WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Astan Morarji , Hash Clothing Limited v. John Marzlak Case No. D2009-1234 1. The Parties
The Complainants are Astan Morarji and Hash Clothing Limited, both of Peterborough, Cambridgeshire, United Kingdom of Great Britain and Northern Ireland, represented by Pennacchia Law Firm, Italy.
The Respondent is John Marzlak of Oviedo, Florida, United States of America. 2. The Domain Name and Registrar
The disputed domain name (“the Domain Name”) is registered with Intercosmos Media Group d/b/a directNIC.com. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 16, 2009. On September 17, 2009, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the Domain Name. On September 17, 2009, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details for the Domain Name. 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 proceedings commenced on October 1, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was October 21, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 22, 2009.
The Center appointed Warwick Smith as the sole panelist in this matter on October 27, 2009. 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.
In the absence of a Response, the Panel has checked the record to ensure that the Center has discharged its responsibility to notify the Complaint to the Respondent. The Panel is satisfied that the Center has done so. 4. Factual Background The Complainant
The following (uncontested) statement of facts is taken from the Complaint.
The first-named Complainant, Astan Morarji, is the registered proprietor in the United Kingdom of the word mark RED MONKEY, in international class 25 (“the Complainants' mark”). The registration covers clothing, footwear, and headgear, subject to certain exceptions which are not relevant to this decision. The application was filed on May 21, 1998, and it proceeded to registration on March 26, 1999.
The second-named Complainant, Hash Clothing Limited (“Hash”) holds a license from Mr. Morarji to use the Complainants' mark. Hash runs a clothing business, which was established in the late 1980s by a company called Niro, of which Mr. Morarji was the sole proprietor. Hash acquired the business from Niro, and Mr. Morarji is a director of Hash. The main item sold by Hash and its predecessor Niro under the RED MONKEY mark, has been a sophisticated and expensive line of jeans.
The Complainants provided a list of fashion retail stores and high-end boutiques through which their RED MONKEY jeans are sold. The list included stores in the United Kingdom, Hong Kong Special Administrative Region, Dubai, People's Republic of China, Germany, France, and Switzerland, but did not include any stores in the United States. Nevertheless, the Complaint says that the Complainants' mark, and the claimed RED MONKEY COMPANY mark, have become well-known all over the world.
Mr. Morarji is the owner of the domain name (“the Complainant's domain name”). The Respondent and the Domain Name
The Domain Name was registered on October 15, 2005. It points to a website (“the Respondent's website”), where links are provided to third party websites which are said to sell RED MONKEY jeans.
The Respondent's website as at November 2005 contained a statement: “There are only a few places online that sell Red Monkey Jeans, and we have found them. The best cheap deals on Red Monkey Company including jeans, clothing, or a watch.” There were click-on links to three third party websites, described as the “top 3 Red Monkey Jeans Links”. The links appear to have been created using the Google AdSense service, and they appear to have been to websites which had no connection with the Complainants. The text also contained a hyperlink to a website operated by a competing jeans supplier, with the statement that the Red Monkey jeans were “becoming very hot”, and would soon take over the popularity of [the competing brand of jeans]. There was also what appeared to be a RED MONKEY jeans logo displayed on the Respondent's website.
The Respondent's website does not appear to have changed substantially since November 2005. The Complainant produced pages from the Respondent's website as at September 2009, and the Panel visited the Respondent's website himself on November 5, 2009. The Panel did not note any significant differences from the position as it was in November 2005.
The Complainants say that the Respondent was not authorized by either of them to register the Domain Name, or to use the Complainants' mark on the Respondent's website. Searches conducted by the Complainants are said to show that the Respondent does not own any RED MONKEY trademark or service mark in the United States of America, nor any mark in that country which includes the words “Red” and “Monkey”. The Complainants have found no evidence suggesting that the Respondent might be commonly known by the Domain Name, or by any similar name. 5. Parties' Contentions A. Complainants
The Complainants contend:
1. The Domain Name is partially identical, and confusingly similar, to the Complainants' mark. The addition of the word “jeans”, and the use of hyphens in the Domain Name, make no difference. Indeed, the addition of the word “jeans” aggravates the Respondent's use of the Complainants' mark in the Domain Name, as the Complainants are major international dealers in a famous brand of jeans. Furthermore, “jeans” is a generic or descriptive term, the addition of which to the Complainants' mark is not sufficient to avoid the confusing similarity caused by the Respondent's use of the Complainants' mark in the Domain Name.
