WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Allstar Marketing Group, LLC v. Clothing Gateway Case No. D2009-1796 1. The Parties
The Complainant is Allstar Marketing Group, LLC of Hawthorne, New York, United States of America, represented by Kane Kessler, P.C., United States of America.
The Respondent is Clothing Gateway of Toronto, Ontario, Canada. 2. The Domain Name and Registrar
The disputed domain name is registered with TierraNet d/b/a DomainDiscover. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 30, 2009. On December 30, 2009, the Center transmitted by email to TierraNet d/b/a DomainDiscover a request for registrar verification in connection with the disputed domain name. On January 4, 2010, TierraNet d/b/a DomainDiscover 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 6, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 26, 2010. The due date for Response was extended to February 5, 2010 on the Respondent's request to which the Complainant did not object. The Respondent sent an email to the Center on February 5, 2010, but did not file a formal Response.
The Center appointed James A. Barker, David H. Bernstein and Mark Ming-Jen Yang as panelists in this matter on March 5, 2010. The Panel finds that it was properly constituted. Each member of 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 is the registrant of trademarks for SNUGGIE in various jurisdictions, including Australia, Colombia, Costa Rica, Ecuador, El Salvador, European Union, Japan, Mexico, New Zealand, Panama, Peru, Singapore and Thailand. A number of those marks were registered before the registration of the disputed domain name in February 2009. For example, the Complainant's New Zealand mark was registered with a deemed date of effect in July 2008. The Complainant is also the applicant for registered marks in a number of other jurisdictions.
The Complainant claims to have used its mark continuously in commerce since August 2008 in connection with the advertising, distribution, marketing and sale of sleeved fleece blankets. The Complainant is the registrant of a number of domain names which include its mark, including and . The Complainant provides evidence of claimed unsolicited media articles on its products.
The case file does not contain information about the nature of the Respondent or its business, other than what is suggested by the communications from the Respondent to the Center (outlined further below). 5. Parties' Contentions A. Complainant
The Complainant claims that the disputed domain name, which incorporates its SNUGGIE mark in its entirety, is confusingly similar to its mark. The Complainant says that the addition of the word “store” serves to make confusion more likely.
The Complainant claims that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not licensed or otherwise permitted by the Complainant to use its mark. The Complainant is not aware of any demonstrable preparations by the Respondent to use the disputed domain name in connection with a bona fide offering of goods or services. The Complainant says that, on information and belief, the Respondent is not commonly known by the disputed domain name. Neither, says the Complainant, is the Respondent making a legitimate or non-commercial fair use of the disputed domain name. Rather, the disputed domain name is used to revert to a landing website to generate ‘click-through' revenue, and which includes links to sellers of counterfeit SNUGGIE products.
The Complainant claims that the Respondent has registered and used the disputed domain name in bad faith, since the registration was subsequent to the Complainant's introduction of the SNUGGIE blanket to the marketplace and extensive promotion of that product. The Complainant says that its mark is well-known and distinctive. Therefore the Respondent's registration of a domain name containing its mark is indicative of bad faith.
Since the Registrar is based in the United States and the Complainant is a United States citizen, the Complainant argues that the Panel should look to United States law for guidance on the issue of bad faith. By reference to the US Anticybersquatting Consumer Protection Act, the Complainant points to various factors which it says are indicative of bad faith. (Those factors are somewhat similar to those outlined above, in relation to the Complainant's arguments against the Respondent having no rights or legitimate interests.) B. Respondent
The Respondent did not submit a formal reply to the Complainant's contentions.
However, on February 5, 2010, the Respondent emailed the Center and the Complainant's representative to say that it had decided not to file a Response. The Respondent's stated reasons were that it could not justify lawyer fees “to keep a domain name [it] currently own[s] and purchased (for $10) fairly and with good intentions of operating a non competing business selling a brand that has been in the global market place for well over 10 years.” The Respondent attached photographs of various stuffed toys with inset photographs of their labels, featuring either “Snuggie Toy ™“ (together with a figurative drawing of a teddy bear) or “© Snuggie Toy, Inc. Plainview NY 11803”. The Respondent claimed that “filing this myself without a lawyer has proven to be time consuming and very tedious as there are many rules in the WIPO that need to be understood clearly before responding.” The Respondent stated, finally, that “This email is to refute the accusation of being a domain squatter as the facts clear state otherwise and to reluctantly agreeing TierraNet transfer” the disputed domain name to the Complainant.
For convenience, the Panel refers to this communication as the “Response” in the discussion which follows. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must satisfy the Panel that:
(i) the disputed 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 in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
These elements are discussed below. A. Identical or Confusingly Similar
The Panel considers that there is little doubt that the disputed domain name is confusingly similar to the Complainant's registered SNUGGIE mark.
