The Complainants are Doserno Trading Limited of Nicosia, Cyprus and Red Diamond Holdings Sàrl of Senningerberg, Luxembourg, represented by Office Ernest T. Freylinger S.A., Luxembourg.
The Respondent is Carolina Rodrigues, FCS Holdings Corp of Santiago, Chile. 2. The Domain Name and Registrar
The disputed domain name is . It is registered with Power Brand Center Corp. (the “Registrar”). 3. Procedural History
According to information and documents provided to the Panel by the WIPO Arbitration and Mediation Center (the “Center”), the procedural history of this proceeding is as follows:
- The Complaint was filed with the Center on March 14, 2012.
- On March 14, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name.
- On March 19, 2012, the Registrar transmitted by email to the Center its verification response providing the name and contact information for the registrant of the disputed domain name (Carolina Rodrigues, FCS Holdings Corp) which differed from the respondent (PrivacyP) and contact information specified in the Complaint.
- On March 19, 2012, the Center sent an email communication to the Complainants providing the registrant name and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint.
- On March 22, 2012, the Complainants filed an amended Complaint which, based upon the information provided by the Registrar, named “Carolina Rodrigues, FCS Holdings Corp” as the Respondent.
- 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 Rules paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 23, 2012. The notice and a copy of the Complaint were sent to the Respondent by email using the email address available in the public WhoIs database, the email address subsequently provided by the Registrar, and the email address […]@, but it appears that the emails could not be delivered to the email addresses. Also, it appears that the written notice could not be delivered to the postal addresses of the Respondent because the Respondent’s postal addresses and telephone numbers were not accurate.
- In accordance with Rules paragraph 5(a), the due date for the Respondent to submit a Response was April 12, 2012. The Respondent did not submit a Response.
- On April 13, 2012, the Center notified the parties that the Respondent was in default because the Respondent failed to submit a Response, and that the proceeding would continue with a single-member Administrative Panel. The notice was sent to the Respondent by email.
- On April 20, 2012, the Center appointed Bradley Freedman as the sole panelist in this proceeding. Bradley Freedman submitted a Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with Rules paragraph 7.
Based upon the information and documents provided by the Center, the Panel finds that it was properly constituted in accordance with the Rules and the Supplementary Rules, and that all technical requirements for this proceeding have been met.
In the remainder of this decision, references to the Respondent are references to “Carolina Rodrigues, FCS Holdings Corp”, the registrant of the disputed domain name disclosed by the Registrar, and not to the privacy services provider, PrivacyP. 4. Factual Background
The following information is derived from the Complaint and supporting evidence submitted by the Complainants:
- Until recently, the complainant Doserno Trading Limited has been the owner of the trademark LEE COOPER. The complainant Doserno Trading Limited is in the process of assigning its rights in the LEE COOPER trademark to the complainant Red Diamond Holdings Sàrl in various relevant jurisdictions, but as of the date the Complaint was filed the assignment had not been finalized in all relevant jurisdictions. Consequently, either or both of the Complainants own the rights in various relevant jurisdictions regarding the trademark LEE COOPER.
- LEE COOPER has been used since 1908 in association with denim clothes and other clothing and fashion wares.
- The Complainants are registered owners of various trademark registrations in many countries for the word mark LEE COOPER for use in association with various classes of clothing and other goods, including United States Trademark Registration No. 1200502 filed October 10, 1980 and registered July 6, 1982, and Community Trademark Registration No. 183335 filed April 1, 1996 and registered February 2, 1999.
- The Complainants are also registered owners of various domain names that incorporate the LEE COOPER trademark, including , , , , and .
- The disputed domain name was created on October 27, 2004.
- The disputed domain name is used for a website that displays the title “L” and provides various “Sponsored Listings” to other websites (including clothes-related websites) and “Related Searches” (including searches using “jeans” or related terms), which sometimes include a link to the Complainants’ website “” and links to websites operated by the Complainants’ direct competitors.
- At the time of the filing of the Complaint, the publicly available registration information for the disputed domain name identified the registrant of the disputed domain name as “PrivacyP”, a provider of a WhoIs privacy service for domain name owners.
- The Complainants sent a “warning letter” dated December 13, 2011 to PrivacyP. PrivacyP responded to the letter by email dated December 13, 2011 advising that the disputed domain name had been registered using PrivacyP’s privacy protection services, and that the name and contact details of the domain name registrant would not be disclosed until after UDRP proceedings had been commenced.
