Complainant is Incase Designs Corp. of Chino, California, United States of America (“U.S.”) represented by Sideman & Bancroft LLP, U.S.
Respondent is Rogenie LLC of San Diego, California, U.S. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 24, 2012. On July 24, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 24, 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. Complainant filed an amended Complaint on August 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 August 8, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 28, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 29, 2012.
The Center appointed Jeffrey D. Steinhardt as sole panelist in this matter on September 3, 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
Complainant is owner of trademarks that include the term “incase” in many countries, including for example INCASE (word mark), United States Registration No. 2,643,012, registered in International Class 9 on October 29, 2002, with a first use date of August 1, 1997.
The disputed domain name was registered November 27, 2011, and currently routes to a website promoting the sale of cases apparently specially designed for Apple Inc.’s iPhone.1 5. Parties’ Contentions A. Complainant
Complainant avers that it was founded in 1997 and is a global leader in the design, development, manufacture and sale of carrying cases and bags for consumer electronics such as Apple Inc.’s products like the iPhone, iPod, iPad and Apple MacBook laptop computer.
In summary, the Complaint’s legal allegations are that: (1) the disputed domain name is confusingly similar to marks in which Complainant has rights, since the disputed domain name wholly incorporates Complainant’s INCASE mark; (2) Respondent has no rights or legitimate interests in the disputed domain name and is not making legitimate noncommercial, bona fide or fair use of the disputed domain name; and (3) Respondent registered and uses the disputed domain name in bad faith.
Complainant seeks transfer or, in the alternative, cancellation of the disputed domain name. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
The Rules require the Panel to render its Decision 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 it deems applicable. Rules, paragraph 15(a). Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Complainant must establish these elements even if Respondent does not reply. The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064. In the absence of a response, the Panel may also accept as true the reasonable factual allegations in the Complaint. E.g., ThyssenKrupp USA, Inc. v. Richard Giardini,WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009). A. Identical or Confusingly Similar
The Panel agrees with Complainant that the disputed domain name is confusingly similar to a trademark in which Complainant has rights.
UDRP panels generally disregard the gTLD suffix in determining whether a disputed domain name is identical or similar to a complainant’s marks. See e.g., HUK-COBURG haftpflicht-Unterstützungs-Kasse kraftfahrender Beamter Deutschlands A.G. v. DOMIBOT (HUK-COBURG-COM-DOM), WIPO Case No. D2006-0439; VAT Holding AG v. V,WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc.,WIPO Case No. D2006-1315.
Without the gTLD suffix, the disputed domain name consists of the combination of Complainant’s INCASE trademark and the iPHONE trademark of Apple Inc. The Panel concludes that the addition of the iPHONE trademark does not negate the confusion created by Respondent’s complete inclusion of the INCASE trademark in the disputed domain name. E.g., Sanofi-aventis, Sanofi-Aventis Deutschland GmbH v. Andrey Mitrofanov,WIPO Case No. D2007-1772; Giata Gesellschaft für die Entwicklung und Vermarktung interaktiver Tourismusanwendungen mbH v. Keyword Marketing, Inc.,WIPO Case No. D2006-1137; Hoffmann-La Roche Inc. v. Aneko Bohner,WIPO Case No. D2006-0629.
In fact, given that Complainant specifically designs, promotes and distributes accessories for Apple Inc.’s iPHONE product, the addition of the iPHONE trademark to Complainant’s trademark in the disputed domain name simply increases the confusion that Internet users would experience. Cf. ACCOR, Société Anonyme à Directoire et Conseil de surveillance v. Tigertail Partners,WIPO Case No. D2002-0625 (“[c]onfusion is only heightened when the generic word added by Respondent is descriptive of the Complainant’s goods or services marketed in relation to the trademark[.]”).
The Panel therefore concludes that the first element of paragraph 4(a) of the Policy is established. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes:
(1) the use of the domain name in connection with a bona fide offering of goods and services;
(2) being commonly known by the domain name; or
(3) the making of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.
Complainant must show a prima facie case that Respondent lacks rights or legitimate interests. See e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 (citing De Agostini S.p.A. v. Marco Cialone,WIPO Case No. DTV2002-0005). The absence of rights or legitimate interests is established if Complainant makes out a prima facie case and that prima facie case is not rebutted.
