WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Trophy v. Garrett Wojciechowski
Case No. D2017-1753
1. The Parties
The Complainant is Trophy of Carrières sur Seine, France, represented by Cabinet Germain & Maureau, France.
The Respondent is Garrett Wojciechowski of Agawam, Massachusetts, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <beringmotorcyclejacket.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 12, 2017. On September 12, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 13, 2017, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on September 25, 2017.
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 September 28, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 18, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 20, 2017.
The Center appointed Antony Gold as the sole panelist in this matter on November 7, 2017. 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 Complaint is a company based in France which sells a variety of clothing and other equipment for motorcycle riders. The Complainant sells its products online through a website at “www.bering.fr”. Its trading style, BERING, is protected by a number of registered trade marks for BERING including:
International trade mark registration number 620026 for BERING in classes 9, 18 and 25, registered on May 16, 1994.
International trade mark registration number 964033 for BERING, in a stylized form, in classes 9, 12, 18 and 25, registered on April 14, 2008.
The Respondent registered the disputed domain name on March 25, 2017. As at September 28, 2017, the disputed domain name pointed to a website which was substantially similar in appearance to the Complainant’s website in that the home page was prominently branded “Bering”. In addition, the website purported to sell essentially the same type of motorcycle clothing as the Complainant, with each garment being described as a “Bering” product. Moreover, the Respondent’s website has positioned the same distinctive animal logo next to the BERING trade mark as the Complainant uses on its website.
5. Parties’ Contentions
The Complainant says that the disputed domain name is confusingly similar to its BERING trade marks. It says that the addition of the words “motor”, “cycle” and “jacket” to its BERING trade mark in the disputed domain name does not serve to make the disputed domain name dissimilar to the Complainant’s mark. Rather, the addition those words, which describe exactly one of the products which the Complainant sells, serves to reinforce the association between the Complainant’s trade mark and the disputed domain name. Moreover, it says, the fact that the Respondent is purportedly selling products which are very similar to those of the Complainant establishes the Respondent’s intent to cause such confusion.
In support of its assertion that the Respondent has no rights or legitimate interests in respect of the disputed domain name, the Complainant refers to the decision of the panel in Croatia Airlines d.d. v. Modern Empire Internet Ltd, WIPO Case No. D2003-0455. The panel in those proceedings held that a complainant was required to make out a prima facie case that a respondent lacked rights or legitimate interests in a domain name. If it did so, the burden shifted to the respondent to demonstrate that it did, in fact, have rights or legitimate interests in the domain name. If the respondent was unable to do so, the complainant was deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Complainant says that the Respondent is not affiliated with it nor authorised by it in any way to use its BERING trade mark nor does the Respondent have any business connection with it. It says that the Respondent is using the Respondent’s logo trade mark on the website to which the disputed domain name points without authorisation and that the Respondent has registered the disputed domain name with the sole aim of attracting Internet users and diverting traffic intended for the Complainant to its website by creating a likelihood of confusion and by trading on the fame of the Complainant’s trade marks. The Complainant says that this is not a bona fide offering of goods by the Respondent.
Lastly, the Complainant says that the disputed domain name was registered and is being used in bad faith. It asserts that, given the distinctiveness of the Complainant’s trade mark and reputation and the fact that the Complainant’s trade mark appears on the website to which the disputed domain name points, it is evident that the Respondent has registered the disputed domain name with full knowledge of the Complainant’s trade mark. It says that the Respondent has done so for the purpose of misleading and diverting Internet traffic intended for the Complainant to the Respondent’s website and that the appearance of the Respondent’s website and its offering for sale of BERING-branded goods is intended to suggest to the Internet user that it is an official website of the Complainant.
The Complainant asserts that the Respondent has used the disputed domain name in order to capitalise on the fame and goodwill of the Complainant’s trade mark and thereby increase traffic to his website. The Complainant says that the Respondent’s conduct falls within the circumstance in which bad faith registration and use will be found described at paragraph 4(b)(iv) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Dealing, first, with the Respondent’s failure to serve a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.