- After this proceeding was commenced, PrivacyP disclosed that the name of the registrant is “Carolina Rodrigues, FCS Holdings Corp”, with an address in Santiago, Chile.
- The Complainants have not been able to discover any information on the Internet regarding FCS Holdings Corp. The Complainants have discovered that the Respondent might own or have a connection to the domain names , , and .
- The Complainants have not licensed or otherwise authorized the Respondent to use the LEE COOPER trademark in any manner.
- To the best of the Complainants’ knowledge, the Respondent is not commonly known by the names LEE COOPER or LEE COPER and does not have any rights or interest in the trademarks LEE COOPER or LEE COPER.
- The registration agreement pursuant to which the disputed domain name is registered incorporates the Policy. 5. Parties’ Contentions A. Complainants
The Complainants contend as follows:
- The Complainants own the LEE COOPER trademark, and the disputed domain name is confusingly similar to the Complainants’ LEE COOPER trademark.
- The Respondent has no rights or legitimate interests in respect of the disputed domain name.
- The Respondent has engaged in typo-squatting. The Respondent registered and is using the disputed domain name in bad faith because the dispute domain name is a misspelling of the Complainants’ LEE COOPER trademark, and is being used to intentionally divert Internet users to a website that generates revenue for the Respondent by providing commercial advertising for third party websites.
The Complainants request the disputed domain name be transferred to the complainant Red Diamond Holdings Sàrl. B. Respondent
The Respondent has not filed a Response to the Complaint or answered the Complainants’ contentions in any other manner. 6. Discussion and Findings
The Policy is narrow in scope. It applies only to disputes involving alleged bad faith registration and use of domain names – conduct commonly known as “cybersquatting” or “cyberpiracy”. The Policy does not apply to other kinds of disputes between trademark owners and domain name registrants.
The application of the Policy is limited to situations in which a complainant asserts and proves the following requirements set forth in Policy, paragraph 4(a): (i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) the registrant has no rights or legitimate interests in respect of the domain name; and (iii) the domain name has been registered and is being used in bad faith. The burden is on a complainant to prove all three required elements in order to be entitled to relief under the Policy.
Rules paragraph 10(b) requires that the Panel ensure that each party is given a fair opportunity to present its case. The Respondent was given notice of this proceeding in accordance with Rules paragraph 2. The Center discharged its responsibility under Rules paragraph 2(a) to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint. Further, the Registrar’s Domain Registration Agreement (section 2(1)) requires the Respondent to keep its contact information in the WhoIs record for the disputed domain name current and complete. The Respondent cannot hide behind its provision to the Registrar of incorrect or out-of-date contact information. In the circumstances, the Panel finds that the Respondent has been given a fair opportunity to answer the Complaint and present its case, and in accordance with Rules paragraph 14(a) the Panel will proceed to a decision on the Complaint. See Blue Cross and Blue Shield Association v. Garrett Ltd./John Nunley,WIPO Case No. D2003-0028; F. Hoffmann-La Roche AG v. ActiveI, Jason Peterson,WIPO Case No. D2007-1567; Randstad General Partner (U.S.), LLC v. Domains For Sale For You,WIPO Case No. D2000-0051; F. Hoffmann-La Roche AG v. Old Navy ltd, Mihail Gordenco,WIPO Case No. D2009-0350; and MasterCard International Incorporated v. C W,WIPO Case No. D2009-0497.
The Respondent’s default does not automatically result in a decision in favor of the Complainants. The Complainants must still prove each of the three elements required by Policy paragraph 4(a). Rules paragraph 15(a) provides that the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that the Panel deems applicable. In accordance with Rules paragraph 14(b), the Panel may draw such inferences as the Panel considers appropriate from the Respondent’s failure to reply to the Complainants’ assertions and evidence or to otherwise contest the Complaint. In the circumstances, the Panel’s decision is based upon the Complainants’ assertions and evidence and inferences drawn from the Respondent’s failure to reply, as set forth in this decision. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.6. A. Identical or Confusingly Similar
The Complainants are owners of the trademark LEE COOPER, registered in various countries for use in association with clothing and other products. The Complainants use the LEE COOPER trademark in various domain names. The Complainants assert that they and their predecessors have used the LEE COOPER trademark for over 100 years. The Complainants’ LEE COOPER trademark was first registered decades before the disputed domain name was registered. The Respondent has not contested the Complainants’ assertions. In the circumstances, the Panel finds that the Complainants have rights in the trademark LEE COOPER.
