WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
New Balance Athletics, Inc. v. Withheld for Privacy ehf, Privacy Service Provided by Withheld for Privacy ehf / Cecil Lovell
Case No. D2021-3634
1. The Parties
The Complainant is New Balance Athletics, Inc., United States of America (“United States) (hereinafter, “Complainant”), represented by Day Pitney LLP, United States.
The Respondent is Withheld for Privacy ehf, Privacy Service Provided by Withheld for Privacy ehf, Iceland / Cecil Lovell, United States (hereinafter, “Respondent”).
2. The Domain Name and Registrar
The disputed domain name <nbshop.online> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 1, 2021. On November 2, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 2, 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 Complainant on November 8, 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 10, 2021.
The Center verified that the Complaint together with the amended Complaint (hereinafter, the “Complaint”) satisfy 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 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 12, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 13, 2021.
The Center appointed M. Scott Donahey as the sole panelist in this matter on December 27, 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
Complainant is a large designer and manufacturer of athletic footwear and wearing appeal with a worldwide reputation. Complainant owns numerous trademarks in the United States, the European Union, and around the world. United States trademark registrations for NB date back to at least as early as May 17, 1977. European Union NB marks were registered as early as August 21, 2006. Complaint, Annex 6. Complainant has never granted permission to or authorized in any way the use of its registered trademarks by Respondent.
Respondent registered the disputed domain name on December 7, 2020. Complaint, Annex 1. Respondent is using the disputed domain name to resolve to a website which is a virtual copy of Complainant’s web site in the Italian language. Complaint, Annex 2. On that web site Respondent purports to sell Complainant’s trademarked footwear at prices discounted from Complainant’s standard prices by as much as 80%. Complainant has never authorized Respondent to use its marks or to market its footwear. Respondent’s website to which the disputed domain name resolves requires that a user create an account by providing the user’s email address and creating a password before paying for goods purportedly manufactured by Complainant by credit card. Complaint, Annex 2.
5. Parties’ Contentions
Complainant alleges that the disputed domain name is confusingly similar to Complainant’s trademark. Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain name. Complainant argues that Respondent has registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and,
(iii) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name consists of Complainant’s NB trademark followed by the word “shop.” The disputed domain name resolves to a web site that is virtually identical to that of Complainant, but for having been translated into Italian and offering Complainant’s goods at steep discounts. Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark.
B. Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the almost 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 disputed domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
In the present case Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name and Respondent has failed to assert any such rights. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
Respondent is using the disputed domain name to resolve to a web site that purports to offer Complainant’s trademarked goods at bargain basement prices. Respondent’s web site is simply an Italian language equivalent of that of Complainant. Respondent requires any user who is duped into believing that he or she has arrived at Complainant’s web site to create an account by providing the user’s name and paying for any “purchases” by credit card. Accordingly, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith.
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, <nbshop.online>, be transferred to Complainant.
M. Scott Donahey
Date: January 6, 2022