Complainants are Mills Brothers B.V., The Sting B.V. of Tilburg, Netherlands represented by AKD advocaten & notarissen, Netherlands.
Respondent is Private Proxy Registration of Sarasota, Florida, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Wild West Domains, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 4, 2012. On June 4, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 5, 2012, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to an email from the Center, Complainant filed an amended Complaint on June 6, 2012.
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 Respondent of the Complaint, and the proceedings commenced on June 19, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 9, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 16, 2012.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on July 16, 2012. 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
Complainants in this case, Mills Brothers B.V. and The Sting B.V., are respectively the trademark holder and the licensee of the following trademarks that are used by Complainants in relation to the trade and promotion for goods and services in the clothing industry:
- Benelux verbal mark THE STING, registered on May 25, 1989 under number 462718 in class 25, and duly renewed;
- Community verbal trademark THE STING, registered on November 26, 1999 under number 410399 in class 25, and duly renewed.
The disputed domain name was registered on December 20, 2011. Respondent uses the disputed domain name in connection with a website containing information in Dutch about “The Sting” and advising about the latest fashion trends. This website also contains advertisements by Google for competitors of Complainants. 5. Parties’ Contentions A. Complainant
Complainants consider the disputed domain name to be confusingly similar to the trademarks in which they claim to have rights. Complainants further claim that Respondent has no rights or legitimate interests in respect of the disputed domain name. According to Complainants, Respondent has not used the disputed domain name in good faith, as Respondent would only use the disputed domain name with the intention to commercially gain, to mislead customers and to tarnish Complainants’ trademarks. Also, Respondent has not been commonly known by the disputed domain name, according to Complainant. Finally, Complainants consider that the disputed domain name was registered and is being used in bad faith.
For these reasons, Complainants request (in a separate statement) that the disputed domain name be transferred to second Complainant, The Sting B.V. B. Respondent
Respondent did not reply to Complainants’ contentions. 6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The onus is on Complainants to make out their case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that Complainants must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer a domain name. As the proceedings are administrative, the standard of proof is the balance of probabilities.
Thus for Complainants to succeed they must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:
1. The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainants have rights; and
2. Respondent has no rights or legitimate interests in respect of the disputed domain name; and
3. The disputed domain name has been registered and is being used in bad faith.
The Panel will deal with each of these requirements in turn. A. Identical or Confusingly Similar
To prove this element, Complainants must first establish that there is a trademark or service mark in which they have rights. Complainants have clearly established that there is a trademark in which they have rights. The mark has been registered and used in the Benelux and in the European Union, which is the area that Respondent seems to target with the website that is linked to the disputed domain name, as is indicated by the language used and the content provided on said website.
The disputed domain name is not identical to Complainants’ THE STING trademarks. However, the Panel considers the disputed domain name to differ from Complainants’ THE STING trademarks by the subtraction of the article “the” and the addition of the generic words “online” and “shop”. According to the Panel, the disputed domain name contains the most distinctive element of Complainants’ THE STING trademarks. The Panel finds that the mere addition of the non-distinctive text “onlineshop” to the most distinctive element of Complainants’ trademarks is insufficient to remove the confusing similarity.
Accordingly, Complainants have made out the first of the three elements that it must establish. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, Complainant has the burden of establishing that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Previous UDRP decisions establish that it is sufficient for Complainant to make a prima facie showing that Respondent has no rights or legitimate interests in the disputed domain name in order to place the burden of production on Respondent. (See Champion Innovations, Ltd. v. Udo Dussling (45FHH),WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110).
The Panel notes that Respondent has not been commonly known by the disputed domain name and that Respondent has not acquired trademark or service mark rights incorporating such name. Respondent’s use and registration of the disputed domain name was not authorized by Complainant. There are no indications that a connection between Complainant and Respondent existed or exists.
The Panel also concludes that Respondent is not making 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 or service mark at issue, Policy, paragraph 4(c)(iii). There is a high likelihood that Respondent is making “commercial gain” by virtue of providing sponsored links (Google advertisements for competitors to Complainants) on the web page. That “commercial gain” appears to be based on the misleading diversion of some consumers, to the extent they navigate to the “www.” website because they believe it is associated with Complainant. The likelihood that Internet users are misled is increased by the content of the website, containing information about Complainant, its stores and several of the brands it sells. The Panel opines that Respondent’s use of the disputed domain name cannot be considered fair on the facts of this case, and as such demonstrates Respondent’s lack of rights or legitimate interests. C. Registered and Used in Bad Faith
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith (See e.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd,WIPO Case No. D2006-1052).
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors demonstrating bad faith registration and use is the use of a domain name to intentionally attempted to attract, for commercial gain, Internet users to a web site or other on-line location, by creating a likelihood of confusion with a complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
In the present case, it is inconceivable that Respondent was unaware of Complainants and its trademark rights when it registered the disputed domain name. It is apparent from the website linked to the disputed domain name that Respondent is familiar with Complainants and their trademarks. Therefore, it is inconceivable that Respondent was unaware of Complainants’ rights in the THE STING trademark.
Furthermore, without authorization, Respondent is using Complainants’ trademark for the provision of information about Complainants, while advertising with other brands for clothing and it seems likely that Respondent is making commercial gain out of sponsored links. Hence, the Panel opines that Respondent tries to intentionally attract Internet users to visit its website for commercial gain, by creating a likelihood of confusion with Complainants’ trademark as to the source, sponsorship, affiliation, or endorsement of the web site or location and of the products offered for sale on the website. The Panel finds that the fact that Respondent mentions on its home page that the website has no official affiliation with THE STING and claims no ownership of any The Sting Products does not by itself cure bad faith. See paragraph 3.5 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the disputed domain name was registered and is being used in bad faith. 7. Decision
For 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 second Complainant, The Sting B.V.
Flip Jan Claude Petillion
Sole Panelist
Dated: July 27, 2012
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