WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Thomas Sabo GmbH & Co. Schmuckhandel KG v. na no Case No. D2009-1519 1. The Parties
Complainant is Thomas Sabo GmbH & Co. Schmuckhandel KG of Germany, represented by Ladas & Parry, Digital Brands Practice, LLP of United States of America.
Respondent is na no of United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 10, 2009. On November 10, 2009, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On November 11, 2009, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on November 24, 2009. The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on November 26, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was December 16, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on December 16, 2009.
The Center appointed Felipe Claro as the sole panelist in this matter on December 23, 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. 4. Factual Background
Complainant is the owner of many trademark registrations. These registrations include the THOMAS SABO mark which is registered in Germany under No. 30664684, of April 5, 2007, among other registrations containing the name Thomas Sabo. Complainant operates in the international commerce under the name Thomas Sabo and sells online through the website “”. 5. Parties' Contentions A. Complainant
The following edited excerpts are taken from the Complaint:
Complainant owns numerous trademark registrations for the mark THOMAS SABO, including registrations in Germany, the European Community and the United States. Said registrations demonstrate Complainant's rights in the THOMAS SABO mark under the Policy, paragraph 4(a)(i). See Janus International Holding Co. v. Rademacher,WIPO Case No. D2002-0201 (WIPO March 5, 2002) (finding that panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption); Smart Design LLC v. Carolyn Hughes,WIPO Case No. D2000-0993 (October 18, 2000) (holding that Policy, paragraph 4(a)(i) does not require complainant to demonstrate “exclusive rights”, but that Complainant has a bona fide basis for bringing the Complaint).
The disputed domain name incorporates Complainant's THOMAS SABO mark in its entirety and merely places hyphens between the separate words and appends the generic term letter “e” thereto. Complainant argues that the Panel should therefore find that the domain name is confusingly similar to Complainant's trademarks under Policy, paragraph 4(a)(i) because the THOMAS SABO mark is the principal element of the domain name. See Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 ( November 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant's registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks.”); Playboy Enterprises International, Inc. v. Sookwan Park,WIPO Case No. D2001-0778, October 1, 2001, (where was found confusingly similar to the PLAYBOY mark); Adaptive Molecular Technologies, Inc. v. Piscilla Woodward S Charles R Thorton, d/b/a Machines & More,WIPO Case No. D2000-0006, (February 28, 2000) (where the distinctive features of the domain name were the complainant's mark).
The addition of the gTLD “.com” serves no purpose in distinguishing the disputed domain name from the THOMAS SABO mark because gTLDs are a functional necessity rather than an arbitrary trademark choice. See MasterCard International Incorporated v. John Henry Enterprises,WIPO Case No. D2001-0632 (June 28, 2001); Pomellato S.p.A v. Richard Tonetti,WIPO Case No. D2000-0493 (July 7, 2000) (finding identical to complainant's mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO was not relevant); Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429 (June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
Complainant has not authorized, licensed or consented to Respondent's registration and use of any domain name incorporating the THOMAS SABO trademark, or any confusingly similar variation of Complainant's marks. Furthermore, to Complainant's knowledge, there are no current trademark applications or registrations in the name of Respondent for any mark incorporating the terms “thomas” and “sabo” anywhere in the world. Moreover, nothing in the WhoIs information related to the disputed domain name indicates that Respondent is commonly known by the designation “thomas sabo”. Therefore, Complaint argues that, the Panel should find that Respondent is not commonly known by the disputed domain name pursuant to Policy, paragraph 4(c)(ii). See Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403 (June 27, 2000) (finding no rights or legitimate interests where (1) respondent is not a licensee of complainant; (2) complainant's rights in the mark precede respondent's registration; and (3) respondent is not commonly known by the domain name in question); Compagnie de Saint Gobain v. Com-Union Corporation,WIPO Case No. D2000-0020 (March 14, 2000) (finding no rights or legitimate interests where respondent was not commonly known by the mark and never applied for a license or permission from complainant to use the trademarked name); RMO, Inc. v. Andy Burbridge, NAF Claim No. 96949 (May 16, 2001) (interpreting Policy, paragraph 4(c)(ii) “to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail”).
