’s use of the Domain Name is not noncommercial or fair use under paragraph 4(c)(iii) of the Policy, given that Respondent is selling (or alleging to sell) counterfeit or competing services from an online website. Such activity does not amount to a fan site, criticism, or other activity that may be considered noncommercial or fair. See, Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647.
Accordingly, for the reasons detailed above, Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name. Respondent had the opportunity to put forth evidence of its rights or legitimate interests yet provided no substantive response as to why its conduct would show a right or legitimate interest in the Domain Name under the Policy. In the absence of such a response and combined with the factors as detailed above, the Panel finds that Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, Complainant must show that Respondent registered and is using the Domain Name in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy.
Bad faith registration can be found where a respondent “knew or should have known” of a complainant’s trademark rights and nevertheless registered a domain name in which it had no right or legitimate interest. See Accor v. Kristen Hoerl, WIPO Case No. D2007-1722. As detailed above, Respondent registered the Domain Name which is confusingly similar to Complainant’s POETIC FRENCH BULLDOGS Mark. Given the content displayed on Respondent’s website, there is no explanation for Respondent to have chosen to register the Domain Name other than to intentionally trade off the goodwill and reputation of Complainant’s trademark or otherwise create a false association with Complainant. With no response from Respondent, this claim is undisputed, and in fact, the hosting of a website that is a near identical replica of Complainant’s own website hosted at <poeticfrenchbulldogs.com> increases the likelihood of confusion created by Respondent’s registration and use of the Domain Name and is evidence that Respondent knew of Complainant and Complainant’s trademark rights prior to registration of the Domain Name.
As discussed herein, Respondent registered the Domain Name and used it to host a website that Complainant alleges contains unauthorized and infringing use of Complainant’s trademark and copyrighted content. This amounts to bad faith use of the Domain Name by Respondent. See Identigene, Inc. v. Genetest Labs., WIPO Case No. D2000-1100 (finding bad faith where the respondent’s use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site); MathForum.com, LLC v. Weiguang Huang, WIPO Case No. D2000-0743 (finding bad faith under paragraph 4(b)(iv) of the Policy where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
Respondent had the opportunity to put forth evidence of its good faith registration and use of the Domain Name yet provided no substantive response as to why its conduct is justified and not bad faith under the Policy. In the absence of such a response and combined with the factors as detailed above, the Panel finds that Complainant has met its burden of showing that Respondent registered and is using the Domain Name 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 Name <poeticbulldogfrenchies.com> be transferred to Complainant.
John C McElwaine
Date: January 26, 2022