WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Trojan Treasure Holding B.V. v. Sylvia Mingus
Case No. D2017-2053
1. The Parties
The Complainant is Trojan Treasure Holding B. V. of Halfweg, Netherlands, represented by WinthagenMensink advocaten, Netherlands.
The Respondent is Sylvia Mingus of Dublin, Ohio, United States of America (“USA”).
2. The Domain Name and Registrar
The disputed domain name <royalrepubliqkobenhavn.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 October 23, 2017. On October 23, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 24, 2017, 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 November 3, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 23, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 27, 2017.
The Center appointed Johan Sjöbeck as the sole panelist in this matter on December 14, 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 Complainant manufactures and markets various leather products. The Complainant has provided evidence that it is the owner of the following ROYAL REPUBLIQ trademarks:
- International Trademark Registration ROYAL REPUBLIQ with registration number 1236544 and registration date November 20, 2014. The trademark is registered for goods and services in class 9, 18 and 25. The trademark designates Australia, Switzerland, China, India, Iceland, Japan, Republic of Korea, Norway, Russian Federation, Singapore and the USA.
- European Union (“EU”) Trade Mark Registration ROYAL REPUBLIQ with registration number 013478243 and registration date April 21, 2015. The trademark is registered for goods and services in class 9, 18 and 25.
The disputed domain name <royalrepubliqkobenhavn.com> was registered on May 24, 2017 and resolves to a website titled “ROYAL REPUBLIQ” and offering Royal Republiq-marked leather goods for sale.
5. Parties’ Contentions
Trojan Treasure Holding B.V. is the IP holding entity belonging to the international fashion company Royal Republiq which manufactures and markets leather products, such as shoes, belts and bags. The Complainant was founded in 2006, rooted in Denmark (Copenhagen) and based in Amsterdam, the Netherlands. Due to the quality and design of its products, ROYAL REPUBLIQ has quickly matured into a successful fashion brand and is still rapidly growing on international scale.
The Complainant operates a number of physical stores within the EU and markets its products online through its own web shop under the domain name “www.royalrepubliq.com”.
Recently, the Complainant started to receive several complaints from various online customers. The pattern of the complaints received was identical: customers claimed that they ordered and paid for official ROYAL REPUBLIQ products online, but that they never actually received the ordered products. Investigations revealed the existence of a fake web shop, operated under the disputed domain name <royalrepubliqkobenhavn.com>. The web shop nearly mirrors the Complainant’s official web shop but is not in any way connected with the Complainant. The fake web shop has been built in a professional manner, copying the look and feel of the Complainant’s website. The fake web shop displays not only ROYAL REPUBLIQ trademarks but also the Complainant’s own official product photographs.
The Respondent is trying to create the impression that online customers have arrived at the Complainant’s official online store. Products are offered at extreme discount prices, thus luring consumers into an online purchase agreement and subsequent payment to the Respondent. However, no actual products are ever delivered. These acts constitute not only trademark and copyright infringement, but also qualify as criminal acts. It goes without saying that these acts are extremely damaging for the Complainant, not only from a financial perspective but also from a trademark perspective, as the Complainant’s reputation is at risk.
The Complainant has summoned the Respondent to cease and desist its infringing and unlawful acts. However, to date no response has been received. The Complainant has also sent notice-and-take-down notifications to the concerned hosting providers. However it has transpired that the Respondent simply change hosting provider as soon as the current provider suspends its services in relation to the hosting of the disputed domain name.
The disputed domain name <royalrepubliqkobenhavn.com> is almost identical, and in any event confusingly similar, to the Complainant’s trademark ROYAL REPUBLIQ.
The element “Kobenhavn” should play a less significant role in the comparison, as result of the fact that “Kobenhavn” is merely Copenhagen in Danish and therefore descriptive. Likely this descriptive suffix has been chosen by the Respondent because the Complainant uses “Amsterdam – Copenhagen” on its official website.
The Respondent did not use, or made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of good and services. In reality the Respondent is not offering any goods or services under the disputed domain name at all, nor made any demonstrable preparations to do so. Even if the Respondent would have been offering goods and services under the disputed domain name or made preparations to do so, this could by no means have been bona fide. The Respondent does not form part of the company of the Complainant, is not associated with the Complainant in any way, nor has the Complainant granted consent to the Respondent to the registration and use of the disputed domain name.
The website to which the disputed domain name resolves is a fake web shop mirrored from the Complainant’s official online web store. The fake web shop has been designed to mislead consumers by creating the unlawful impression that consumers are at the online location of the official web store of the Complainant. Subsequently consumers will order and pay to a designated bank account of the Respondent but the consumers will not receive any products. These acts are the opposite of legitimate or fair use of the disputed domain name. The behavior of the Complainant is not only unlawful and infringing but it also qualifies as online fraud, a criminal offence. The fake web shop has incorporated trademarks and logos of the Complainant, and uses copies of official product images which have been illegally copied from the official web store.