Complainant asserts that without Complainant's authorization or consent, Respondent registered the disputed domain name, a domain name confusingly similar to Complainant's THOMAS SABO mark, and commercially used the disputed domain name to divert Internet traffic to a commercial website through which it identified itself as Complainant, despite having no affiliation with Complainant whatsoever, and engaged in fraudulent activity. Complainant argues that the Panel should therefore rule that such use establishes neither a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy nor a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy, paragraph 4(c)(iii). See High Tech Computer Corporation v. LCD Electronic Systems SRL,WIPO Case No. DRO2008-0011 (September 3, 2008) (finding that the respondent lacked any rights to or legitimate interests in the subject domain name when respondent falsely represented itself as an authorized importer/distributor); American International Group, Inc. v. Walter Busby, d/b/a/ AIG Mergers and Acquisitions, NAF Claim No. 156251 (May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which was blatant unauthorized use of the complainant's mark and was evidence that the respondent had no rights or legitimate interests in the disputed domain name); Sheryl Crow c/o Provident Financial Management v. LOVEARTH.net, NAF Claim No. 203208 (November 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services nor an example of a legitimate noncommercial or fair use under Policy, paragraph 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”).
Moreover, Complainant states that Respondent appears to have used the disputed domain name to solicit confidential and personal information, such as credit card information, from Internet users believing Respondent is affiliated with Complainant and therefore selling authentic Thomas Sabo brand jewelry. Panels have consistently held that such use does not qualify as a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy nor a legitimate noncommercial or fair use of the disputed domain name pursuant to paragraph 4(c)(iii) of the Policy. See Juno Online Services, Inc. v. Carl Nelson, NAF Claim No. 241972 (March 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use); Juno Online Services., Inc. v. Roberto Iza, NAF Claim No. 245960 (May 3, 2004) (defining “phishing” as “the use of e-mails, pop-ups or other methods to trick Internet users into revealing credit card numbers, passwords, social security numbers and other personal information that may be used for fraudulent purposes”); Vivendi Universal Games v. Ronald A. Ballard, NAF Claim No. 146621 (stating that where the respondent copied the complainant's website in order to steal account information from the complainant's customers, that the respondent's “exploitation of the goodwill and consumer trust surrounding the BLIZZARD NORTH mark to aid in its illegal activities is prima facie evidence of a lack of rights and legitimate interests in the disputed domain name”).
Complainant argues that Respondent likely commercially benefitted from Internet traffic that arrived at the website previously accessible through the disputed domain name and/or from Internet users who mistakenly believed Respondent's website was associated with Complainant and therefore ordered the jewelry advertised. Respondent's registration and use violates paragraph 4(a)(iii) of Policy, because Respondent is intentionally attempting to attract Internet users to Complainant's website for commercial gain by creating a likelihood of confusion with Complainant's marks as to the source, sponsorship, affiliation or endorsement of Respondent's website, which evidences bad faith registration and use under paragraph 4(b)(iv) of Policy. See G.D. Searle & Co. v. Celebrex Drugstore, NAF Claim No. 123933 (November 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy, paragraph 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); Perot Systems Corporation v. P, NAF Claim No. 95312 (August 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant's well-known marks, thus creating a likelihood of confusion strictly for commercial gain); Drs. Foster & Smith, Inc. v. Jaspreet Lalli, NAF Claim No. 95284 (August 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant's site to its own website for commercial gain).
While each of the four circumstances listed under Policy 4(b), if proven, evidences bad faith use and registration of a domain name, additional factors can also be used to support findings of bad faith registration and use. See Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624 (August 21, 2000) (“the examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive”); Twentieth Century Fox Film Corporation v. David A. Risser, NAF Claim No. 93761 (May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the panel must look at the “totality of circumstances”).