2. The Respondent has no rights or legitimate interests in respect of the Domain Name, having regard to the following facts:
(i) The Respondent has not been commonly known by the Domain Name, or by any similar name.
(ii) The Respondent has not been authorized by the Complainants to use the Complainants' mark (or any mark similar thereto), whether in a domain name or otherwise.
(iii) The Respondent has not used the Domain Name in connection with any bona fide offering of goods or services.
(iv) The Respondent does not hold any relevant trademark or service mark.
(v) There is no evidence of the Respondent making any legitimate non-commercial or fair use of the Domain Name. The Respondent's website is used exclusively for commercial gain, in the form of commissions earned on clicks on the sponsored links appearing on the Respondent's website.
(vi) The Respondent is not actually selling RED MONKEY jeans on the Respondent's website – all he is doing is showing some pictures of articles of the Complainants' clothing bearing the Complainants' mark, and providing sponsored links to third party websites.
(vii) The Respondent is making unfair use of the Complainants' mark, without any license from the Complainants.
(viii) The Respondent's website is designed to mislead Internet users looking for the original and famous RED MONKEY jeans, and is tarnishing the Complainants' mark.
3. The Domain Name was registered and is being used in bad faith:
(i) The Complainants' mark and the Complainants' RED MONKEY COMPANY mark have achieved a great reputation through the marketing and distribution efforts of the Complainants.
(ii) The Respondent knew about the reputation and popularity of the Complainants' RED MONKEY jeans. That is established by the statement on the Respondent's website: “Red Monkey Jeans are becoming very hot. Every new artist is trying to get a pair. They are said to soon take over the popularity of [a competing brand of jeans] because they are even better quality ....”
(iii) The Domain Name was registered long after the registration of the Complainants' mark.
(iv) The Respondent's use of the Domain Name has been in bad faith. The Respondent's website is used solely for the purpose of showing affiliation links and AdSense advertisements relating to clothing (mainly jeans). In so doing, the Respondent is intentionally attracting, for commercial gain, Internet users to the Respondent's website, by creating a likelihood of confusion with the Complainants' marks as to the source, sponsorship, affiliation, or endorsement of the Respondent's website, and the products shown on the Respondent's website.
(v) The Respondent is also seriously disrupting and damaging the Complainants' business, by promoting the sale of clothing (mainly jeans) of the Complainants' competitors, whose websites are accessible by click-through links provided on the Respondent's website.
(vi) The Respondent, by displaying on the Respondent's website pieces of clothing manufactured by Hash and bearing the Complainants' mark, is making an unlicensed and unfair use of the Complainants' mark. B. Respondent
The Respondent did not reply to the Complainants' contentions. 6. Discussion and Findings A. What the Complainant must prove under the Policy - General
Under Paragraph 4(a) of the Policy, a complainant has the burden of proving 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 respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the panel to:
“… decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”.
Where a respondent has not submitted a response, paragraph 5(e) of the Rules requires the Panel to “decide the dispute based on the complaint”. Under paragraph 14(b) of the Rules, the Panel may draw such inferences from a respondent's failure to comply with the Rules (e.g. by failing to file a response), as the Panel considers appropriate. B. Identical or Confusingly Similar
The Complainants have proved this part of their Complaint. The first-named Complainant is the registered proprietor in the United Kingdom of the Complainants' mark. That mark is incorporated in its entirety in the Domain Name, save only for the interpolation of a hyphen between the “red” and the “monkey”. Numerous UDRP Panels have found that the incorporation of a complainant's mark in a disputed domain name may be sufficient on its own to establish confusing similarity for the purposes of paragraph 4(a)(i) of the Policy (see for example Nokia Group. v. Mr. Giannattasio Mario,WIPO Case No. D2002-0782).