The Policy requires that the disputed domain name be “identical or confusingly similar” to the Complainants’ trademark. Neither the Policy nor the Rules provide any explicit guidance with respect to the test to be applied regarding the confusing similarity requirement of the Policy. Nevertheless, the consensus reflected in previous UDRP decisions is that the appropriate test for confusing similarity is a literal comparison of the domain name in dispute and the complainant’s trademark. See WIPO Overview 2.0, paragraph 1.2. The literal comparison approach is supported by a number of considerations, which have been discussed in various UDRP decisions. See Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698; Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Ms. Patricia Chung,WIPO Case No. D2004-0490; Pancil, LLC v. Wan-Fu China, Ltd.,WIPO Case No. D2007-0492; Highlights for Children, Inc. v. Services LLC,WIPO Case No. D2007-0337; and Scania CV AB (Publ) v. ScaniaF,WIPO Case No. D2008-0113. For those reasons, the Panel considers the appropriate test for confusing similarity to be a literal comparison of the disputed domain name and the Complainants’ trademark.
The disputed domain name and the Complainants’ LEE COOPER trademark are visually and phonetically similar. The differences between the Complainants’ LEE COOPER trademark and the disputed domain name are the omission of a letter “o” and the addition of the “.com” suffix. The “.com” suffix is irrelevant for the purpose of determining whether a challenged domain name is identical or confusingly similar to a trademark. Rather, one looks to the second level domain for that determination, since the “.com” suffix is merely descriptive of the registry services. See WIPO Overview 2.0, paragraph 1.2; The Toronto-Dominion Bank v. Boris Karpachev, WIPO Case No. D2000-1571; Ticketmaster Corporation v. Harold R. Brown, II, Harold R. Brown III, and Ted Waitt, WIPO Case No. D2001-0716; The Chancellor, Masers and Scholars of the University of Oxford v. DR Seagle t/a Mr. Oxford-University, WIPO Case No. D2001-0746; Pancil, LLC v. Wan-Fu China, Ltd.,WIPO Case No. D2007-0492; Highlights for Children, Inc. v. Services LLC,WIPO Case No. D2007-0337; and Scania CV AB (Publ) v. ScaniaF,WIPO Case No. D2008-0113.
The disputed domain name, , appears to be a purposeful misspelling of the LEE COOPER trademark by deleting a letter “o”. It appears that the Respondent is engaged in a practice known as “typosquatting” – the registration of a domain name that is a slight variation from a well-known mark in order to divert Internet traffic. This practice takes advantage of Internet users inadvertently typing an incorrect address when seeking to access the trademark owner’s website. Typosquatters often profit by selling advertisements and links to websites operated by the trademark owner’s competitors.
Many panels in previous UDRP decisions have held that domain names based on a misspelling of trademarks, including the omission of a single letter, are confusingly similar. See WIPO Overview 2.0, paragraph 1.10; Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc.,WIPO Case No. D2001-1314; The Nasdaq Stock Market Inc. v. NSDAQ.COM, NASDQ.COM and NASAQ.COM,WIPO Case No. D2001-1492; Wachovia Corporation v. Peter Carrington,WIPO Case No. D2002-0775; A, Inc. v. Steven Newman a/k/a Jill Wasserstein a/k/a Pluto Newman,WIPO Case No. D2006-0517; Doctor.Ing.h.c. F.Porsche AG v. Stonybrook Investments Limited,WIPO Case No. D2001-1095; Red Bull GmbH v. Grey Design,WIPO Case No. D2001-1035; Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698; Bang & Olufsen a/s v. Unasi Inc.,WIPO Case No. D2005-0728; EasyGroup IP Licensing Limited v. John Sansone,WIPO Case No. D2004-0763; Fuji Photo Film U.S.A., Inc. v. LaPorte Holdings,WIPO Case No. D2004-0971; Humana Inc. v. Cayman Trademark Trust,WIPO Case No. D2006-0073; E, Inc. v. Digi Real Estate Foundation,WIPO Case No. D2006-1043; Express Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator,WIPO Case No. D2008-1302.
In light of the Respondent’s use of the disputed domain name, and in the absence of any explanation or rationale put forward by the Respondent for the registration and use of the disputed domain name, the Panel finds that the disputed domain name was intended by the Respondent to be confusingly similar to the Complainants’ LEE COOPER trademark.
