WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Royal British Legion v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico

Case No. D2019-0392

1. The Parties

The Complainant is The Royal British Legion of London, United Kingdom, represented by J A Kemp., United Kingdom.

The Respondent is Registration Private, Domains By Proxy, LLC, of Scottsdale, Arizona, United States of America / Carolina Rodrigues, Fundacion Comercio Electronico, of Panama City, Panama.

2. The Domain Name and Registrar

The disputed domain name <poppyshopliveon.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 February 20, 2019. On February 20, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 20, 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 February 22, 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 February 27, 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 February 28, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 20, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 21, 2019.

The Center appointed William R. Towns as the sole panelist in this matter on March 28, 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 operates a charity in the United Kingdom (“UK”) benefiting members and veterans of the armed services and their dependents. The Complainant annually distributes over 40 million red poppy paper badges in connection with Remembrance Sunday and the annual Poppy Appeal, and also raises funds through the sale of merchandise such as badges, brooches, jewelry, clothing, and other goods. One of the Complainant’s outlets is an online retail store at “www.poppyshop.org.uk”, which the Complainant has operated since 2011.

The Complainant is the owner of UK trademark registrations for POPPY SHOP, reg. No. 3278247, registered on March 30, 2018, and for POPPY, reg. No. 3278250, registered on May 18, 2018. The Complainant also holds a European Union (“EU”) trademark registration for POPPY, reg. No. 010465359, registered on February 14, 2013. Since 2014, the Complainant has used the LIVE ON designation of source for its goods and services and has secured trademark registrations for LIVE ON in the UK, reg. No. 3067341, registered on January 16, 2015, and the EU, reg. No. 013149851, registered on May 5, 2015. The Complainant also has registered the domain names <poppyshop.co.uk> and <poppyshopuk.org.uk>.

The Respondent registered the disputed domain name <poppyshopliveon.com> on October 29, 2018. The Respondent subsequently offered the disputed domain name for sale on Sedo’s Domain Marketplace with a “minimum offer” of USD 500 required. The Respondent by all appearances is no stranger to the UDRP and has been named as a respondent in a number of complaints (52 according to the Complainant) brought under the Policy involving the Respondent’s registration and use of domain names appropriating third-party trademarks.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name <poppyshopliveon.com> is confusingly similar to the Complainant’s registered POPPY, POPPY SHOP, and LIVE ON marks. The Complainant observes that the disputed domain name combines the Complainant’s POPPY SHOP and LIVE ON marks, and offers that confusing similarity may be found where, as here, the marks are recognizable within the disputed domain name. The Complainant further explains that the inclusion of the Complainant’s LIVE ON and POPPY SHOP marks in the disputed domain name does not serve to dispel confusing similarity.

The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the disputed domain name. According to the Complainant, the Respondent is not affiliated with the Complainant or authorized to use the Complainant’s marks, and has not been commonly known by the disputed domain name. The Complainant further argues that the Respondent has neither used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, and that the Respondent cannot be said to be making a legitimate noncommercial or fair use of the disputed domain name. The Complainant asserts that the Respondent’s combination of the Complainant’s marks in the disputed domain name could not have been made for any reason other than to impersonate or suggest endorsement by the Complainant.

The Complainant maintains that the Respondent registered and is using the disputed domain name in bad faith. The Complainant submits that the Respondent undoubtedly was aware of the Complainant and the Complainant’s POPPY, POPPY SHOP, and LIVE ON marks when registering the disputed domain name. The Complainant contends that the Respondent, in addition to offering the disputed domain name for sale for a minimum price of USD 500, also has redirected the disputed domain name to websites that appear to impersonate legitimate websites of other third parties. The Complainant maintains that the Respondent’s misappropriation of the Complainant’s marks in order to promote goods or services of unrelated third parties clearly constitutes bad faith, and believes that the Respondent likely receiving revenues for advertising the commercial activities of others. The Complainant also calls attention to some 50 UDRP decisions in which the Respondent has been found to have engaged in bad faith registration and use of domain names, appropriating the distinctive marks of well-known brand owners such as AMY SCHUMER, SANOFI, ESURE, CALVIN KLEIN, and AMAZON.

B. Respondent

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

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.

Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests with respect to the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name are deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain name <poppyshopliveon.com> is confusingly similar to the Complainant’s registered POPPY SHOP, POPPY, and LIVE ON marks. In considering this issue, the first element of the Policy serves essentially as a standing requirement. ¹ The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant’s trademark and the disputed domain name. In this case, the Complainant’s marks are clearly recognizable in the disputed domain name. ² Generic Top-Level Domains (“gTLDs”) generally are disregarded when evaluating the identity or confusing similarity of the complainant’s mark to the disputed domain name under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the gTLD.³

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

C. Rights or Legitimate Interests

As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to register or use the Complainant’s marks. The Respondent notwithstanding registered the disputed domain name, which is confusingly similar to the Complainant’s POPPY SHOP, POPPY, and LIVE ON marks, and has attempted to sell the disputed domain name for USD 500, while also redirecting the disputed domain name to other third-party websites.

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s 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 he 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 Respondent has not submitted a formal response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.

The Respondent has not brought forward any evidence of rights or legitimate interests in the disputed domain name. In the absence of any explanation by the Respondent, the Panel finds that the Respondent has not used or demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy. Nor is there any indication that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name within the contemplation of paragraph 4(c)(iii) of the Policy. It is undisputed that the Respondent has not been authorized to use the Complainant’s marks, and there is nothing in the record to suggest that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a claim by the Respondent of rights or legitimate interests in the disputed domain name.

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

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The disputed domain name appropriates the Complainant’s marks and is confusingly similar to the Complainant’s marks. The attendant circumstances in this case make clear that the Respondent was aware of the Complainant and the Complainant’s marks when registering the disputed domain name. The record is convincing that the Respondent’s aim when registering the disputed domain name was to exploit or otherwise capitalize on the Complainant’s rights in the marks, as evinced by the Respondent’s attempt to sell the disputed domain name for an amount well in excess of the Respondent’s out-of-pocket costs. Having regard for all of the foregoing, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith.

Accordingly, the Panel finds 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 <poppyshopliveon.com> be transferred to the Complainant.

William R. Towns
Sole Panelist
Date: April 6, 2019

¹ See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7 .

² See WIPO Overview 3.0, section 1.8 and cases cited therein. When the relevant trademark is recognizable in the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy.

³ See WIPO Overview 3.0, section 1.11 and cases cited therein. The meaning of a particular gTLD, however, may in some cases be relevant to assessments under paragraphs 4(a)(ii) and 4(a)(iii) of the Policy.