Since the Respondent never responded to any communication by the Complainant, the Complainant tried to find out more about the Respondent. For these purposes, the Complainant impersonated an online buyer, who showed an interest in the goods offered at the fake web shop of the Respondent. Fairly quickly, a certain “Zoey” responded, indicating that wire transfer payment to a certain bank in China would amount to a 10% discount. This person even requested not to include the order narrative in the payment specification, since this would likely trigger additional “taxes” but to include another fake reason for the payment, such as “salary”: “In order to avoid pay more bank commission and business tax on this order, Please do not leave any information on the “payment reason” in the bank, if the bank need to write something, you can write “salary” instead. Thanks for understanding. Once you finish the payment, please send me the copy of the payment so that we can arrange the goods for you first.”
It is obvious that these “payment instructions” are provided by the Respondent solely to avoid a “paper trail” of evidence of its online criminal acts of fraud. In addition, the 10% discount in case of wire transfer is obviously designed to lure customers into quick online payment. From the above it is clear that the Respondent has solely registered and is using the disputed domain name to intentionally attract for commercial, unlawful and even criminal gain, Internet users to the Respondent’s website, by creating a false likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location or of a product or service on the Respondent’s web site or location.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant is, according to the submitted evidence, the owner of the registered trademark ROYAL REPUBLIQ. The disputed domain name <royalrepubliqkobenhavn.com> incorporates the ROYAL REPUBLIQ trademark in its entirety with the addition of the geographic location “kobenhavn” (Copenhagen in Danish). The ability for generic words and geographic locations, such as “kobenhavn”, to distinguish the disputed domain name from the trademark of the Complainant is limited. In the present case, the Complainant’s trademark is readily recognizable in the disputed domain name.
Having the above in mind, the Panel concludes that the disputed domain name <royalrepubliqkobenhavn.com> is confusingly similar to the Complainant’s trademark ROYAL REPUBLIQ and that the Complainant has proven the requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests with respect to the disputed domain name. The Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
(i) that it has made preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services prior to the dispute; or
(ii) that it is commonly known by the disputed domain name, even if it has not acquired any trademark rights; or
(iii) that it intends to make a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Complainant’s trademark registration for ROYAL REPUBLIQ predates the Respondent’s registration of the disputed domain name <royalrepubliqkobenhavn.com>. The Complainant has not licensed, approved or in any way consented to the Respondent’s registration and use of the trademark in the disputed domain name.
From the evidence in the case, it is clear that the Respondent’s commercial website, to which the disputed domain name resolves, contains direct references to the Complainant’s products and ROYAL REPUBLIQ trademark. Furthermore, the evidence indicates that the Respondent has copied and reproduced the Complainant’s trademark, photographs and other material in an attempt to pass itself off as the Complainant and to mislead consumers. On the website, to which the disputed domain name resolves, the Respondent is, according to the submitted evidence, offering the Complainant’s products at discount prices in order to lure consumers to place orders and pay online. The consumers are expecting to receive the Complainant’s products, but according to the Complainant, no products are ever delivered. A number of consumers have informed the Complainant that they have paid for the Complainant’s products on the Respondent’s website without receiving any products.
Given the above, the Respondent is not making a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
Although given the opportunity, the Respondent has not submitted any evidence in this case to demonstrate that the Respondent is the owner of any trademark rights similar to the disputed domain name or that the Respondent is or has been commonly known by the disputed domain name.
By not submitting a response, the Respondent has failed to invoke any circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in respect of the disputed domain name. Thus, there is no evidence in the case that refutes the Complainant’s submissions, and the Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include without limitation:
(i) circumstances indicating the disputed domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain name; or
(ii) circumstances indicating that the disputed domain name was registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided there is a pattern of such conduct; or
(iii) circumstances indicating that the disputed domain name was registered primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the disputed domain name has intentionally been used in an attempted to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on that website or location.
The Complainant has submitted evidence demonstrating that the Respondent is offering the Complainant’s products for sale via the website to which the disputed domain name <royalrepubliqkobenhavn.com> resolves. Furthermore, the evidence in the case demonstrates that the Respondent is not only displaying the Complainant’s trademark ROYAL REPUBLIQ on the website but also reproducing photographs and other copyrighted material belonging to the Complainant. By using the disputed domain name in combination with the Complainant’s trademark, photographs and official marketing material, there is an increased risk of confusion as Internet users may more easily be confused or misled into believing that the disputed domain name and website belong to or are in some way associated with the Complainant.
Considering that the Respondent is reproducing the Complainant’s trademark, photographs and advertising material without permission and that the disputed domain name is used to market the very same products for which the ROYAL REPUBLIQ trademark is registered, the Panel finds, in the absence of contrary evidence, that the Respondent knew or should have known of the Complainant’s trademark at the time the Respondent registered and used the disputed domain name.
Thus, the evidence in the case before the Panel indicates that the disputed domain name <royalrepubliqkobenhavn.com> has intentionally been used in an attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark ROYAL REPUBLIQ as to the source, sponsorship, affiliation, or endorsement of the websites or of a product or service on the website.
There is no evidence in the case that refutes the Complainant’s submissions.
The Panel concludes that the Complainant has proved the requirements under paragraph 4(b) of the Policy and that the disputed domain name <royalrepubliqkobenhavn.com> has been 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 <royalrepubliqkobenhavn.com> be transferred to the Complainant.
Date: December 18, 2017