As the Complaint exhibits show, Respondent, through its website, is promoting Respondent’s own products, which are in direct competition with Complainant’s products. Therefore, Respondent is making a direct commercial use of the disputed domain name and not a noncommercial or fair use. See e.g., Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784.
Moreover, there is nothing in the record to indicate that Respondent promotes or sells the products of Complainant that are associated with Complainant’s registered INCASE marks. Thus, the Panel finds that Respondent is not making a bona fide offering of goods or services in connection with its use of the disputed domain name.2
In the absence of a Response, the Panel accepts as true Complainant’s allegations that Respondent has no authorization or license to use Complainant’s trademarks. The Panel also accepts Complainant’s uncontested allegation that Respondent is not known by the disputed domain name.
It is conceivable that a respondent in circumstances such as those here presented might allege that the words “in” and “case” are used in their ordinary or dictionary sense to direct traffic to products that include “cases” “in” which devices like the iPHONE may be stored and used. UDRP panels, including this one, have considered acceptable under the Policy the use of dictionary terms in their ordinary sense, even if the domain name in dispute is confusingly similar to a complainant’s trademark:
“The Panel accepts generally that a respondent may have a right to register and use a domain name to attract Internet traffic based on the appeal of a commonly used descriptive term, even when the domain name is confusingly similar to a complainant’s registered mark. E.g., National Trust for Historic Preservation v. Barry Preston,WIPO Case No. D2005-0424; Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc.,WIPO Case No. D2004-0843; T. Rowe Price Associates, Inc. v. J A Rich,WIPO Case No. D2001-1044; Sweeps Vacuum & Repair Center, Inc. v. Nett Corp.,WIPO Case No. D2001-0031.
“However, that domain name must have been registered because of its attraction as a dictionary word or descriptive term, and not because of any value corresponding to a trademark; the use of the domain name must also be consistent with its attraction as a dictionary word or descriptive term. Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415; HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager,WIPO Case No. D2007-0062.”
Johnson & Johnson v. Chad Wright, WebQ, Inc.,WIPO Case No. D2012-0010 (three-member panel). Having refrained from submitting any response, however, Respondent has not raised this possibility.
In light of the overall record, the Panel agrees with Complainant that Respondent is instead seeking to attract Internet users through Complainant’s marks for Respondent’s own commercial purposes.
The Panel concludes that the Complainant makes out a prima facie case. Filing no response, Respondent has not rebutted the prima facie case or invoked any of the circumstances of paragraph 4(c) of the Policy to support the existence of its “rights or legitimate interests” in use of the disputed domain name.
Accordingly, the Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
The Panel finds that the third element of paragraph 4(a) of the Policy, bad faith registration and bad faith use, is also established.
Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith registration and use. Policy, paragraph 4(b)(iv). See, e.g., L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623. Panels may draw inferences about bad faith registration or use in light of the circumstances, including a lack of conceivable good faith uses for the domain name or failure to reply to a complaint. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
The Panel infers that Respondent was aware of Complainant’s trademark and product name, which was first used and registered many years before Respondent’s registration. The Panel further infers that Respondent registered the disputed domain name intending to trade on the value of Complainant’s trademark. Although Complainant’s INCASE mark consists of a combination of dictionary terms, since Complainant and Respondent compete directly in the same, narrow market, it is beyond doubt in the Panel’s opinion that Respondent would have chosen the disputed domain name for any other reason. The Panel finds that Respondent deliberately attempted to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with Complainant’s mark. The Panel concludes, therefore, that Respondent registered the disputed domain name in bad faith.
The Panel also concludes that the circumstances demonstrate bad faith use of the disputed domain name by Respondent, as elaborated below.
As previously noted, the disputed domain name is used to promote sales of products in head-to-head competition with Complainant. This is often viewed as evidence of use in bad faith. See, e.g., Pfizer Inc. v. jg a/k/a Josh Green, supra (citing Google, Inc. v. and Jimmy Siavesh Behain,WIPO Case No. D2000-1240; Casio Keisanki Kabushiki Kaisha (Casio Computer Co., Ltd.) v. Jongchan Kim,WIPO Case No. D2003-0400; Downstream Technologies, LLC v. Bartels System GmbH,WIPO Case No. D2003-0088).
