WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Toland International Ltd. v. Discount Deals Now, LLC.
Case No. D2015-0766
1. The Parties
The Complainant is Toland International Ltd. of Hong Kong, China, represented by Novak Druce Connolly Bove & Quigg LLP, United States of America.
The Respondent is Discount Deals Now, LLC. of West Stockbridge, Massachusetts, United States of America (the "United States").
2. The Domain Name and Registrar
The disputed domain name <tolandflagstore.com> 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 28, 2015. On April 29, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 30, 2015, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceeding commenced on May 5, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 25, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 28, 2015.
The Center appointed Steven A. Maier as the sole panelist in this matter on June 11, 2015. 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 a corporation located in Hong Kong. It is a wholesale supplier of products for the home and garden, including decorative art flags and flag accessories.
The Complainant is the owner of United States registered trademark number 3429440 for TOLAND, filed on February 16, 2007 and registered on May 20, 2008 for various goods and services, including cloth flags in Class 24 and metal brackets for flags in Class 6.
The disputed domain name was registered on March 24, 2010.
According to evidence submitted by the Complainant, on April 28, 2015 the disputed domain name resolved to a website at "www.tolandflagstore.com". The website was headed "Toland Flag Store" and appeared to offer for sale a wide variety of home, garden and other miscellaneous products, including a number of products described as "Toland Decorative Garden Flag", "Toland Garden Flag", "Toland House Flag" or similar.
5. Parties' Contentions
A. Complainant
The Complainant states that it was founded in 1967 and has used the name and mark TOLAND in business since at least 1996. It submits that it operates a wholesale home and garden store selling superior decorative art flags, brackets and related items as well as other garden products. It states that operates principally from a website at "www.tolandhomegarden.com" and has appointed authorized representatives in 34 states (presumably United States states) offering more than 1,000 "Toland" exclusive designs.
The Complainant submits that the disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights. In particular, it submits that the disputed domain name comprises its trademark TOLAND together with the descriptive terms "flag" and "store", which is liable to mislead consumers into believing that any website linked to the disputed domain name is operated by an authorized distributor of the Complainant.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant states that the Respondent is not known by the name and mark TOLAND and that the Respondent is not licensed or otherwise authorized by the Complainant to use that trademark. The Complainant states that the Respondent was a former customer of the Complainant but that it instructed the Respondent to cease to use the TOLAND mark and understood that the Respondent had complied1. The Complainant contends that the Respondent is unable to demonstrate any rights or legitimate interests in the disputed domain name in the circumstances contemplated by paragraph 4(c) of the Policy and, on the contrary, that the Respondent is using the disputed domain name deceptively, falsely to represent that its website is sponsored by or affiliated with the Complainant.
The Complainant submits that the Respondent registered and is using the disputed domain name in bad faith.
The Complainant submits that the Respondent registered the disputed domain name long after the TOLAND trademark had been in use and the Complainant's US trademark had been registered.
The Complainant points to the Respondent's sale of products on its website under the TOLAND name and mark and submits that the Respondent must therefore have been aware of the Complainant's trademark and rights. The Complainant also repeats that it demanded that the Respondent cease and desist from using its TOLAND mark and that, for that reason also, the Respondent was clearly aware of the mark.
The Complainant states that as of June 20, 2014 the Respondent was offering ten "Toland" flag designs on its website linked to the disputed domain name. It submits evidence by way of screen prints that by April 28, 2015 the number of such products was 22. The Complainant submits that the goods offered by the Respondent are "unauthorized competing Toland home and garden goods", although it does not explain whether it alleges these to be the Complainant's genuine goods, albeit sold by an authorized reseller, or alternatively allegedly counterfeit goods.
The Complainant also points to other content on the Respondent's website, including its "About Us" page, including references to "Our Flags", which refer in detail to the qualities of the "Toland" products. Consumers are also invited to write to the Respondent sharing photographs of the flags they have purchased.
In the submission of the Complainant, the effect of the Respondent's extensive use of the TOLAND mark in the manner described above clearly demonstrates an intention to imply the Complainant's sponsorship of and affiliation with the website and is likely to confuse purchasers. The Complainant submits that Respondent is deliberately diverting customers to the Respondent's website in order to earn a profit at the expense of the Complainant's own sales, and is therefore using the disputed domain name, as contemplated in paragraph 4(b)(iv) of the Policy, intentionally to attract Internet users to its website by creating a likelihood of confusion between the Complainant's mark and that website.
The Complainant submits that the Respondent is also causing damage to the Complainant's business by causing disruption and annoyance to customers who realize they have been wrongly diverted to the Respondent's website.
