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 Domain Admin, PrivacyP of Nobby Beach, Queensland, Australia / YongFeng Li of Beijing, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 9, 2012. On August 10, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 11, 2012, 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 Center sent an email communication to the Complainant on August 15, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 20, 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 the Respondent of the Complaint, and the proceedings commenced on August 23, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 12, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 13, 2012.
The Center appointed Johan Sjöbeck as the sole panelist in this matter on September 18, 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 has submitted evidence that it is the owner of numerous registered trademarks in various countries, including the following registrations:
INCASE, registered in the United States on December 1, 1998 with registration number 2,206,955.
INCASE, registered in the United States on October 29, 2002 with registration number 2,643,012 with first use date of August 1, 1997.
INCASE, registered in the United States on December 7, 2004 with registration number 2,908,777.
INCASE, registered in the United States on January 31, 2006 with registration number 3,054,586.
INCASE, registered in the United States on December 18, 2007 with registration number 3,357,152.
INCASE, registered in the United States on June 23, 2009 with registration number 3,644,812.
INCASE, registered in the United States on June 23, 2009 with registration number 3,644,811.
INCASE, registered in the United States on June 30, 2009 with registration number 3,648,209.
The disputed domain name was registered on August 22, 2011. 5. Parties’ Contentions A. Complainant
The Complainant is engaged in the business of designing and manufacturing protective cases and bags for mobile phones, portable computers and other personal electronics such as Apple products, including the iPhone, iPod, iPad and Apple MacBook laptop.
The Complainant first learned about the Respondent’s use of the disputed domain name during an audit conducted by the Complainant’s counsel. Neither the Respondent nor the website to which the disputed domain name resolves are affiliated with the Complainant or authorized to use the Complainant’s trademarks.
The Respondent registered the disputed domain name almost nine years after the issuance of the Complainant’s U.S. trademark registration and 14 years after the Complainant’s first use of its trademark. The Respondent is using the disputed domain name as an affiliate marketing site, providing what appears to be legitimate reviews of the Complainant’s products and displaying proprietary photos of the Complainant’s products, in an effort to draw Internet users to click on links to purchase the Complainant’s own products from a third party website.
The disputed domain name wholly incorporates the Complainant’s registered trademark INCASE. The Respondent’s use causes a likelihood of confusion because Internet users are likely to come across the Respondent’s website while searching for the Complainant and assume an affiliation between the Parties because of the disputed domain name and because of the Respondent’s use of proprietary images of the Complainant’s products.
This likelihood of confusion is enhanced by the Respondent’s use of the Complainant’s registered trademark in connection with the word “ipad”, a registered trademark of Apple, Inc. Since the disputed domain name combines the Complainant’s trademark with a term Internet users would associate with the Complainant, it creates the impression amongst Internet users that the disputed domain name is associated with the Complainant.
The term “incase” has no meaning in the mobile electronics accessories market other than to refer to the Complainant and the Complainant’s brand.
The Respondent is not commonly known by the disputed domain name. The Respondent has not included any disclaimers or markings on the webpage to distinguish itself from the Complainant. The only reason for the use of the Complainant’s mark is to divert Internet users to the Respondent’s website, which is not a bona fide use. The Respondent uses the disputed domain name to suggest an affiliation with or endorsement by the Complainant, which does not exist. The Respondent is attempting to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s trademark.
Furthermore, the Respondent not only uses the Complainant’s copyrighted images of the cases on its website, but has also uses deceptive links. When an Internet user clicks on the Complainant’s trademark, placed below the Complainant’s copyrighted images, the Internet user is redirected to an online location which is not the Complainant’s own web store.
The Complainant acknowledges that the disputed domain name, in addition to the Complainant’s trademark, contains a trademark owned by a third party. Therefore, the Complainant requests that the disputed domain name be transferred to the Complainant or alternatively, cancelled. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant is, according to the submitted evidence, the owner of the registered trademark INCASE. The disputed domain name incorporates the Complainant’s trademark INCASE in its entirety with the addition of the term “ipad”, which is a third party trademark. The addition does not lessen the confusing similarity of the disputed domain name with the Complainant’s trademark to the Panel, especially considering that it relates to the type of goods for which the Complainant uses its trademark.
Having the above in mind, it is the opinion of the Panel that the disputed domain name is confusingly similar to the Complainant’s trademark INCASE and that the Complainant has proved the requirements under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests with respect to the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
(a) that it has made preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services prior to the dispute; or
(b) that it is commonly known by the disputed domain name, even if it has not acquired any trademark rights; or
(c) that it maks or intends to make 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.
The Complainant’s trademark registration for INCASE predates the Respondent’s registration of the disputed domain name . The products offered for sale by third parties via the Respondent’s website are the same type of products for which the Complainant has registered its trademark. The Complainant has not licensed, approved or in any way consented to the Respondent’s registration and use of the trademark in the disputed domain name.
Furthermore, it has been argued by the Complainant that the Respondent’s commercial website, to which the disputed domain name resolves, contains photographical images that belong to the Complainant. The Complainant maintains that the 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 of the disputed domain name.
Although given the opportunity, the Respondent has not submitted any evidence in this case to demonstrate that the Respondent is the owner of any trademark rights similar to the disputed domain name or that the Respondent is or has been commonly known by the disputed domain name.
By not submitting a response, the Respondent has failed to invoke any circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in respect of the disputed domain name. Thus, there is no evidence in the case that refutes the Complainant’s submissions, and the Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include without limitation:
(i) circumstances indicating the disputed domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain name; or
(ii) circumstances indicating that the disputed domain name was registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding disputed domain name, provided there is a pattern of such conduct; or
(iii) circumstances indicating that the disputed domain name was registered primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the disputed domain name has intentionally been used in an attempt to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on that website or location.
The submitted evidence in this case indicates to the Panel that the Respondent registered the disputed domain name with the Complainant’s products in mind. Considering that the disputed domain name is used for the same type of products for which the trademark is registered and in the absence of contrary evidence, the Panel finds that the Respondent knew or should have known of the Complainant’s trademark at the time the Respondent registered the disputed domain name.
It has been argued by the Complainant that the Respondent registered and used the disputed domain name to suggest an affiliation with or endorsement by the Complainant, which does not exist. The Complainant has submitted evidence indicating that the Respondent uses the Complainant’s copyrighted images of the Complainant’s products on the website to which the disputed domain name resolves. When clicking on the Complainant’s logo placed closely to the Complainant’s images, Internet users are directed to a web store which does not belong to the Complainant.
Thus, the evidence in the case before the Panel indicates that the disputed domain name has intentionally been used in an attempt to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the Complainant’s trademark INCASE as to the source, sponsorship, affiliation, or endorsement of the website or of a product on that website.
There is no evidence in the case that refutes the Complainant’s submissions.
The Complainant has proved the requirements under paragraph 4(b)(iv) of the Policy and that the disputed domain name has been registered and used in bad faith. Therefore the Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(iii) of the Policy. 7. Decision and Remedy
The Panel recognizes that the disputed domain name does not solely incorporate the Complainant’s trademark INCASE but also the trademark IPAD which is registered by a third party, Apple, Inc. In this proceeding, Apple, Inc. is not a party and there is no evidence in the case before the Panel that Apple, Inc. would consent to the remedy of transfer the disputed domain name to the Complainant, see Dr. Ing. h.c. F. Porsche AG v. Automotive Parts Solutions,WIPO Case No. D2003-0725
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 cancelled.
Johan Sjöbeck
Sole Panelist
Dated: September 26, 2012
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