The use of hyphens in the Domain Name does nothing to dispel the confusing similarity caused by the Respondent's use of the Complainants' mark in the Domain Name, and nor does the addition of the word “jeans”. The Panel accepts the Complainants' submission that the use of the word “jeans” in the Domain Name in fact exacerbates the confusing similarity, because the marketing and distribution of jeans is the principal activity carried out by the Complainants under the Complainants' mark. Again, numerous UDRP panels have noted that forming a disputed domain name by adding to a complainant's mark a generic reference to the main product marketed by the complainant under that mark, is only likely to increase the confusion caused by the use of the mark – by way of example only, see the decision of the three-member Panel in The Ritz Hotel, Limited v. Damir Kruzicevic,WIPO Case No. D2005-1137. C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of Paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable 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; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The consensus view of WIPO panels on the onus of proof under paragraph 4(a)(ii) of the Policy, is summarized at paragraph 2.1 of the Center's online document “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, as follows:
“A Complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4 (a)(ii) of the UDRP”.
In this case, the Complainants have shown that the Domain Name is confusingly similar to the Complainants' mark, and that they have not authorized the Respondent to use the Complainants'mark (or any mark similar to it), whether in a domain name or otherwise. There is nothing in the evidence to suggest that the Respondent, or any business operated by him, may have been commonly known by the Domain Name, and the Respondent's website appears to be purely commercial in nature (there would be no point in the Respondent providing links to third party commercial websites if he were not receiving some commercial benefit from so doing).
Those circumstances sufficiently establish a prima facie case of “no rights or legitimate interests”, so the evidentiary onus shifts to the Respondent to show that he does have some right or legitimate interest in respect of the Domain Name. The Respondent has failed to file any Response to the Complaint, and has therefore failed to discharge that evidentiary onus. The Complainants therefore succeed on this part of the Complaint. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent's] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant's trade mark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] website or other on-line 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 [the respondent's] website or location.
The Complainants have also proved this part of their Complaint.
The pages from the Respondent's website as it stood in November 2005, make it clear that the Respondent was well aware of the RED MONKEY brand of jeans when he registered the Domain Name. There is nothing in the evidence to suggest that there might exist any other brand of jeans called “Red Monkey” (hardly an obvious mark to be applied to jeans), and the copying on the Respondent's website of what appears to be a logo used by the Complainants effectively removes any doubt that the Respondent knew of the Complainants (or at least of their RED MONKEY brand). It is also improbable to say the very least that the Respondent would have registered the Domain Name without troubling to ascertain who owned the domain name which consisted of the same words without the hyphens.
The Respondent is not some genuine reseller of the Complainants' jeans (of the kind referred to in decisions such as Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, Volvo Trademark Holding AB v. Auto Shivuk,WIPO Case No. D2005-0447, and Roust Trading Limited v. AMG LLC,WIPO Case No. D2007-1857). First, the Respondent does not appear to be actually selling any jeans – the Respondent's website simply provides links to websites operated by third party clothing suppliers (including some who appear to be selling products which compete with those of the Complainants) plus a minimal amount of text. Secondly, the Respondent's use of the Domain Name does not meet the “legitimate interest” criteria (as proposed in the Oki Data Americas case and widely accepted by subsequent UDRP panels) which UDRP Panels have applied in cases where a disputed domain name consisting of a complainant's trademark has been used by the respondent for the resale of the complainant's trademarked goods. Specifically, the Respondent's website does not promote only the Complainants' products.
In the Panel's view the circumstances fall squarely within paragraph 4(b)(iv) of the Policy – the Respondent has, by using the Domain Name, intentionally attempted to attract for commercial gain Internet users to the Respondent's website, by creating a likelihood of confusion with the Complainants' mark, as to the source, sponsorship, affiliation, or endorsement of the Respondent's website. The apparent use of the Complainants' mark and logo, the sponsored links to competitors' websites, and the Respondent's failure to file a Response, in the Panel's view, leave no room for any other sensible conclusion. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to the Complainants.
Warwick Smith
Sole Panelist
Dated: November 6, 2009
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