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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

White Stuff Limited v. Privacy Service Provided by Withheld for Privacy ehf / Dang Van Chien, Wiin

Case No. D2021-4198

1. The Parties

The Complainant is White Stuff Limited, United Kingdom, represented by CSC Digital Brand Services Group AB, Sweden.

The Respondent is Privacy Service Provided by Withheld for Privacy ehf, Iceland / Dang Van Chien, Wiin, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <whitestuff.store> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2021. On December 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 14, 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 the Complainant on December 20, 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 December 21, 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 December 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 11, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 12, 2022. On the same day, the Center received an informal communication from the Respondent asserting, “Please check back. I don’t own this domain name”.

The Center appointed Colin T. O’Brien as the sole panelist in this matter on February 15, 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

The Complainant is the owner of numerous trademark registrations for its mark WHITE STUFF including:

- WHITE STUFF - United Kingdom Reg. No. UK00002217642, registered on June 9, 2000 in Class 41;
- WHITE STUFF - United Kingdom Reg. No. UK00002260263, registered on August 10, 2001 in Classes 16, 25, 35, and 36;
- WHITE STUFF - United Kingdom Reg. No. UK00002284947, registered on April 26, 2002 in Class 32
- WHITE STUFF - European Union Reg. No. 007223027, registered July 17, 2009 in Classes 4, 8, 16, 20, 21, 24, 27, and 35;
- WHITE STUFF - European Union Reg. No. 008672982, registered on March 28, 2001 in Classes 3, 9, 14, 18, 25, 28, 41;
- WHITE STUFF- United States Reg. No. 4119982, registered on April 3, 2012 in Classes 3, 9, 14, 18, 25, 28, and 41.

Established in 1985 as a way for its founders to fund their ski trips to the Alps, the Complainant has over 130 shops and concessions in the United Kingdom and internationally, selling women’s, men’s and children’s clothing as well as accessories and homeware. The Complainant employs over 1,200 individuals in the United Kingdom, Germany and Belgium.

The Complainant operates the websites at the following domain names <whitestuff.com> and <whitestuff.de>.

5. Parties’ Contentions

A. Complainant

By virtue of its trademark and service mark registrations, the Complainant is the owner of the WHITE STUFF trademark. A Complainant is not required to register its marks within the country of the respondent in order to protect its rights in those marks.

It is standard practice when comparing a disputed domain name to the complainant’s trademarks, to not take the extension into account. Therefore, the Top-Level Domain (“TLD”) “.store” in the disputed domain name is disregarded for comparison purposes. The disputed domain name consists solely of the Complainant’s WHITE STUFF trademark, resulting in a domain name that is identical to the Complainant’s WHITE STUFF trademark and thus meeting the requirements under paragraph 4(a)(i) of the Policy.

The Respondent had been using the disputed domain name to host a website, which solds products and services that competed directly with the Complainant’s own offerings, which suggests that the Respondent intended the disputed domain name to be confusingly similar to the Complainant’s trademark as a means of furthering consumer confusion.

The Respondent is not sponsored by or affiliated with the Complainant in any way. Nor has the Complainant given the Respondent permission to use the Complainant’s trademarks in any manner, including in domain names. The Respondent is not commonly known by the disputed domain name, which evidences a lack of rights or legitimate interests.

The Respondent is making neither a bona fide offering of goods or services nor a legitimate, noncommercial fair use of the disputed domain name. On the website previously available at the disputed domain name, the Respondent offered and attempted to sell the products which directly compete with the Complainant’s own offerings.

While no evidence has been found that the disputed domain name was part of an active phishing scheme, the presence of MX records on the disputed domain name, coupled with the Respondent’s use of the disputed domain name to sell competing products, strongly implies that the disputed domain name could be used as part of an email phishing scheme in the future.

The Respondent is currently using the disputed domain name to direct Internet users to a website that resolves to a blank page and lacks content. The Respondent has failed to make use of this disputed domain name’s website and has not demonstrated any attempt to make legitimate use of the disputed domain name and website, which evinces a lack of rights or legitimate interests in the disputed domain name.

