Complainant is Incase Designs Corp. of Irwindale, California, United States of America, represented by Sideman & Bancroft LLP, United States of America.
Respondent is Profitable Solutions Consulting Group, Inc. of Carlsbad, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name, (the “Disputed Domain Name”), is registered with Wild West Domains, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 10, 2011. On October 11, 2011, the Center transmitted by email to Wild West Domains, Inc. (the “Registrar”) a request for registrar verification in connection with the Disputed Domain Name. On October 12, 2011, 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 reason for the discrepancy was that the Complaint named Respondent as “Private”. The Center sent an email communication to Complainant on October 17, 2011, inviting Complainant to submit an Amended Complaint with the newly disclosed Respondent name, and provided Complainant with the registrant and contact information disclosed by the Registrar. Complainant submitted an Amended Complaint on October 18, 2011. The Center verified that 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 Respondent of the Amended Complaint, and the proceedings commenced on October 19, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 8, 2011. The Center received a communication from Respondent on November 9, 2011. The Center informed Respondent that its response was received after the Response due date but that the Center would bring Respondent’s communication to the Panel’s attention when appointed, and that it would be at the discretion of the Panel to consider it.
Respondent transmitted to Complainant by email an additional communication on November 10, 2011
The Center appointed Lynda M. Braun as the sole panelist in this matter on December 1, 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
Complainant Incase Designs Corp. is a global leader in the design, development, manufacturer, and sale of carrying cases and bags for consumer electronics, such as the Apple iPhone, iPod, iPad, and Apple MacBook laptop. Incase Designs Corp. was founded in 1997 and is the owner of numerous registered word and design marks in the United States and internationally, having first registered the trademark in 1997. Complainant offers a product line called the “Incase Snap Case” which is designed to protect various Apple products such as the iPhone and iPod.
Respondent registered the Disputed Domain Name on July 30, 2011 and created a website to which the Disputed Domain Name resolves. Respondent offers for sale on its website, among other things, Complainant’s product line of Incase Snap Cases. Respondent’s website uses Complainant’s INCASE trademark throughout its webpages, including in connection with images of Complainant’s products as well as in connection with competing products. 5. Parties’ Contentions A. Complainant
Complainant in this administrative proceeding is Incase Designs Corp., a California corporation with its principal place of business in Irwindale, California, United States of America.
Complainant contends that the Disputed Domain Name is confusingly similar to its registered trademark. Complainant also states that Respondent’s use of the words “snap case” adds to the likelihood of confusion since Complainant manufactures and sells called the “Incase Snap Case.” In this way, Respondent creates the mistaken impression for consumers that the Disputed Domain Name is associated with Complainant.
Complainant argues that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. Respondent lacks any bona fide offering of goods and services, is not commonly known by the Disputed Domain Name, and does not have any other noncommercial or fair use reason for its use.
Complainant further alleges that Respondent registered and is using the Disputed Domain Name in bad faith. Complainant claims that Respondent is using the Disputed Domain Name to attract Complainant’s potential customers to Respondent’s website and to imply an affiliation with Complainant that does not exist. Respondent also uses Complainant’s copyrighted images of cell phone cases on its website and has deceptive links to other products. Complainant argues that Respondent’s unauthorized use of Complainant’s trademark to generate pay-per-click revenue or to display competitive products constitutes bad faith under the Policy. B. Respondent
Respondent in this administrative proceeding is Profitable Solutions Consulting Group, Inc., located in Carlsbad, California, United States of America.
A communication sent by Respondent was received by the Center on November 9, 2011, a day after the Response was due. Respondent apologized for the delay, stating that he recently moved and took time off from work. Respondent subsequently sent an email to Complainant on November 10, 2011, in which he said that he was unable to respond to the Complaint until October [sic] 8, 2011 because of “circumstances out of our control”. Respondent essentially apologized for his actions, stating that he did not intend to step on anyone’s toes. He also said that his sixteen step year old stepson “attended a basic internet marketing class, happened to like the Incase product line and discovered a .com that could be used as an Amazon affiliate.” The stepson told Respondent that he “thought that Incase would welcome the business.” Respondent further stated that he “made arrangements to take down the web page by end of business [that day] …”
Pursuant to Paragraph 10(d) of the Rules, “[t]he Panel shall determine the admissibility, relevance, materiality and weight of the evidence.” The Panel in this case has decided to consider Respondent’s above-referenced communications in rendering its decision. 6. Discussion and Findings
Pursuant to the Policy, paragraph 4(a), a complainant must prove each of the following to justify the transfer of the domain name:
(i) That the domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) That respondent has no rights or legitimate interests in respect of the domain name; and
(iii) That respondent has registered and is using the domain name in bad faith.
