The Complainant is totes Isotoner Corporation of Cincinnati, Ohio, United States of America, represented by Frost Brown Todd LLC, United States of America.
The Respondent is PrivacyP of Munsbach, Luxemburg / Adey Faiza Imawan, Slippers Holics of Solo, Jawa Tengah, Indonesia. 2. The Domain Name and Registrar
The disputed domain name is registered with NetEarth One Inc. d/b/a NetEarth. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 1, 2011. On February 2 and 7, 2011, the Center transmitted by email to NetEarth One Inc. d/b/a NetEarth a request for registrar verification in connection with the disputed domain name and a reminder. On February 7, 2011, NetEarth One Inc. d/b/a NetEarth 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 (i.e., PrivacyP of Munsbach, Luxemburg) and contact information in the Complaint. The Center sent an email communication to the Complainant on February 9, 2011, providing the registrant and contact information disclosed by NetEarth One Inc. d/b/a NetEarth and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 14, 2011.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 15, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 7, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 8, 2011.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on March 17, 2011. 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 in this proceeding is totes Isotoner Corporation, a corporation organized under the laws of the State of Ohio. The Complainant has registered and uses several trademarks comprised of the ISOTONER name, (hereinafter the “ISOTONER Marks” or “ISOTONER Mark”) in connection with footwear and weather-related products and accessories, including slippers. In 2009, the Complainant’s sales of Isotoner products reached over 300 million dollars.
The Complainant has registered the ISOTONER Marks in the United States of America since March 9, 1971.
Copies of extracts of registration for the Community and United States trademark registrations were provided with the Complaint.
The disputed domain name was registered on August 2, 2010 5. Parties’ Contentions A. Complainant
The Complainant claims that:
1) The ISOTONER Mark is one of the most recognised apparel brand names in the world;
2) The Complainant has used ISOTONER as a trademark in connection with its products since at least as early as 1970;
3) ISOTONER is a coined term with no dictionary definition;
4) The Respondent registered the disputed domain name in an effort to capitalise on the recognition of the ISOTONER mark by those seeking information on ISOTONER branded slippers;
5) The Respondent set up the website at the disputed domain name to make money, using the Complainant’s trademarks;
6) The disputed domain name is parked.
7) The Respondent uses the ISOTONER trademark to generate revenue in a “pay-per-click” advertising scheme;
8) The Respondent has no rights or legitimate interests in the disputed domain name;
9) The Respondent has no connection or affiliation with the Complainant;
10) The Respondent’s use of a privacy shield should be considered as further inference of bad faith.
The Complainant requests that the Panel issue a decision that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has established that it has rights in the trademark ISOTONER registered, among other products, for slippers.
This Panel considers that the addition of the descriptive term “slippers” to a trademark registered and used also in connection with the sale of slippers, is not sufficient to avoid confusing similarity. On the contrary, this combination can increase confusion to the Internet consumers looking for “Slippers” branded ISOTONER.
Supporting this, is for example, Lacoste Alligator S.A. v. Priscilla, Ranesha, Angel, Jane, Victor, Olivier, Carl, Darren, Angela, Jonathan, Michell, Oiu, Matthew, Pamela, Selima, Angela, John, Sally, Susanna,WIPO Case No. D2010-0988, where the panel wrote that:
“It is long established by past panel decisions that a domain name incorporating a trademark in its entirety with the addition of generic and non-distinctive prefixes and/or suffixes is confusingly similar to the trademark. (e.g., Bayerische Motoren Werke AG v. , WIPO Case No. D2002-0615; Birkenstock Orthopädie GmbH & Co. KG v. Chen Yanbing,WIPO Case No. D2010-0746; Chanel Inc. v. Dong Jiancai, WIPO Case No. D2010-0144).
The prefixes and suffixes incorporated in the Disputed Domain Names are descriptive words which are not distinctive. Used in conjunction with a well-known mark like the LACOSTE trademark further aggravates the likelihood of confusion (see Volvo Trademark Holding AB v. Nicklas Uvelov, WIPO Case No. D2002-0521).”
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. A respondent in a UDRP proceeding does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
i) that before any notice to the respondent of the dispute, he or she used or made 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) that the respondent is commonly known by the disputed domain name, even if he or she has not acquired any trademark rights; or
iii) that the respondent intends to make a legitimate, noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
Here, the Respondent has no connection or affiliation with the Complainant, which has not licensed or otherwise authorised the Respondent to use or apply for any domain name incorporating the Complainant’s trademark. The Respondent does not appear to be commonly known as ISOTONER or by a similar name, and it has not alleged any facts to justify any rights and/or legitimate interests in the disputed domain name. The Respondent does not appear to make any legitimate use of the disputed domain name for noncommercial activities. Finally, the Respondent has not replied to the Complaint, and has not proven nor alleged in any other way any right or legitimate interest in the disputed domain name.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
ii) the holder has 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 holder has engaged in a pattern of such conduct; or
iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s 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 holder’s website or location or of a product or service on the holder’s website or location.
(Policy, paragraph 4(b)).
Accordingly, for a complainant to succeed, the panel must be satisfied that the disputed domain name has been registered and is being used in bad faith.
Considering the history of the Complainant’s trademark around the world; its extensive use on the Internet through the domain names and ; the Respondent’s use of the disputed domain name to redirect through, presumably, sponsored links, to websites of the Complainant’s competitors; and in the absence of contrary evidence, the Panel finds:
1) that the Respondent had actual knowledge of the Complainant’s trademark at the time of the registration of the disputed domain name;
2) that the above described use of the disputed domain name, i.e., to divert Internet traffic to the Respondent’s website where pay-per-click advertisements for the Complainant’s direct and indirect competitors are displayed is further inference of bad faith use;
3) that in the absence of any rebuttal by the Respondent of the Complainant’s claims, or any other indication in the case file, the Panel accepts as true the Complainant’s claims.
See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009:
“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint. The Rules expressly provide that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.’ Rule 14(b). Moreover, when a respondent defaults, the Rules direct the Panel to ‘proceed to a decision on the complaint.’ Rule 14(a); see also Rule 5(e). Furthermore, the Panel is charged with rendering its decision ‘on the basis of the statements and documents submitted.’ Rule 15(a).”
Accordingly, the Panel finds on the basis of the evidence presented that the Complainant has satisfied paragraph 4(a)(iii) of the Policy. 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.
Fabrizio Bedarida
Sole Panelist
Dated: March 23, 2011
Full & Egal Universal Law Academy