WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ShopStyle UK Limited v. Torsten Hertzog
Case No. DEU2018-0025
1. The Parties
The Complainant is ShopStyle UK Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “ÜK”), represented by Murgitroyd & Company, United Kingdom.
The Respondent is Torsten Hertzog of Regis-Breitingen, Germany.
2. The Domain Name, Registry and Registrar
The Registry of the disputed domain name <shoppstyle.eu> is the European Registry for Internet Domains (“EURid” or the “Registry”). The Registrar of the disputed domain name is PDR Ltd. d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2018. On August 2, 2018, the Center transmitted by email to the Registry a request for registrar verification in connection with the disputed domain name. On August 8, 2018, the Registry 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 .eu Alternative Dispute Resolution Rules (the “ADR Rules”) and the World Intellectual Property Organization Supplemental Rules for .eu Alternative Dispute Resolution Rules (the “Supplemental Rules”).
In accordance with the ADR Rules, Paragraph B(2), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 24, 2018. In accordance with the ADR Rules, Paragraph B(3), the due date for Response was October 5, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 10, 2018.
The Center appointed José Ignacio San Martín Santamaría as the sole panelist in this matter on October 23, 2018. 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 ADR Rules, Paragraph B(5).
4. Factual Background
The Complainant is a wholly-owned UK based subsidiary of ShopStyle, Inc., from the United States of America active in the online retail services connected with clothing, footwear and fashion accessories. The latter is the proprietor of the European Union Trademark Registration No. 006824395 for SHOPSTYLE (word mark) filed on April 10, 2008 and registered on January 21, 2009 for services in classes 35, 42, 45.
Since at least 2006 Complainant is promoting its services under SHOPSTYLE mark in UK and through European Union on its main website available at “www.shopstyle.co.uk”.
The disputed domain name was registered on January 11, 2018 and is currently active, linking to an online retail shop called “Impressions”.
5. Parties’ Contentions
- The Complainant enjoys significant and viable goodwill and reputation in its SHOPSTYLE mark through continued use in the UK and Europe over the past 12 years, primarily, although not exclusively, in relation to online retail services.
- The disputed domain name incorporates the Complainant’s trademark SHOPSTYLE. Accordingly, the disputed domain name is substantially identical, or highly similar to, the Complainant’s trademark.
- There is no evidence of any rights or legitimate interests use in the disputed domain name by the Respondent. The disputed domain name links to an online retail shop called “Impressions”, but the Respondent has not been commonly known by the disputed domain name.
- The adoption of the disputed domain name <shoppstyle.eu> can only be to trade off the Complainant’s goodwill and reputation, and to misdirect web traffic to the Respondent’s website.
- The Respondent is “typosquatting”. This is a recognised for of cybersquatting and potentially brandjacking, which constitutes bad faith.
As a consequence, the Complainant requests that the disputed domain name be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to ADR Rules, Paragraph B(10)(a):
“In the event that a Party does not comply with any of the time periods established by these ADR Rules or the Panel, the Panel shall proceed to a decision on the Complaint and may consider this failure to comply as grounds to accept the claims of the other Party.”
The fact that the Respondent did not submit a reply could lead directly to acceptance of the Complainant’s claims. However, in the interest of equity, the undersigned Panelist will reach his decision after assessing the circumstances surrounding the case.
Pursuant to Paragraph B(11)(d)(1), of the ADR Rules, the Panel shall grant the remedies requested if the Complainant proves that:
(i) The disputed domain name is identical or confusingly similar to a name in respect of which a right is recognized or established by the national law of a Member State and/or Community law and; either
(ii) The disputed domain name has been registered by the Respondent without rights or legitimate interests in the name; or
(iii) The domain name has been registered or is being used in bad faith.”
A. Identical or Confusingly Similar to a name in respect of which a right or rights are recognized or established by national law of a Member State and/or Community law
The Complainant has a right in the European Union Trademark Registration for the word mark SHOPSTYLE for purposes of filing a complaint under the ADR Rules.
The disputed domain name incorporates the Complainant’s trademark SHOPSTYLE in its entirety with an additional letter “p” and the country code Top-Level Domain “.eu”, which may be disregarded for the purposes of assessing confusing similarity.
The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant’s trademark SHOPSTYLE as provided under Paragraph B(11)(d)(1)(i) of the ADR Rules.
B. Rights or Legitimate Interests
According to Paragraph B(11)(e)(1) of the ADR Rules, Respondent’s rights or legitimate interests in the domain name can be recognized when:
“prior to any notice of the dispute, the Respondent has used the domain name or a name corresponding to the domain name in connection with the offering of goods or services or has made demonstrable preparation to do so”.
Apparently, the Respondent used the domain name before the filing of the Complaint. However, from the rest of the circumstances cannot be clearly inferred whether the Respondent has any substantive right or legitimate interests in the disputed domain name other than the mere use.
The Panel notes that the disputed domain name (which consists of a typographical error of the Complainant’s trademark) is being used for a website competing with the Complainant’s website. Therefore, the Respondent cannot claim rights or legitimate interests based on such use of the disputed domain name.
Under Article 21(1) of the Regulation and Paragraph B(11)(d)(1) of the ADR Rules (a) lack of rights or legitimate interests and (b) registration or use in bad faith are alternative requirements. For this reason, the Panel will consider registration or use in bad faith, without deciding on lack of rights or legitimate interests.
C. Registered or Used in Bad Faith
According to Paragraph B(11)(f)(4) of the ADR Rules, registration or use of a domain name in bad faith will be considered in bad faith when:
“the domain name was intentionally used to attract Internet users, for commercial gain to the Respondent’s website or other online location, by creating a likelihood of confusion with a name on which a right is recognized or established, by national and/or Community law, or it is a name of a public body, such likelihood arising as to the source, sponsorship, affiliation or endorsement of the website or location or of a product or service on the website or location of the Respondent”.
The Complainant’s SHOPSTYLE trademark is well-known precisely in relation to online retail services, well before the registration of the disputed domain name. The Respondent’s registration of the disputed domain name wholly incorporating a well-known third-party mark is, in the Panels view, indicative of bad faith, since the domain name resolves to a website for the same activities as the Complainant’s website.
“It is clear in the Panel’s view that in the mind of an Internet user, the disputed domain names could be directly associated with the Complainant’s trademark, which is likely to be confusing to the public as suggesting either an operation of the Complainant or one associated with or endorsed by it (see AT&T Corp. v. Amjad Kausar, WIPO Case No. D2003-0327)”.
Furthermore, the disputed domain name in dispute consist of a mispelling of the Complainant’s SHOPSTYLE trademark. There is no plausible explanation for the double “P” other than “typosquatting”.
As reminded in section 3.1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0):
“Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.”
The Panel therefore concludes in all the circumstances that the disputed domain name has been registered or is being used in bad faith.
For the foregoing reasons, in accordance with Paragraph B(11) of the ADR Rules, the Panel orders that the disputed domain name <shoppstyle.eu> be transferred to the Complainant.2
José Ignacio San Martín Santamaría
Date: October 30, 2018
1 Given the similarities between the ADR Rules and the Uniform Domain Name Dispute Resolution Policy (“UDRP”) the Panel will refer to UDRP jurisprudence.
2 The remedy sought by the Complainant is the transfer as the Complainant is located in the UK, within the European Union, it satisfies the general eligibility criteria for registration of the disputed domain name set out in paragraph 4(2)(b) of Regulation (EC) No. 733/2002.