The Respondent registered the disputed domain name on September 3, 2021, which is significantly after the Complainant filed for the registration of its WHITE STUFF trademark with the intellectual property offices of the United Kingdom, European Union, and United States of America, and also significantly after the Complainant’s first use in commerce of its trademark in 1985 the registration of its <whitestuff.com> domain name on May 11, 1998. By the time the Respondent registered the disputed domain name, the Complainant already had a worldwide reputation in its trademark, which is fully adopted in the disputed domain name.

By registering a domain name solely comprised of the Complainant’s WHITE STUFF trademark, the Respondent has created a disputed domain name that is identical to the Complainant’s trademark, as well as its <whitestuff.com> domain name. As such, the Respondent has demonstrated a knowledge of and familiarity with the Complainant’s brand and business. Moreover, prior to the Complainant’s representatives issuing a takedown, the Respondent had been using the disputed domain name to sell clothing, apparel and related goods – products that compete directly with the Complainant’s own offerings, clearly demonstrating the Respondent’s knowledge of the Complainant, its brand and trademark. In light of the facts set forth within this Complaint, it is “not possible to conceive of a plausible situation in which the Respondent would have been unaware of” the Complainant’s brands at the time the disputed domain name was registered.

The Respondent’s use of the disputed domain name constitutes a disruption of the Complainant’s business and qualifies as bad faith registration and use under Policy paragraph 4(b)(iii) because the Respondent’s disputed domain name is identical to the Complainant’s trademarks and the website at the disputed domain name was previously selling goods that were in direct competition with those offered by the Complainant.

The presence of MX records coupled with the Respondent’s previous use of the disputed domain name to sell competing goods under the Complainant’s WHITE STUFF trademark, gives rise to the strong possibility that the Respondent intended, or intends, to use the disputed domain name to send fraudulent emails as part of a phishing scheme.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has demonstrated it owns registered trademark rights in the WHITE STUFF mark, and has shown that no other entity has rights in or uses the Complainant’s mark. The TLD “.store” is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. Accordingly, the disputed domain name is identical to a mark in which the Complainant has rights.

See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8, and Hoffmann-La Roche AG v. Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org / Conan Corrigan, WIPO Case No. D2015-2316.

Accordingly, the disputed domain name is identical to a mark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant has presented a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name and has not been commonly known by the disputed domain name. The fact that the Respondent obtained the disputed domain name after the Complainant had begun using its WHITE STUFF mark indicates that the Respondent sought to piggyback on the WHITE STUFF mark for illegitimate reasons either through copyright infringement or through pay-per-click revenue.

After a complainant has made a prima facie case, the burden of production shifts to a respondent to present evidence demonstrating rights or legitimate interests in the domain name. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

Here, the Respondent has provided no evidence of any rights or legitimate interests in the disputed domain name.

In the absence of any evidence rebutting the Complainant’s prima facie case indicating the Respondent’s lack of rights or legitimate interests in respect of the disputed domain name, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel finds that the Complainant has satisfied its burden of proof in establishing the Respondent’s bad faith in registration and use of the disputed domain name. Paragraph 4(b)(iv) of the Policy states that evidence of bad faith may include a respondent’s use of a domain name to intentionally attempt to attract Internet users, for commercial gain.

Due to the renown and uniqueness of the WHITE STUFF mark, it is inconceivable that the Respondent registered the disputed domain name (identical to the Complainant’s mark) in the TLD “.store” without knowledge of the Complainant. The disputed domain name was used for a website that was selling products similar to those offered by the Complainant, but the Complainant has established that the Respondent’s use is not authorized, nor is affiliated with the Complainant in any way. The facts establish a deliberate effort by the Respondent to cause confusion with the Complainant for commercial gain. Under these circumstances, the Panel finds no plausible good faith reason for the Respondent’s conduct, and concludes that the disputed domain name was registered and used in bad faith.

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, <whitestuff.store> be transferred to the Complainant.

Colin T. O’Brien
Sole Panelist
Date: March 1, 2022

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