Respondent has registered the disputed domain name, which incorporates Complainant's mark in its entirety, to divert Internet traffic to a website on which it identified itself as Complainant. In light of Complainant's worldwide trademark portfolio, international brand presence, and Respondent's identification of itself as Complainant, Respondent was clearly aware of Complainant's rights in its trademarks. The Panel should therefore rule that Respondent's registration and use of the domain name, despite actual or constructive knowledge of Thomas Sabo's rights, demonstrates Respondent's registration and use of the disputed domain name in bad faith under Policy, paragraph 4(a)(iii). See Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403 (June 27, 2000) (finding that the domain name in question is “so obviously connected with the Complainant and its products that its very use by someone with no connection with the Complainant suggests opportunistic bad faith); Samsonite Corporation v. Colony Holding, NAF Claim No. 94313 (April 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); Orange Glo International v. Jets Blume, NAF Claim No. 118313 (October 4, 2002) (“Complainant's OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof.”); Pfizer, Inc. v. Papol Suger,WIPO Case No. D2002-0187 (April 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent “must have known about the Complainant's mark when it registered the subject domain name”); Exxon Mobil Corporation v. Joseph Fisher,WIPO Case No. D2000-1412 (December 18, 2000) (finding that a respondent had both actual and constructive knowledge of a complainant's EXXON mark, given the worldwide prominence of the mark, so that that respondent registered and used a contested domain name in bad faith).
Moreover, Respondent may be involved in fraudulent activities, including, but not limited to, phishing, pharming and other activities intended to defraud Internet users, as Respondent used the disputed domain name to sell stolen and/or counterfeit goods and to solicit credit card information from Internet users, as discussed above. Panels have consistently held that such activity is evidence of bad faith under the Policy. The Panel should therefore find that Respondent's use of the disputed domain name in such a manner establishes bad faith registration and use under Policy, paragraph 4(a)(iii). See Juno Online Services., Inc. v. Carl Nelson, supra. (“The domain name was registered and used in bad faith by using the name for fraudulent purposes.”); HOPE worldwide, Ltd. v. Jeniper Jin, NAF Claim No. 320379, (November 11, 2004) (defining “phishing” as fooling “Internet users into sharing personal financial data so that identities can be stolen, fraudulent bills are run up, and spam e-mail is sent”); Monsanto Company v. Decepticons, NAF Claim No. 101536 (December 18, 2001) (finding that Respondent's use of to misrepresent itself as complainant and to provide misleading information to the public supported a finding of bad faith). B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
In view of the lack of a Response filed by Respondent as required under paragraph 5 of the Rules, this proceeding has proceeded by way of default. Hence, under paragraphs 5(e), 14(a) and 15(a) of the Rules, the Panel is directed to decide this administrative proceeding on the basis of Complainant's undisputed representations. In that regard, and without deciding this proceeding solely on the basis of Respondent's default, the Panel makes the following specific findings. A. Identical or Confusingly Similar
Complainant owns numerous trademark registrations for the mark THOMAS SABO. The Panel finds that the disputed domain name is confusingly similar to Complainant's trademarks under paragraph 4(a)(i) of the Policy because the THOMAS SABO mark is completely included in the disputed domain name. B. Rights or Legitimate Interests
Nothing in the WhoIs information related to the this domain indicates that Respondent is commonly known by the name “e-thomas-sabo” pursuant to Policy, paragraph 4(c)(ii). All the contrary, the mark THOMAS SABO only identifies Complainant in commerce.1 C. Registered and Used in Bad Faith
Based on the evidence presented in the current record, the Panel finds that Respondent is intentionally attempting to attract Internet users to Respondent's website for commercial gain by creating a likelihood of confusion with Complainant's marks, which evidences bad faith registration and use under Policy, paragraph 4(b)(iv). 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 disputed domain name be transferred to Complainant.
Felipe Claro
Sole Panelist
Date: January 5, 2010
Full & Egal Universal Law Academy