These elements are discussed as follows: A. Identical or Confusingly Similar
Complainant has valid and well established rights, both in the United States and abroad, in its INCASE trademark. The Panel finds that the Disputed Domain Name, , which incorporates Complainant’s trademark in its entirety, is confusingly similar to that trademark.
The words “snap case” in the Disputed Domain Name are descriptive and indicate that the website offers a particular type of product for sale. The addition of the words “snap case” does not remove the similarity but increases the risk of confusion for consumers, as they would believe that the website to which the Disputed Domain Name resolves sells Complainant’s well known snap case product line.
Indeed, it is well established that the addition of descriptive or generic words to a trademark does nothing to change an otherwise identical or confusingly similar domain name. Z, Inc. v. Zufu aka Huahaotrade,WIPO Case No. D2008-1191 (the panel found confusing similarity where “shop” and a hyphen were added to the trademark of the complainant in the disputed domain name). See also PRL USA Holdings, Inc. v. Unasi Management Inc.,WIPO Case No. D2005-1027 (descriptive or generic additions do not avoid confusing similarity of domain names and trademarks); International Organization for Standardization ISO v. Quality Practitioners Institute and Website Pros, Inc. and Quality,WIPO Case No. D2005-1028 (the addition of generic words to a mark to form a domain name is insufficient to dispel confusing similarity).
Accordingly, the first element of Paragraph 4(a) of the Policy has been met by the Complainant. B. Rights or Legitimate Interests
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such a prima facie case is made, the 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 Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.1.
In this case, the Complainant has made out a prima facie case. Respondent has made no formal reply, although he as much as admitted a lack of legitimate interests in the Disputed Domain Name in his communications to the Center and to Complainant, in which he apologized to Complainant for his actions.
The Respondent’s lack of formal reply notwithstanding, there is no evidence in the record that the Respondent is in any way associated with the Complainant, that the Respondent is now or was ever known by the Disputed Domain Name, or that the Respondent has any authority, license or permission to use the Complainant’s trademark. Rather, the Respondent is using the Disputed Domain Name to offer for sale Complainant’s products without authorization.
Accordingly, the second element of Paragraph 4(a) of the Policy has been met by the Complainant. C. Registered and Used in Bad Faith
The Panel finds that based on the record, Complainant has demonstrated the existence of Respondent's bad faith pursuant to paragraph 4(b)(iv) of the Policy as follows:
First, the sale of goods bearing Complainant’s registered trademark constitutes an attempt to disrupt Complainant’s business. The Panel finds that Respondent has attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s INCASE trademark. As Respondent’s own business name does not appear on the website to which the Disputed Domain Name resolves, Respondent could only have registered the Disputed Domain Name, which is so confusingly similar to Complainant’s Mark, to capitalize on the valuable goodwill associated with the Complainant’s trademark. See Hilton Group plc v. Forum LLC,WIPO Case No. D2005-0244 (use of domain name to attract users for commercial gain is evidence of bad faith). The Panel finds that this is evidence of bad faith registration and use of the Disputed Domain Name.
Second, the website to which the Disputed Domain Name resolves has been set up to provide links to commercial products, including phone and phone accessory-related products, on a pay-per-click basis. It is reasonable to assume that the Disputed Domain Name generates revenue from the click-through referrals. Whether this revenue accrues directly to Respondent or to the registrar, or to both, is immaterial. Villeroy & Boch AG v. Mario Pingerna,WIPO Case No. D2007-1912. The Panel finds that such conduct is also evidence of bad faith registration and use of the Disputed Domain Name.
Accordingly, the Panel finds that the Disputed Domain Name was registered and used in bad faith and Complainant has established its case under the third element 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 Disputed Domain Name, , be transferred to Complainant.
Lynda M. Braun
Sole Panelist
Dated: December 3, 2011
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