The Complainant also alleges that the Respondent has provided false contact details and, in particular, that its contact information on its web pages is inconsistent with the current registration information for the disputed domain name. The Complainant states that it has received no response to email and postal communications sent to the Respondent's addresses which appeared from the relevant WhoIs enquiry and that a letter sent to the address stated on the Respondent's website was returned marked "Return to Sender – Attempted – Not Known".
The Complainant requests a transfer of the disputed domain name.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
In order to succeed in its Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Even in a case such as this where the Respondent has failed to file a Response, the Complainant must nevertheless show that all three of the above elements are present.
A. Identical or Confusingly Similar
The Complainant has established that it has registered trademark rights for the name and mark TOLAND in connection with cloth flags and flag accessories. It has also established to the satisfaction of the Panel that, as a result of many years trading under the name and mark TOLAND, that mark has gained a degree of public recognition and goodwill in connection with flags and associated products. The disputed domain name comprises the term "toland", which is the Complainant's trademark, together with the terms "flag" and "store" and the generic Top-Level Domain ("gTLD") ".com" which is typically ignored for the purposes of comparison under the first element of the Policy. The Panel accepts the Complainant's contention that the terms "flag" and "store" are descriptive in nature and do not serve to distinguish the disputed domain name from the Complainant's trademark. On the contrary, the Panel finds that the terms add to the likelihood of confusion because they suggest a source of supply of the goods for which the Complainant's trademark is registered and known.
In the circumstances, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has asserted that the Respondent is unable to establish any of the circumstances set out under paragraph 4(c) of the Policy whereby a respondent may demonstrate that it has rights or legitimate interests in respect of a domain name.
The Complainant states that the Respondent was at one time a customer of the Complainant, that the Complainant subsequently instructed the Respondent to cease to use its trademark and that the Complainant believed the Respondent had complied. While the Panel finds the Complainant's explanation and evidence concerning these matters to be unsatisfactory, this is not a determinative factor in the case.
On the basis of the evidence provided by the Complainant, it is clear to the Panel that the Respondent has used the disputed domain name to refer to the Complainant's goods and to offer on its website goods purporting to be those of the Complainant. While the Complainant has not clearly set out its case as to whether or not such goods are genuine, this is once again not a determinative factor in the case.
Previous UDRP panels have found that, under certain conditions, a respondent who sells trademarked goods under a domain name reflecting that trademark may have rights or legitimate interests in the domain name, even where such sales may be unauthorized by the trademark owner2. However, in the view of the Panel, those conditions are not met in this case. First, while the Respondent may be using the disputed domain name to sell, among others, the Complainant's goods, it appears from the evidence submitted by the Complainant that the Respondent may not be offering only the Complainant's goods. Secondly, the Respondent's website does not accurately and prominently disclose the relationship between the Complainant and the Respondent. In the view of the Panel, not only does the Respondent fail to disclose that relationship (or lack thereof) but its website does contain material, as alluded to by the Complainant, which strongly suggests some level of affiliation between the Complainant and the Respondent.
In the circumstances, the Respondent having failed to participate in these proceedings and to make any submissions concerning any rights or legitimate interests in respect of the disputed domain name, and there being no other evidence available to the Panel that the Respondent has any such rights or legitimate interests, 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
Given the Panel's findings under the first element and the date of registration of the disputed domain name, the Panel has no doubt that the Respondent registered and has intentionally used the disputed domain name to refer to the Complainant's trademark TOLAND and the Complainant's goods and to offer "Toland" branded goods for sale. However, as discussed above, even if the Respondent has used the disputed domain name in the capacity of an unauthorized reseller of the Complainant's genuine goods, the Panel does not find the conditions to have been met for the Respondent to have used the disputed domain name for a bona fide purpose under the Policy. Rather, the Panel finds that the Respondent uses the disputed domain name in a way which creates an impression that the website is owned or sponsored by the Complainant, when it is not in fact the case. As a consequence of this, the Panel concludes that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website (paragraph 4(b)(iv) of the Policy).
As required by paragraph 4(a) of the Policy, the Complainant must show both that the disputed domain name has been registered and is being used in bad faith. While the Panel finds the Complainant's submissions and evidence concerning its relationship with the Respondent to be lacking, it appears to be the Complainant's case that the Respondent originally registered the disputed domain name without the approval of the Complainant. In particular, the Complainant states that it sent a cease and desist letter to the Respondent "when [the Complainant] learned of the improper registration…." of the disputed domain name. This contention remains unrebutted by the Respondent, and on consideration of the overall circumstances, the Panel finds that the disputed domain name has been registered in bad faith for the purposes of the Policy.
In all the circumstances, the Panel finds that the disputed domain name has been registered and is being 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 <tolandflagstore.com> be transferred to Complainant.
Steven A. Maier
Sole Panelist
Date: June 19, 2015
1 However, no further explanation of this or evidence in support is provided.
2 The relevant conditions are discussed in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.3.