WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Dita, Inc. v. Allen Dewett

Case No. D2019-0071

1. The Parties

The Complainant is Dita, Inc. of Aliso Viejo, California, United States of America (“United States”), represented by Sandidge IP, Inc., United States.

The Respondent is Allen Dewett of Delhi, India.

2. The Domain Name and Registrar

The disputed domain name <christian-roth.com> is registered with Network Solutions, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 12, 2019. On January 14, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 15, 2019, 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 January 17, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 6, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 12, 2019.

The Center appointed Jane Seager as the sole panelist in this matter on February 20, 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.

On February 25, 2019, the Center forwarded an Administrative Panel Procedural Order to the Parties, requesting that the Complainant file an amended Complaint to correct an administrative formality. On February 25, 2019, the Complainant filed an amended Complaint. The Respondent did not submit any reply to the amended Complaint.

4. Factual Background

The Complainant, Dita, Inc., is a company incorporated in the State of Nevada, United States. The Complainant is a manufacturer, distributor and retailer of eyewear, including eyeglasses, sunglasses and accessories. The Complainant offers its eyewear and related products under the trademark CHRISTIAN ROTH. The Complainant is the owner of, inter alia, the following trademark registrations:

- United States Trademark Registration No. 1522465, CHRISTIAN ROTH, registered on January 31, 1989;

- United States Trademark Registration No. 1522218, CHRISTIAN ROTH, registered on January 24, 1989;

- United States Trademark Registration No. 4679532, CHRISTIAN ROTH, registered on January 27, 2015; and

- United States Trademark Registration No. 4739464, CHRISTIAN ROTH, registered on May 19, 2015.

The disputed domain name was first registered on May 12, 2003. Prior to the Respondent’s registration of the disputed domain name, the disputed domain name was registered to and operated by Optical Affairs, Inc., an authorized reseller of the Complainant’s products. While the exact date that the Respondent obtained control of the disputed domain name is not clear, it appears that the WhoIs information for the disputed domain name was updated on June 21, 2018 to reflect the Respondent as the registrant of the disputed domain name.

At the time of filing, the disputed domain name resolved to “www.christian-roth.com”, which reproduced the contents of Optical Affairs, Inc.’s website previously appearing at the disputed domain name. The Respondent’s website gave the impression of an official online store for the Complainant’s products. At the time of this decision, the disputed domain name redirects to “www.christianroth.com”, which is the Complainant’s official online store.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that, on its own and through the goodwill and benefit of assignment, it has used the CHRISTIAN ROTH trademark since as early as 1986.¹ As a result of its longstanding use, the Complainant claims to have common law trademark rights in the CHRISTIAN ROTH trademark. Furthermore, the Complainant provides evidence of its registered trademark rights in CHRISTIAN ROTH, as detailed in section 4 above. The Complainant asserts that the disputed domain name incorporates the Complainant’s trademark in its entirety, noting that the addition of the generic Top-Level Domain (“gTLD”) “.com” fails to distinguish the disputed domain name from the Complainant’s trademark. Accordingly, the Complainant submits that the disputed domain name is confusingly similar to the Complainant’s trademark.

The Complainant argues that the Respondent has no proprietary rights or legitimate interests in the name “Christian Roth” or in the disputed domain name. The Complainant submits that the Respondent’s registration of the disputed domain name, wholly incorporating a famous trademark, is not supported by legitimate interests. The Complainant has not authorized or licensed the Respondent to register or use a domain name which incorporates the Complainant’s CHRISTIAN ROTH trademark. The Complainant asserts that the Respondent is not using or preparing 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, or for any legitimate noncommercial or fair use. A review of the Respondent’s website reveals that it prominently displays the CHRISTIAN ROTH trademark and is intended to mislead consumers as to the ownership of the website. The Complainant further asserts that the WhoIs information identifies the Respondent as “Allen Dewett”, demonstrating that the Respondent is not commonly known by the name “Christian Roth”. For the above reasons, the Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name.

Given the fame of the Complainant’s CHRISTIAN ROTH trademark and the fact that the Respondent is using a copy of the web pages previously published by the Complainant’s authorized reseller, it is clear that the Respondent had knowledge of the CHRISTIAN ROTH trademark when it registered the disputed domain name. The Complainant asserts that the Respondent is diverting the Complainant’s customers or potential customers seeking information about the Complainant to the Respondent’s website, where the Respondent presumably obtains commercial benefits through the sale of products bearing the Complainant’s trademarks. The Complainant submits that the Respondent has attempted to attract Internet users to its website for commercial gain by creating and exploiting confusion between the disputed domain name and the CHRISTIAN ROTH trademark. The Respondent has used “copycat” identical images of the Complainant’s authorized reseller’s web pages, and has placed advertising on the website. The Complainant states that there is no indication of the Respondent’s own activities on the website at the disputed domain name. For the above reasons, the Complainant submits that the disputed domain name was registered and is being used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, the Complainant is required to prove, on the balance of probabilities, that:

(i) the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in the disputed domain name; and

(iii) the disputed domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established rights in the CHRISTIAN ROTH trademark by virtue of its registration and use, as set out in section 4 above.