As a further indication of bad faith, Respondent also appears to employ the disputed domain name to disrupt the business of Complainant, the trademark holder. Policy, paragraph 4b(iv); Ticketmaster Corporation v. Woofer Smith,WIPO Case No. D2003-0346. Respondent has declined to submit a response to these proceedings, Telstra, supra, and the Panel also finds that there is no conceivable legitimate use for the disputed domain name by Respondent. See Hoffmann-La Roche Inc. v. Samuel Teodorek,WIPO Case No. D2007-1814.
The Panel therefore concludes that the disputed domain name was registered and is being used in bad faith under paragraph 4(b)(iv) of the Policy. 7. Decision and Remedy
The Panel concludes that cancellation is the appropriate remedy in this proceeding for the following reasons.
The disputed domain name fully incorporates the prominent trademarks of two distinct rightholders: “INCASE” (belonging to Complainant) and “iPHONE” (belonging to Apple Inc.).
Complainant initially requested transfer of the disputed domain name. Later, though, Complainant expressed concern that Apple Inc. would not quickly consent to transfer the disputed domain name to Complainant. Therefore in its amended Complaint, while still requesting transfer, Complainant added a request in the alternative for the remedy of cancellation.3
In a number of decisions, even those involving the iPHONE trademark, UDRP panels have granted transfer to complainants when the domain name in dispute also included the marks of owners not party to the proceedings.4 However it appears that in those proceedings, the complainants either presented evidence of consent by the third-party trademark holder, or the complainants did not request the alternative remedy of cancellation. There are also several well-reasoned decisions ordering cancellation and refusing transfer in the absence of consent from third-party trademark holders. E.g., Dr. Ing. h.c. F. Porsche AG v. Automotive Parts Solutions,WIPO Case No. D2003-0725 cited in Lilly ICOS LLC v. Tudor Burden, Burden Marketing,WIPO Case No. D2004-0794.
Apple Inc. is not a party to this proceeding. There is no indication in the record that Apple Inc. would consent to the remedy of transfer to Complainant, and indeed, Complainant appears to be disinclined to request Apple Inc.’s authorization. In these circumstances, therefore, the Panel has determined that it is most consistent with the Policy and its injunction of efficiency not to delay the proceedings by ordering Complainant to seek such authorization.
For 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 cancelled.
Jeffrey D. Steinhardt
Sole Panelist
Dated: September 12, 2002
1 The Panel has undertaken limited research by visiting the website to which the disputed domain name routes, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions Second Edition paragraph 4.5. The appearance of the website on line is consistent with its appearance and content in the screen captures annexed to the Complaint.
2 While the Panel agrees with Complainant that there is no bona fide use, the Panel finds that the case cited in the Complaint is inapposite; Lardi Ltd v. Belize Domain WHOIS Service Lt, WIPO Case No. D2010-1437, involved only a respondent’s website with sponsored links to third-party sites and not, as here, a website in direct competition with a complainant’s business.
3 In correspondence with the Center dated August 1, 2012, Complainant’s counsel requested that the disputed domain name “be blocked.” As pointed out by the Center in its response on August 2, 2012, the UDRP provides only for the remedies of transfer or cancellation. The amended Complaint, requesting alternative remedies of transfer or cancellation, followed on August 6, 2012.
4 E.g., Verizon Trademark Services LLC v. Cyrus de Ocampo, WIPO Case No. D2012-0282 (“Several WIPO UDRP panels have noted that, although neither the Policy nor the Rules expressly require doing so, it is good practice to obtain authorization from the third-party trademark owner with a potential interest in the transferred domain names. See, e.g., Pfizer, Inc. v. Martin Marketing, supra; Hoffmann-La Roche Inc. v. #1 Viagra Propecia Xenical & More Online Pharmacy, supra; Yahoo, Inc. v. M & A Enterprise,WIPO Case No. D2000-0748.”); Verizon Trademark Services LLC v. Pawel Tykwinski, Registration Private ID: CR68165630,WIPO Case No. D2011-1092; WhatsApp Inc. v. Private Whois , Private Whois and Private Whois , WIPO Case No. D2012-0674 (concluding that the majority of panels rule in favor of transfer, but complainant had apparently requested transfer).
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