The mark might be seen as evocative of terms, such as “snug”, which might themselves be evocative of the Complainant's products. However, on the balance of evidence provided by the Complainant, and in the absence of a contrary argument from the Respondent, the Panel accepts that the Complainant's mark is well-known and distinctive. The Panel considers that the addition of the descriptive term “store” does nothing to dilute the Complainant's mark as it appears in the disputed domain name.
In these circumstances, where the Complainant's mark is relatively distinctive, and that mark is wholly incorporated in the domain name along with the addition of the non-distinctive term “store”, the Panel finds that the disputed domain name is confusingly similar to that mark. B. Rights or Legitimate Interests
The consensus of previous decisions under the Policy is that a complainant establishes a claim under paragraph 4(a)(ii) of the Policy by making out a prima facie case (See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.1.). The Complainant has sufficiently made out such a case. The Panel considers that the Respondent has not rebutted the case against it for the following reasons.
The Respondent suggests that it has a legitimate interest in the disputed domain name, based on its “intentions of operating a non competing business selling a brand that has been in the global market place for well over 10 years”. The Respondent did not spell out this claim, beyond cryptically attaching photographs of various branded toys. It is implicit in the Respondent's argument that it has some intended or actual business relating to those toys. Relevantly, paragraph 4(c)(i) of the Policy provides that a respondent's rights or legitimate interests can be demonstrated by, before notice of a dispute, its use of, or demonstrable preparations to use, a domain name in connection with a bona fide offering of goods or services.
In the face of the Complainant's case, and the lack of further explanation from the Respondent, the Panel finds the Respondent's claim of its intended business unconvincing. If the Respondent had a legitimate explanation for what it has done, or prepared to do, it would have been simple for it to have responded properly. The Respondent chose not to so respond. The photographs of toys provided by the Respondent do not self-evidently demonstrate a legitimate link to the Respondent's business. The Respondent provided no evidence of having rights in the ostensible brands applied to those toys. The Respondent provided no evidence of an agreement with the manufacturer or brand owner relating to those toys. The Respondent gave no other evidence to show that it had made a bona fide offering in connection with those toys. Equally, the Respondent gave no evidence to demonstrate making preparations to use the disputed domain name in connection with the toys.
The website to which the disputed domain name refers is a ‘pay per click' (PPC) parking page. Even if the links on that page were created automatically (by keywords) the Respondent is ultimately responsible for them. As evidenced in the Complaint, on December 23, 2009, the Respondent's website contained a miscellany of links, including some relating to the Complainant (e.g. “Snuggie Blanket” and “Snuggie Store”) as well as other products (e.g. “Pashmina Shawls” and “Slanket Fleece Blanket”), which the Complainant claims are counterfeit or in competition with its own. On its face, the use of such a website to link to the Complainant's competitors is not legitimate.
In response, the Respondent makes only unsubstantiated claims of its intention to legitimately use the disputed domain name. As previously noted in a somewhat similar case, “where Respondent is illegitimately using the disputed domain name for a PPC parking page, this Panel declines to conjecture some future use that is in full conformity with the Policy, and, in any event, such use cannot cure the illegitimate use of the PPC parking page pending the implementation of Respondent's plans.” (See Serta Inc. v. Charles Dawson,WIPO Case No. D2008-1474). That comment is similarly applicable here.
There is otherwise no evidence in the case file to support a finding in favor of the Respondent under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b)(iv) of the Policy provides that there is evidence of bad faith registration and use where the Panel finds that the Respondent has used the domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 its website. The Panel finds that the disputed domain name was registered, and has been used in bad faith, for the purpose of paragraph 4(b)(iv) of the Policy, for the following reasons.
In this case, the Respondent has registered a domain name which is confusingly similar to the Complainant's earlier registered mark. Registering such a confusingly similar domain name creates a likelihood of confusion with the Complainant's mark.
The Respondent has established, or authorized the disputed domain name to revert to, a PPC parking website. That website contains links to competing products with those of the Complainant. Such use is evidence that the website operates for commercial gain. It exploits potential confusion with the Complainant's mark.
In addition, where a PPC parking page contains links which are based on the trademark value of the domain names, the trend in decisions under the Policy is to recognize that such practices generally constitute abusive cybersquatting. (See, e.g. mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141; Ranbaxy Laboratories Ltd v. Jucco Holdings,WIPO Case No. D2007-1562; Champagne Lanson v. Development Services/MailP, Inc., WIPO Case No. D2006-0006; eprimo GmbH v. Fei Fei / Lan Fei,WIPO Case No. D2009-0598.)
The reputation of the Complainant's mark, and the lack of contrary explanation by the Respondent, create a presumption that the Respondent registered the disputed domain name intentionally with that mark in mind. The Respondent has not denied an awareness of the Complainant when it registered the disputed domain name. The Panel also notes that the Respondent has (albeit “reluctantly”) indicated its consent to transfer the disputed domain name to the Complainant. 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 Complainant.
James A. Barker
Presiding Panelist
David H. Bernstein
Panelist
Mark Ming-Jen Yang
Panelist
Date: March 19, 2010
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