The disputed domain name incorporates the Complainant’s CHRISTIAN ROTH trademark in its entirety, altered only by the inclusion of a hyphen in the place of a space between the elements “christian” and “roth”. As such, the Complainant’s trademark is immediately recognizable in the disputed domain name. The gTLD “.com” is disregarded under the first element confusing similarity test. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1.

The Panel finds that the disputed domain name is essentially identical to the Complainant’s trademark, and that requirements of paragraph 4(a)(i) of the Policy are met.

B. Rights or Legitimate Interests

While 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. See WIPO Overview 3.0, section 2.1.

At the time of filing, the disputed domain name resolved to a website that reproduced the contents of Optical Affairs Inc.’s website at the same domain name. The website appearing at the disputed domain name gave the impression of being the Complainant’s official website, or of being the website of the Complainant’s authorized reseller. There is no relationship between the Complainant and the Respondent, or any consent for the Respondent to use the Complainant’s name or trademark in a domain name or otherwise. Whether this was the result of deliberate actions on the part of the Respondent is unclear. In any event, the use of the disputed domain name in such a manner while in the hands of the Respondent creates a misleading impression that the disputed domain name is owned and operated by the Complainant or its affiliate. The Panel therefore finds that there is no evidence to support a finding that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. See WIPO Overview 3.0, section 2.8.

The Respondent’s name, as listed in the WhoIs record for the disputed domain name is “Allen Dewett”, which bears no resemblance to the disputed domain name or to the Complainant’s trademark. There is no evidence that the Respondent is commonly known by the disputed domain name in accordance with paragraph 4(c)(ii) of the Policy.

The Respondent’s website is clearly intended to be commercial in nature, therefore the Respondent cannot be said to be making a legitimate noncommercial or fair use of the disputed domain name pursuant to paragraph 4(c)(iii) of the Policy.

Based on the evidence put forward by the Complainant, the Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not come forward with any evidence to rebut the Complainant’s evidence or assertions under this element.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The disputed domain name was first registered on May 12, 2003. It appears that the Respondent gained control of the disputed domain name at some point around June 21, 2018, prior to which the disputed domain name was registered to and operated by the Complainant’s official reseller, Optical Affairs, Inc. The registration and use of the CHRISTIAN ROTH trademark by the Complainant and its predecessors in interest predates the Respondent’s registration of the disputed domain name by some 20 years.

It is highly likely that consumers who are familiar with the Complainant’s products and the website previously appearing at the disputed domain name (when it was still operated by Optical Affairs, Inc.) would expect to find an authorized online store for the Complainant’s products at the website at the disputed domain name. Prior UDRP panels have found that a Respondent redirecting a domain name to the complainant’s website can establish bad faith insofar as the Respondent retains control over the redirection thus creating a real or implied ongoing threat to the complainant. See WIPO Overview 3.0, section 3.1.4. See also Ann Summers Limited v. Domains By Proxy, LLC / Mingchun Chen, WIPO Case No. D2018-0625: “The Panel finds that the redirection from the disputed domain name to Complainant’s official website reinforces the likelihood of confusion. Internet users are likely to consider the disputed domain name as in some way endorsed by or connected with Complainant, particularly taking into consideration the reputation of the Mark.” The Panel considers the above reasoning to be applicable to the present case, where the disputed domain name reproduces the Complainant’s trademark its entirety, previously pointed towards the Complainant’s official reseller’s website, and at the time of this decision redirects to the Complainant’s website, with whom the Respondent has no connection.

For the foregoing reasons, the Panel finds that the disputed domain name was registered and is being used in bad faith, and that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

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 <christian-roth.com> be transferred to the Complainant.

Jane Seager
Sole Panelist
Date: March 12, 2019

¹ The Panel notes that the Complainant’s trademarks as mentioned in section 4 of this decision were initially registered to Christian Roth Eyewear Corp. and Optical Affairs Company. The Complainant has provided records from the United States Patent and Trademark Office detailing their assignment to the Complainant.