Paragraph 4(a) of the Policy requires that the Complainant proves each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests with respect to the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established through the details provided of its trade marks for BERING, including the two trade marks in respect of which full details are given above, that it has rights in the trade mark BERING.
For the purpose of determining whether the disputed domain name is confusingly similar to the Complainant’s trade mark, the generic Top Level Domain (“gTLD”) “.com” is disregarded. It is evident from the Complaint and from the screen prints of the Complainant’s website which have been provided that the BERING trade mark is used in connection with the sale of motorcycle clothing. Accordingly, the addition of the purely descriptive words “motor”, “cycle” and “jacket” (or “motorcycle” and “jacket”) to the Complainant’s trade mark do not serve to distinguish the disputed domain name from it nor render it dissimilar to the trade mark. Rather, as the Complainant says, the inclusion of those words within the disputed domain name accentuates the impression of a connection with the Complainant’s trade mark and increase the likelihood of confusion.
The Panel accordingly finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Policy sets out at paragraph 4(c) examples of circumstances, without limitation, by which a respondent may demonstrate rights or legitimate interests in a disputed domain name.
How these provisions are usually applied in practice is explained in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1. This says that the consensus view of panelists is that “[w]hile the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out 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.”
Paragraph 4(c) of the Policy sets out circumstances, without limitation, by which a respondent might demonstrate that it has rights or a legitimate interest in a domain name. These are, summarized very briefly, if the respondent has been using the domain name in connection with a bona fide offering of goods and services, if the respondent has been commonly known by the domain name or if the respondent has been making a legitimate noncommercial or fair use of the domain name.
The Complainant having made out a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name, the burden has shifted to the Respondent to demonstrate that he has such rights or legitimate interest. By not responding to the Complaint, the Respondent has plainly failed to satisfy it.
Moreover, the available evidence suggests that the Respondent’s use of the disputed domain name is not bona fide in that the disputed domain name is being used in order to mislead Internet users into believing that the goods and services offered on the website to which it points are connected in some way to the Complainant.
The Panel accordingly finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad Faith
The disputed domain name contains the Complainant’s BERING trade mark in full and adds words which describe a product, a motorcycle jacket, of the type sold by the Complainant. This clearly points to an awareness by the Respondent of the Complainant and its BERING business as at the date of registration of the disputed domain name.
Paragraph 4(b) of the Policy sets out, without limitation circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The circumstances set out in paragraph 4(b)(iv) of the Policy are if a 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.
The Respondent’s conduct falls squarely within these provisions. The disputed domain name is confusingly similar to the Complainant’s trade mark and it points to a website which makes liberal use of the Complainant’s BERING trade mark, as well as the Complainant’s logo, and purports to sell products which are branded with the Complainant’s mark. The likelihood of confusion being caused to Internet users is inevitable. It is also clear that the Respondent is intending to create that confusion for the purpose of commercial gain.
The WIPO Overview 3.0, section 3.1.4, comments that “given that the use of a domain name for per se illegitimate activity such as the sale of counterfeit goods or phishing can never confer rights or legitimate interests on a respondent, such behavior is manifestly considered evidence of bad faith”. See also, for example, Walgreen Co. v. Muhammad Azeem / Wang Zheng, Nicenic International Group Co., Limited, WIPO Case No. D2016-1607 (<walgreenonlinepharmacy.com>) in which the respondent had also established a website purporting to sell the complainant’s products and the panel held “Noting that the disputed domain name incorporates a widely-known trademark, that no response has been filed, and that there appears to be no conceivable good faith use that could be made by the Respondent of the disputed domain name, and considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.”
For similar reasons, the Panel finds that the disputed domain name was registered and is being used 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 <beringmotorcyclejacket.com> be transferred to the Complainant.
Date: November 20, 2017