The Complainant is Incase Designs Corp. of Chino, California, United States of America, represented by Sideman & Bancroft LLP, United States of America.
The Respondent is Graham Benfield, GNB Publishing Limited of West Yorkshire, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on August 3, 2012. On August 3, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 3, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 August 7, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 27, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 28, 2012.
The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on September 11, 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
The Complainant is engaged in the business of selling cases and bags for MacBooks, iPhones and other electronic products. The Complainant is, inter alia, the proprietor of a United States trademark INCASE, registered under number 2,643,012 on October 29, 2002 for, inter alia, carrying cases and bags specifically designed for storage and transportation, namely carrying cases and bags for portable phones and laptop computers (the “Trademark”).
The Domain Name was registered on August 26, 2011. The Complainant supplied screenshots of the website at the Domain Name which directed to a website entitled “Incase Backpack. The Very Best Deals for Incase Backpacks”, with information about Complainant’s goods and links to other websites, where cases and bags for laptops can be purchased, including products of the Complainant and several of its competitors. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is confusingly similar to the Trademark.
The Complainant contends that the Respondent has no rights or legitimate interests in the Domain Name. The Respondent has not been authorized to use the Trademark (as the Domain Name or otherwise).
Furthermore, according to the Complainant, the Respondent is not commonly known by the Domain Name, and does not make any other non commercial or fair use of the Domain Name. Also, according to the Complainant, the use of the Domain Name for a website which offers competing products does not constitute a bona fide offering of goods or services.
Finally, the Complainant asserts that the Domain Name is registered and is being used in bad faith, because at the time of registration of the Domain Name the Respondent was aware of the Trademark of the Complainant and the Domain Name is used for the purpose of misleading Internet users looking for the Complainant's website and diverting their Internet traffic to the Respondent's website. Also, according to the Complainant, the use for the Domain Name for a parking page with PPC links to websites selling products competing with the products of the Complainant is evidence of bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has shown that it has rights in the Trademark.
The element “incase”, which constitutes the Trademark, is considered by the Panel as the dominant part of the Domain Name. It is not generic or descriptive for, but rather a play on, the products for which the Trademark is registered. According to Webster's Dictionary, the verb ”incase” means “to place in” or “to enclose”. Therefore, the word “incase” does not describe the case itself. In addition, the Domain Name contains the generic word “backpack”. The use of this descriptive word cannot prevent the Domain Name from being confusingly similar to the Trademark (see Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409, F. Hoffman-La Roche AG v. Rudiger Meissner, WIPO Case No. D2009-1127 and Dr. Ing. h.c. F. Porsche v. Bv berry smits trading co, WIPO Case No. DNL2009-0049).
Therefore, the Panel concludes that the Domain Name is confusingly similar to the Trademark. B. Rights or Legitimate Interests
Once a complainant establishes a prima facie case against a respondent in relation to this element, the burden is on the respondent to provide concrete evidence of its rights or legitimate interests under paragraph 4(c) of the Policy (Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited, WIPO Case No. D2004-0753).
The Complainant has claimed that the Respondent has no rights or legitimate interests in the Domain Name, because:
(i) the Respondent has not been authorized to use the Trademark (as the Domain Name or otherwise);
(ii) the Respondent is not commonly known by the Domain Name;
(iii) the Respondent does not engage in any non commercial or fair use of the Domain Name; and
(iv) the use of the Domain Name for a website which offers competing products, does not constitute a bona fide offering of goods or services.
Based on the evidence submitted, the Panel accepts the statements under (i) and (ii) to be correct, and constitute a prima facie case.
Furthermore, the Panel finds the Domain Name is not being used for the bona fide offering of goods. As the Domain Name is not descriptive, the Respondent cannot avail of the defense that it is using the Domain Name in connection with a purpose relating to its generic or descriptive meaning.
In addition, the Domain Name is being used for a website with links to other websites which offer, next to the Complainant's own products, products of competitors of the Complainant. It is well established that web pages with PPC links trading on the goodwill of a trademark (as may be evidenced by direct or indirect links to competitors, websites or goods) do not constitute a bona fide offering of goods or services, nor do they constitute a legitimate noncommercial or fair use (see mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141; Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415; Champagne Lanson v. Development Services/MailP, Inc., WIPO Case No. D2006-0006; The Knot, Inc. v. In Knot we Trust LTD, WIPO Case No. D2006-0340; Ustream.TV, Inc. v. Vertical Axis, Inc, WIPO Case No. D2008-0598).
In view of the above, the Panel concludes that the Respondent has no rights or legitimate interests in the Domain Name. C. Registered and Used in Bad Faith
The Panel assumes on the basis of the facts that the Respondent was or should have been aware of the Trademark. First, the registration of the Trademark on which the Complainant relies predates the Domain Name registration by almost nine years. Secondly, the Respondent uses the Domain Name for a website with links to websites where products of the Complainant can be purchased. Thirdly, the first three results of a Google search on “incase backpack”, as carried out by the Panel, yields results referring to the domain name , which directs to the Complainant's website. Therefore, even if the Respondent had not actually been aware of the Complainant’s rights at the time of registration, a small effort on its part would have revealed those rights. If the Respondent has not made that effort, this comes for its account, since that would imply that the Respondent has been willfully blind to such rights which would support a finding of bad faith.
By using the Domain Name for a website whose main purpose the Panel determines is to derive pay-per-click or advertising revenue, it is likely that the Respondent attempts to attract Internet users to its website, by creating a likelihood of confusion with the Trademark as to the source, affiliation, or endorsement of the Respondent’s website.
Under these circumstances, the Panel concludes that the Domain Name has been 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 Complainant.
Wolter Wefers Bettink
Sole Panelist
Dated: September 25, 2012
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