WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mary Ann MacDonald v. Perfect Privacy, LLC / Name Redacted
Case No. D2021-4419
1. The Parties
Complainant is Mary Ann MacDonald, United States of America.
Respondent is Perfect Privacy, LLC, United States of America / Name Redacted.1
2. The Domain Name and Registrar
The disputed domain name <eveningelegance.com> is registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 31, 2021. On January 4, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 6, 2022, 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 January 7, 2022, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on January 15, 2022. On February 2, 2022, Complainant twice sent a second Amended Complaint to the Center.
The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on January 20, 2022. In accordance with the Rules, paragraph 5, the due date for Response was February 9, 2022. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 15, 2022.
The Center appointed Georges Nahitchevansky as the sole panelist in this matter on February 25, 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, Mary Ann MacDonald, is an online merchant of evening accessories and clothing under the name and mark EVENING ELEGANCE. Complainant has operated a website at <eveningelegance.com> for her activities since 2000. Complainant owns a United States trademark registration for EVENING ELEGANCE in connection with various clothing, jewelry, accessories, and other products (Registration No. 6017198), which issued to registration on March 24, 2020.
At some point, it appears that the disputed domain name either was not renewed by Complainant or that Complainant lost control of the disputed domain name. Complainant attempted to secure the disputed domain name by bidding on it through the Certified Offer Service of Web.com by placing a bid for USD 1,000. The disputed domain name, however, was valued at “USD 13,500 - 16,500.” Complainant was unable to secure the disputed domain name.
Currently the actual registrant of the disputed domain name is unknown as the disputed domain name appears to be registered under the name and address of Complainant. Moreover, Complainant’s website, continues to appear at the disputed domain name, although without a security certificate that previously appeared on the website.
5. Parties’ Contentions
Complainant maintains that she has used the name and mark EVENING ELEGANCE since 2000 for her online store and has developed a highly rated brand under that mark.
Complainant asserts that the disputed domain name is identical or confusingly similar to her EVENING ELEGANCE mark as it “is made entirely up of the trademark EVENING ELEGANCE to which the space has been removed.”
Complainant contends that Respondent has no rights or legitimate interest in respect of the disputed domain name as Respondent (i) has not been known by the disputed domain name, (ii) has made no preparations to do business under the disputed domain name, (iii) has no connection to Complainant and has never been given any right or permission by Complainant to use the disputed domain name, and (iv) does not offer any goods or services related to the disputed domain name.
Lastly, Complainant argues that Respondent has registered and used the disputed domain name in bad faith as it is inconceivable that Respondent was not aware of Complainant’s ecommerce business when Respondent registered the disputed domain name on the same day it expired and then continued to point it to Complainant’s website. Complainant further argues that Respondent’s continued use of the disputed domain name as a redirect to Complainant’s website is meant to “illicit a greater sale price” for the disputed domain name.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. Section 1.2.1. of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Complainant has provided evidence that it owns a trademark registration for EVENING ELEGANCE.
With Complainant’s rights the EVENING ELEGANCE mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain (“gTLD”) such as “.com”) is identical or confusingly similar with Complainant’s mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842. The threshold for satisfying this first element is low and generally panels have found that fully incorporating the identical mark in a disputed domain name is sufficient to meet this standing requirement.
In the instant proceeding, the disputed domain name is identical to Complainant’s EVENING ELEGANCE mark as it fully and solely consists of Complainant’s EVENING ELEGANCE mark. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in Complainant’s EVENING ELEGANCE mark and in showing that the disputed domain name is confusingly similar to that trademark.
B. Rights or Legitimate Interests
This case presents a strange situation. It is not altogether clear to the Panel whether the disputed domain name lapsed and was acquired by a new party or if Complainant somehow lost control of the disputed domain name (such as by being hijacked). Complainant maintains that she failed to renew the disputed domain name by the due date, but provides no details as to when that occured except to note that she was bombarded by spam for a year prior to the renewal. After the disputed domain name apparently lapsed, it was then registered by an unknown party using a privacy shield and when lifted revealed Complainant’s name and contact information. Moreover, the disputed domain name continues to resolve to Complainant’s website, albeit in an unsecured form.
Whether Complainant failed to renew the disputed domain name and lost it to some unknown third party, or the disputed domain name was hijacked by another party remains a mystery. What is clear is that Complainant lost control of the disputed domain name. Since that loss of control, the unknown party who controls the disputed domain name has attempted to sell it for their own profit and has continued to allow its use with the same servers Complainant previously used for her website. Whether this unknown party is collecting any money from the alleged sales of products or using the website to collect personal information from potential customers of Complainant’s online shop is unclear. Such attempts, however, by Respondent to either pass itself off as Complainant or to profit from the disputed domain name at the expense of Complainant does not, and cannot, confer rights or legitimate interests on Respondent.
In sum, given that Complainant has established with sufficient evidence that she owns rights in the EVENING ELEGANCE mark and name, and given Respondent’s above noted actions and failure to file a response and explain its actions, the Panel concludes that Respondent does not have a right or legitimate interest in the disputed domain name and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case.
C. Registered and Used in Bad Faith
The Panel finds that based on the evidence submitted, Complainant has established that Respondent has registered and used the disputed domain name in bad faith pursuant to paragraph 4(b) of the Policy.
Here, Respondent has either acquired the disputed domain name after it lapsed or hijacked it for Respondent’s profit. Respondent has ether sought to sell the disputed domain name for a marked up price or to use it to potentially collect information or payments from Complainant’s customers. The fact that Respondent registered the disputed domain name using Complainant’s name and contact information and continues the use of the disputed domain name with a website that feature Complainant’s EVENING ELEGANCE mark further constitutes clear evidence of bad faith. Simply put, the evidence before the Panel, none of which is contested by Respondent, establishes that Respondent opportunistically and in bad faith acquired and used the disputed domain name to profit from the EVENING ELEGANCE mark at the expense of Complainant.
The Panel thus finds that the third element of paragraph 4(a) of the Policy has been met by Complainant.
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 <eveningelegance.com>, be transferred to Complainant
Date: March 11, 2022
1 The Respondent appears to have used the name of a third party when registering the disputed domain name. In light of the potential identity theft, the Panel has redacted the Respondent’s name from this decision. However, the Panel has attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of the Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST‑12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.