WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
TBNR, LLC. v. Whois Privacy, Private Desing, LLC / Hoan Mr
Case No. DCO2021-0072
1. The Parties
The Complainant is TBNR, LLC., United States of America (the “United States”), represented by Brackett & Ellis, P.C., the United States.
The Respondent is Whois Privacy, Private Desing, LLC, the United States / Hoan Mr, Viet Nam.
2. The Domain Name and Registrar
The disputed domain name <prestonsstylezz.co> is registered with Porkbun LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 13, 2021. On September 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 14, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 the Respondent of the Complaint, and the proceedings commenced on September 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 13, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 14, 2021.
The Center appointed Gareth Dickson as the sole panelist in this matter on November 14, 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 is the owner of a number of trade mark registrations for PRESTONS STYLEZ (the “Mark”), including:
- United States trade mark registration number 5,108,401 for PRESTONS STYLEZ, registered on December 27, 2016; and
- United States trade mark registration number 6,158,275 for PRESTONSSTYLEZ, registered on September 22, 2020.
It has also been using the domain name <prestonsstylez.com> since September 2015.
The disputed domain name was registered on August 3, 2021. It is currently inactive and does not point to any active website.
5. Parties’ Contentions
The Complainant argues that it has rights in the Mark by virtue of its ownership of various trade mark registrations for the Mark around the world. It contends that the disputed domain name is confusingly similar to the Mark since it incorporates the Mark in its entirety with the addition of an extra “z” at the end of the second level, under the country-code Top-Level Domain (“ccTLD”) “.co” (to which the Policy applies, unamended).
The Complainant confirms that the disputed domain name was registered by the Respondent without its permission and that the Respondent is not a licensee of the Complainant. The Complainant submits that there is no evidence to suggest that the Respondent: has been commonly known by the disputed domain name; is making, or intends to make, a legitimate non-commercial or fair use of it; or has ever used or demonstrated preparations to use it in connection with a bona fide offering of goods or services.
The Complainant contends that the Respondent must have known of the Complainant and the Mark when it registered the disputed domain name, in part because it has registered other domain names which are confusingly similar to the Mark and used them to provide access to clone-websites which are virtually identical to the Complainant’s own website and purport to sell merchandise bearing the Complainant’s registered trade marks, demonstrating the Respondent’s knowledge of the Mark and its registration of the disputed domain name in bad faith.
The Complainant argues that the (current) passive holding of the disputed domain name remains a use in bad faith under the Policy, and notes that the Respondent has used a privacy service to conceal its identity for as long as possible.
Together, the Complainant submits that the Respondent is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, which applies to domain names registered under the ccTLD “.co”, the Complainant bears the burden of proving that:
a) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
b) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
c) the disputed domain name has been registered and is being used in bad faith.
These criteria are cumulative. The failure of the Complainant to prove any one of these elements means the Complaint must be denied.
A. Identical or Confusingly Similar
The Panel accepts that the Complainant is the owner of, and therefore has rights in, the Mark.
Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) provides that: “[I]n cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”.
Section 1.9 of the WIPO Overview 3.0 also provides that “[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”.
The Panel therefore finds that the disputed domain name is confusingly similar to the Mark, since the disputed domain name incorporates the Mark in its entirety and only differs from the Mark through the addition of an extra “z” at the end of the Mark in the disputed domain name, which is a minor difference and does not alter the phonetic or conceptual similarity between the disputed domain name and the Mark.
The use of the ccTLD “.co” does not prevent a finding of confusing similarity.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Although a complainant is required to demonstrate that a respondent has no rights or legitimate interests in respect of the domain name, as explained in section 2.1 of the WIPO Overview 3.0, the consensus view of previous UDRP panels is that where a complainant establishes 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 domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
In the current proceeding, the Complainant has established its prima facie case. The Complainant states that it has not given the Respondent permission to use the Mark, in a domain name or otherwise, and submits that the Respondent has not been commonly known by the disputed domain name.
There is no evidence that the Respondent has acquired any common law rights to use the Mark, is commonly known by the Mark or has chosen to use the Mark in the disputed domain name in any descriptive manner or is making any use of the disputed domain name that would establish rights or legitimate interests as a result of a non-commercial or fair use of it.
By not participating in these proceedings, the Respondent has failed to refute the Complainant’s prima facie case that it has met its burden under the second UDRP element.
As clearly stated in section 2.1 of the WIPO Overview 3.0, “a panel’s assessment will normally be made on the basis of the evidence presented in the complaint and any filed response. The panel may draw inferences from the absence of a response as it considers appropriate, but will weigh all available evidence irrespective of whether a response is filed”. Having reviewed and weighed the available evidence, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Panel notes that the disputed domain name was registered after the Mark was registered, and accepts that the disputed domain name was chosen by reference to the Mark since no other reason for the adoption of this combinations of words and spellings is advanced by the Respondent (or indeed genuinely likely to exist).
As a result, and in the absence of evidence from the Respondent that the similarity of the disputed domain name to the Mark is coincidental, the Panel must conclude that the Respondent knew of the Complainant’s rights in the Mark when it registered the disputed domain name.
The Panel therefore finds that the Respondent’s registration of the disputed domain name was in bad faith.
The disputed domain name is also being used in bad faith.
The Panel accepts that the Respondent is using the disputed domain name to provide access to a “coming soon” website. However, a “coming soon” page does not prevent a finding of bad faith use, under the doctrine of passive holding.
Section 3.3 of the WIPO Overview 3.0 states that relevant factors to finding bad faith in passive holding include:
“(i) the degree of distinctiveness or reputation of the complainant’s mark;
(ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use;
(iii) the respondent’s concealing its identity […], and
(iv) the implausibility of any good faith use to which the domain name may be put.”
The Panel notes that the Mark is distinctive of the Complainant and further notes that the Respondent has not participated in these proceedings or sought to explain its registration and use of the disputed domain name and has sought to conceal its identity through a privacy service. Furthermore, there is no conceivable use of the disputed domain name by the Respondent that would not be illegitimate in light of the findings in section 6.B above and the Respondent’s bad faith registration of the disputed domain name.
Furthermore, the Panel notes that since the Complaint was filed, the Complainant has been successful in a UDRP complaint against the Respondent in relation to the domain names <prestontyless.com> and <prestonstyleez.com> (TBNR, LLC v. Whois Privacy, Private by Design LLC / Hoan Mr, WIPO Case No. D2021-2570). While the existence of other UDRP proceedings having been won against the Respondent does not create a presumption of bad faith per se, it does tend to support a finding of bad faith where the Respondent has not taken any steps to rebut it.
Therefore, and on the basis of the information available to it, the Panel finds that the Respondent’s use of the disputed domain name is without justification and is inconsistent with the Complainant’s exclusive rights in the Mark. Consideration of these and other factors militates in favour of a finding of bad faith.
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, <prestonsstylezz.co>, be transferred to the Complainant.
Date: December 3, 2021