For those reasons, the Panel finds that the disputed domain name is confusingly similar to the Complainants’ LEE COOPER trademark. Accordingly, the Panel finds that the Complainants have satisfied the first element required by the Policy. B. Rights and Legitimate Interests
The second element required by Policy paragraph 4(a) – the registrant has no rights or legitimate interests in respect of the domain name – requires a complainant to prove a negative proposition, which can be particularly difficult. The consensus reflected in the UDRP decisions is that a complainant’s burden of proof regarding this element must be applied in light of the fact that the nature of the registrant’s rights or legitimate interests, if any, in a domain name lies most directly within the registrant’s knowledge. As a practical matter, once a complainant makes a prima facie showing that a registrant does not have rights or legitimate interests in a domain name, the evidentiary burden shifts to the registrant to provide evidence of its rights or interests in the domain name. See WIPO Overview 2.0, paragraph 2.1; Chicago Pneumatic Tool Company LLC v. Texas International Property Associates- NA NA,WIPO Case No. D2008-0144; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110; Group Kaitu, LLC, Darkside Productions, Inc. v. Group Kaitu LLC aka Manila Industries, Inc.,WIPO Case No. D2005-1087; and Alfa Laval AB, Laval Corporate AB v. Caribbean Online International Ltd. (ALFALAVALL-COM-DOM),WIPO Case No. D2007-1893.
The Complainants contend that the Respondent has no rights or legitimate interests in respect of the disputed domain name because the Complainants have not authorized the Respondent to register or use the disputed domain name or the LEE COOPER trademark; to the best of the Complainants’ knowledge the Respondent is not commonly known by the “Lee Coper” name; and the Respondent is not using the disputed domain name for a bona fide offering of goods and services because the Respondent uses the disputed domain name for a pay-per-click website that provides links to third-party websites (including websites of the Complainants’ competitors).
Except for the assertions in the signed and certified Complaint, the Complainants have not provided any evidence of trademark searches or other investigations to indicate that the Respondent does not have any interest in any marks that include the term “Lee Cooper” or “Lee Coper” and is not commonly known as “Lee Cooper” or “Lee Coper”. In some circumstances, the omission of that evidence might be fatal to a complaint under the Policy. Nevertheless, in the circumstances of this case (including the Respondent’s name, as indicated in the registrant information provided by the Registrar), the signed and certified Complaint, together with an adverse inference from the Respondent’s failure to reply to the Complaint or provide any justification for the registration and use of the disputed domain name, are sufficient to satisfy the Complainants’ evidentiary burden.
Even though the Respondent has not filed a Response to the Complaint and has not contested the Complainants’ assertions, it is incumbent upon the Panel to consider whether the Respondent’s use of the disputed domain name demonstrates rights or legitimate interests in the disputed domain name.
According to Policy paragraph 4(c), the following circumstances, if proved, demonstrate a registrant’s rights to or legitimate interests in a domain name:
(i) the registrant used or demonstrably prepared to use the domain name or a corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute;
(ii) the registrant (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark rights; or
(iii) the registrant is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the complainant’s mark.
Policy paragraph 4(c)(i) is not applicable. To satisfy the requirements of Policy paragraph 4(c)(i), the Respondent’s use of the disputed domain name must be in connection with a bona fide offering of goods or services. In some circumstances, a website providing search results or links to other websites might constitute a bona fide offering of goods or services. In the circumstances of this case, however, the Respondent’s use of the disputed domain name is not bona fide within the meaning of Policy paragraph 4(c)(i) because: (a) the disputed domain name is confusingly similar to the Complainants’ registered LEE COOPER trademark, which is specific to the Complainants in connection with denim clothes and other clothing and fashion wares and has been used for decades in many countries; (b) there is no apparent connection or relationship between the disputed domain name and the Respondent’s name or business; and (c) the Respondent does not use the disputed domain name to advertise or sell the Respondent’s own wares or services, but to provide links to third-party commercial websites offering products in competition to the Complainants’ products. See WIPO Overview 2.0, paragraph 2.6; Wachovia Corporation v. Peter Carrington,WIPO Case No. D2002-0775; Adobe Systems Incorporated v. Domain OZ,WIPO Case No. D2000-0057; Paris Hilton v. Deepak Kumar,WIPO Case No. D2010-1364; and “Dr. Martens” International Trading GmbH. and “Dr. Maertens” Marketing GmbH v. Private Whois Service,WIPO Case No. D2011-1191.
