WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Euromarket Designs, Inc. d/b/a Crate & Barrel v. Registration Private, Domains by Proxy, LLC / Ali Mahmoud
Case No. DME2019-0003
1. The Parties
The Complainant is Euromarket Designs, Inc. d/b/a Crate & Barrel, United States of America (“United States”), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Registration Private, Domains by Proxy, LLC, United States / Ali Mahmoud, Morocco.
2. The Domain Name and Registrar
The disputed domain name <crateandbarrel.me> (the “Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 12, 2019. On April 15, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 16, 2019, 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 April 17, 2019, 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 April 18, 2019.
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 April 24, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 14, 2019. On May 14, 2019, the Center received a request for extension from the Respondent. Pursuant to paragraph 5(b) of the Rules, the due date for Response was extended to May 18, 2019. The Response was filed with the Center on May 18, 2019. The Center received an email communication from the Complainant on May 24, 2019, containing an unsolicited Supplemental Filing. For reasons discussed below the Panel will exercise its discretion under the Rules to admit this filing.
The Center appointed Nick J. Gardner as the sole panelist in this matter on May 27, 2019. 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 and its related companies are retailers of furnishing and décor items. Its history dates back to 1962. It operates over 100 stores in 12 countries selling its products. It also operates globally via an online sales operation offering international shopping and shipping to its customers through its website “www.crateandbarrel.com”. In 2014, Crate and Barrel ranked no. 77 on the Internet Retailer 2014 Top 500 Guide. It owns numerous trademarks for the term “CRATE & BARREL” - for example United States Patent and Trademark Office (“USPTO”) reg. no. 1469514 and USPTO reg. no. 1469515 for the word and design marks CRATE & BARREL. These are referred to in this decision as the “CRATE & BARREL trademark”.
The Respondent is an individual resident in Morocco. He registered the Disputed Domain Name on November 11, 2017. At the time the Complaint was filed it resolved to an automatically generated parking page with links unrelated to the Complainant or its business. As further dealt with below, subsequently the page has changed to contain links which do relate to the Complainant’s business.
5. Parties’ Contentions
The Complainant’s case is in summary as follows.
The Disputed Domain Name is identical or confusingly similar to its CRATE & BARREL Trademark. It says the use of “and” rather than an ampersand is a trivial difference.
The Respondent does not have any rights or legitimate interests in the Disputed Domain Name.
The Respondent registered and is using the Disputed Domain Name in bad faith. It says 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 Response is somewhat repetitive. The main point the Respondent makes is as follows:
“crate and barrel me will be semi profit organization but the website will be non-profitable or commercial because we will not have any trade through the website; Simply because our customers doesn[‘]t have the luxury of ordering anything from Internet or even having access to Internet most of the times, most of our work will be on the ground but the website will only mention what we do, our services and our achievements. Finally[,] we need to advertise our idea to encourage the other business and charity organisations to use our successful experience to elevate the skills of poor people instead of just feeding them.
WHY WE CHOSE THE NAME?
We choose the name because crates and barrels is the way of handling any material or item in appreciated condition specially in villages.and ME referring to word My also it refers to geographical location [‘]Middle East’”.
He also says:
“when the complainant tried to contact us and educated us about the brand we were very positive and open to help to avoid any confusion might happen, we offered to coordinate with them before launching the website to avoid any unintended confusing to their customers which is a good gesture of a good well”.
6. Discussion and Findings
Procedural Issues - the Complainant’s Supplemental Filing
The Panel will exercise its discretion to admit this filing. It primarily addresses factual matters that have changed since the Complaint was filed, namely as to how the pay-per-click webpage linked to the Disputed Domain Name behaves. It also introduces evidence in reply to the Respondent’s case that could not readily have been anticipated, namely an allegation the Complainant is unknown in Morocco. The Respondent has had ample time to submit any further material he wanted to relating to this material, but has not done so.
Paragraph 4(a) of the Policy states that the Complainant must prove each of the three following elements:
(i) the Disputed Domain Name is identical to or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in the Disputed Domain Name;
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant clearly has registered trademarks in respect of the words CRATE & BARREL. The Panel considers the Disputed Domain Name to be confusingly similar to these trademarks given the trivial difference of the word “and” rather than an ampersand. It is also well established that the Top-Level Domain in this case “.com”, does not generally affect a domain name for the purpose of determining whether it is identical or confusingly similar - see for example Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s CRATE & BARREL Trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the CRATE & BARREL Trademark. The Complainant has prior rights in the CRATE & BARREL Trademark, which precede the Respondent’s acquisition of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see, for example, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003‑0455).
The Respondent appears to suggest that either (i) or (iii) above apply. The Panel is not entirely clear whether or not the Respondent is suggesting his intended venture is noncommercial or not. However, it does not matter. The Panel does not accept the Respondent’s case that he registered the Disputed Domain Name for use with some sort of venture helping poor people in the Middle East start businesses. There is no credible evidence of any sort of such a venture or any demonstrable preparations for this venture. The explanation that “crateandbarrel” was chosen because “crates and barrels is the way of handling any material or item in appreciated condition specially in villages” seems inherently unlikely and without some corroborating evidence the Panel does not accept it.
The Panel is conscious that proceedings under the UDRP are of a limited and restricted nature, do not involve oral hearings, discovery or cross examination, and hence are only applicable to clear cut cases, and it is not usually appropriate to decide disputed questions of fact or matters of truth or falsehood. That does not however mean the Panel cannot reach a conclusion as to the veracity of a case that is being advanced where the only evidence that is provided is in the form of conclusory statements that are inherently not credible, and which are not supported by relevant corrobative or third party evidence. The Panel considers this to be such a case. The Respondent’s case is simply not credible and the Panel concludes that on the balance of probabilities the Respondent’s claim to have registered the Disputed Domain Name for use in such a venture is not true. The Panel also discounts the Respondent’s claim that the Complainant is unknown in Morocco. Material the Complainant filed with its Supplementary statement in the form of a business application from a would-be franchisee in Morocco shows that its reputation extends to Morocco.
The Panel accordingly finds that the Respondent has failed to produce any credible evidence to establish his rights or legitimate interests in the Disputed Domain Name. Accordingly the Panel finds the Respondent has no rights or any legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy a non-exhaustive list of factors evidencing registration and use in bad faith comprises:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
The Panel concludes that (iv) applies as the Disputed Domain Name is likely to attract traffic because of confusion with the Complainant’s CRATE & BARREL trademark, and the Respondent derives commercial gain as a result. The website now linked to the Disputed Domain Name, as shown in the Complainant’s Supplemental statement, comprises a series of pay-per-click (“PPC”) links to other third-party websites including those of competitors of the Complainant. The Panel infers that some consumers, once at this website, will follow the provided links and “click through” to other sites which offer products some of which may compete with those of the Complainant. The Respondent presumably earns “click through” linking revenue as a result. The Panel infers the website is automatically generated. This does not however matter. It is well established that where a domain name is used to generate revenue in respect of “click through” traffic, and that traffic has been attracted because of the name’s association with the Complainant, such use amounts to use in bad faith, see for example Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315; Owens Corning v. NA, WIPO Case No. D2007-1143; McDonald’s Corporation v. ZusCom, WIPO Case No. D2007-1353; Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912; Rolex Watch U.S.A., Inc. v. Vadim Krivitsky, WIPO Case No. D2008-0396.
As a result, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. Accordingly, the third condition of paragraph 4(a) of the Policy has been fulfilled.
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 <crateandbarrel.me> be transferred to the Complainant.
Nick J. Gardner
Date: June 10, 2019