Policy paragraph 4(c)(ii) is not applicable. The Respondent does not contend, and there is no evidence, that the Respondent has been commonly known by the disputed domain name or that the disputed domain name is derived from one of the Respondent’s trademarks or trade names.
Policy paragraph 4(c)(iii) is not applicable. The Respondent does not contend, and there is no evidence, that the Respondent is making a noncommercial or fair use of the domain name. To the contrary, the evidence establishes that the Respondent is using the disputed domain name for commercial purposes – a website that provides links to third-party commercial websites.
For those reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Policy paragraph 4(a)(iii) requires the Complainants to prove that the Respondent registered and is using the disputed domain name in bad faith. The language of Policy paragraph 4(a)(iii) is conjunctive and requires that both bad faith registration and bad faith use be proved.
“Bad faith” within the meaning of the Policy is a term of art, and is not intended to apply to distasteful conduct that might constitute bad faith in the ordinary sense of the term. Policy paragraph 4(b) provides that each of the following circumstances are evidence that a registrant has registered and is using a domain name in bad faith:
(i) circumstances indicating that the registrant 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 the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) the registrant 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 registrant has engaged in a pattern of such conduct; or
(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location or of a product or service on its website or location.
The Policy expressly states that those circumstances are non-exhaustive.
To establish that a registrant registered and is using a domain name in bad faith, a complainant need only establish one of the four non-exhaustive criteria set forth in Policy paragraph 4(b).
Policy paragraph 4(b)(iv) applies if the Complainants establish that the Respondent registered and is using the disputed domain name to confuse and divert Internet traffic to the Respondent’s website for commercial gain. There is no direct evidence that the Respondent knew of the Complainants or the LEE COOPER trademark, or intended to use the disputed domain name to confuse and divert Internet users. Nevertheless, the Respondent’s knowledge and intention may be determined by common sense inferences from circumstantial evidence.
The Panel finds that the Respondent knew of the Complainants’ LEE COOPER trademark, and registered and is using the disputed domain name to confuse and divert Internet traffic to the Respondent’s website, based upon the following circumstances: (a) the Complainants’ LEE COOPER trademark is specific to the Complainants in connection with denim clothes and other clothing products and related wares, and has been used for over 100 years in many countries; (b) the disputed domain name is comprised of the Complainants’ LEE COOPER trademark with one letter “o” deleted; (c) there is no apparent connection or relationship between the disputed domain name and the Respondent or the Respondent’s business, wares or services; (d) the Respondent uses the disputed domain name for a website that provides sponsored links to third-party commercial websites offering products in competition to the Complainants; (e) there is no apparent legitimate justification for the Respondent’s registration and use of the disputed domain name; and (f) the Respondent has not denied knowledge of the Complainants or the LEE COOPER trademark. In addition, the Panel draws an adverse inference from the Respondent’s failure to provide any explanation or rationale for the use of the disputed domain name.
The Panel also finds that the Respondent’s use of the disputed domain name results in commercial gain to the Respondent. It is well known that many websites generate advertising revenue by directing traffic to other websites. Based upon the information apparent from the Respondent’s website, and in the absence of any explanation by the Respondent, the Panel finds that the Respondent’s website generates revenue for the Respondent by providing links to other commercial websites. See WIPO Overview 2.0, paragraph 3.8; Columbia Pictures Industries, Inc. v. North West Enterprise, Inc.,WIPO Case No. D2006-0951; and “Dr. Maertens” Marketing GmbH v. Private Whois Service,WIPO Case No. D2011-1191.
The Panel finds, pursuant to Policy paragraph 4(b)(iv), that the Respondent registered and is using the disputed domain name in bad faith to confuse and divert Internet users to the Respondent’s website for commercial gain.
In the circumstances, the Panel need not consider whether any of Policy paragraphs 4(b)(i), (ii) or (iii) are applicable, or whether there are other grounds for finding that the Respondent registered and is using the disputed domain name in bad faith.
Accordingly, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith. 7. Decision
The Complainants have established each of the three requirements set forth in Policy paragraph 4(a): the disputed domain name is identical or confusingly similar to the Complainants’ LEE COOPER trademark, the Respondent does not have any rights to or legitimate interests in the disputed domain name, and the Respondent registered and is using the disputed domain name in bad faith.
For the foregoing reasons, in accordance with Policy paragraph 4(i) and Rules paragraph 15, the Panel orders that the disputed domain name be transferred to the complainant Red Diamond Holdings Sàrl.
Bradley Freedman
Sole Panelist
Dated: May 2, 2012
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