Complainant is Factorie Pty Ltd of North Geelong, Victoria, Australia, represented by Cotton On Group, Australia.
Respondent is Top Business Names/Domain Administrator of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland (“UK”). 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with R Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 24, 2012. On September 24, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 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.
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 Respondent of the Complaint, and the proceedings commenced on September 28, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 18, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 19, 2012.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on November 8, 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. It has been necessary to extend the period for issuing a Decision in this case to the date indicated under paragraph 7 below. 4. Factual Background
Complainant is the owner of the registered trademark FACTORIE in numerous countries in relation to retailing and wholesaling of clothing, footwear and headgear. 5. Parties’ Contentions A. Complainant
(i) Identical or confusingly similar
Complainant contends that the Domain Name is identical or confusingly similar to Complainant’s trademark, FACTORIE, registered in class 25 (clothing; footwear; headgear for wear) and class 35 (department store retailing; retail clothing shop services; retail services; retailing of goods by any means) in the following countries: Australia, Hong Kong (China), New Zealand; Singapore, United Arab Emirates and the United States of America.
Complainant submits it also has pending trademark applications in classes 25 and 35 in the following countries: Indonesia; Malaysia; Philippines; Thailand; China (just class 25); India; Japan; Republic of Korea; Sri Lanka; Taiwan (Province of China); South Africa; Austria; Belgium; Bulgaria; Cyprus; Czech Republic; Denmark; Estonia; Finland; France; Germany; Greece; Hungary; Ireland; Italy; Latvia; Lithuania; Luxembourg; Malta; Netherlands; Poland; Portugal; Romania; Russian Federation; Slovenia; Slovakia; Spain; Sweden; United Kingdom and Brazil.
Complainant contends that the Domain Name is identical or confusingly similar to (i) Complainant’s name, Factorie Pty Ltd, and its brand name, FACTORIE, which appears on all products sold at its stores; (ii) the following domain names owned by Complainant: , , , and , and (iii) Complainant’s website at ”www..au”
Complainant urges that, when compared with Complainant’s trademarks, trade name and domain names, there is no doubt that the Domain Name is confusingly similar.
(ii) Rights or legitimate interests
Respondent does not appear to have any rights or legitimate interests in respect of the Domain Name for the following reasons:
- There is no apparent relationship between the Domain Name and Respondent’s name, Top Business Names;
- To Complainant’s knowledge, there are no registered trademarks in Respondent’s name for a mark identical or similar to the Domain Name, and Respondent is not and has not been commonly known by the Domain Name;
- Complainant has not licensed or permitted Respondent to use its name or any of its trademarks, nor has it licensed, acquiesced in or otherwise permitted Respondent to apply for or use any domain name incorporating Complainant’s mark. Any suggestion by Respondent to the contrary is denied;
- The foregoing circumstances, and the further circumstances set out in the Complaint, are not consistent with a bona fide use of the Domain Name in connection with the offering of goods or services; and
- In light of the above, Respondent appears to have the intent to mislead consumers for commercial gain whereby a reasonable consumer would believe that Respondent had some sort of association with Complainant, which it does not.
(iii) Registered and used in bad faith
The Domain Name should be considered as having been registered and used in bad faith by Respondent for the following reasons:
- Complainant has a strong reputation in Australia, New Zealand and South Africa in relation to affordable retail fashion and accessories and currently has a total of 123 stores trading in the name of FACTORIE (101 in Australia, 19 in New Zealand and 3 in South Africa), having opened its first store in Australia in 2007.
- On September, 20, 2012 the Domain Name hosted a website including links to, among other things, “clothing factory outlet”, “women’s clothing sale”, “dresses &gowns, on sale”, “Women Clothing Line”, “Factory Outlet Shopping”, Women’s Clothing Stores” and “Discount Men’s Clothing” and, at the bottom of the page, “Zara Fashion”, a competitor of Complainant, is identified as one of a number of “Related Searches”.
- Complainant has a history of registering domain names in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name.
- A Reverse WhoIs search conducted on September 20, 2012 for “Top Business Names” indicates 9,538 current “.com” domains are owned by Respondent. To Complainant’s knowledge, Respondent has no discernible business interest(s) that require the ownership of several thousand domain names.
- In the totality of the circumstances, and in the absence of evidence that Respondent has legitimate interests in respect of the Domain Name, it is reasonable to infer that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s well-known mark as to the source, sponsorship, affiliation endorsement of Respondent’s website; and registered the Domain Name for the purpose of selling it to Complainant or a third party for valuable consideration in excess of its out-of-pocket costs. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to 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 it deems applicable. Under paragraph 4(a) of the Policy, Complainant must prove each of the following:
(i) the Domain Name is identical or confusingly similar to Complainant’s mark; and
(ii) Respondent 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.
Paragraph 4(b) of the Policy sets out four illustrative circumstances which for the purposes of paragraph 4(a)(iii) are evidence of the registration and use of a domain name in bad faith. Paragraph 4(c) of the Policy sets out three illustrative circumstances, any one of which if proved by Respondent may be evidence of Respondent’s rights to or legitimate interests in the Domain Name for the purpose of paragraph 4(a)(ii) above. In this case, however, Respondent did not submit a Response. A. Identical or Confusingly Similar
Complainant is required under paragraph 4(a)(i) of the Policy to prove that the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights. The Panel finds that the Domain Name is identical to Complainant’s FACTORIE trademark, entirely incorporating the term while adding the “.com” top-level, which does not change the overall impression. Therefore, the Panel concludes that Complainant has established this element of the Policy. B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the Domain Name.
Complainant contends that Respondent has never been licensed or authorized to use Complainant’s FACTORIE trademark. Moreover, there is no evidence that Respondent is commonly known by the Domain Name nor has registered a trademark corresponding to the Domain Name. The Panel can find no legitimate reason for why the Domain Name was selected by Respondent under the given circumstances. Moreover, Respondent’s use of the Domain Name does not constitute a use in connection with a bona fide offering of goods and services, since Respondent’s website has, at least at certain times, directing Internet users to a commercial website offering links to services competitive to with those offered by Complainant or failed to resolve to an active website.
In line with previous UDRP decisions, the Panel considers that no rights or legitimate interests can be assumed in Respondent’s conduct, in view of the fact that the Domain Name is identical to Complainant’s FACTORIE trademark, there is no link between Respondent and the Domain Name, and the Domain Name has been used in connection with the promotion of competing services.
It is often difficult for a complainant to prove the negative that a respondent does not have any rights or legitimate interests in a disputed domain name. Here, Respondent was given the opportunity by way of reply to demonstrate any rights or legitimate interests in the Domain Name pursuant to paragraph 4(c) of the Policy, but failed to reply. In the light of the above analysis, Complainant has established a prima facie case, supported by evidence that none of the circumstances establishing rights or legitimate interests apply. As stressed by many UDRP decisions, in such a case the burden of production shifts to Respondent to rebut the evidence. However, because Respondent failed to submit an answer to the Complaint, and given that the allegations of Complaint do not raise any substantial doubts, the Panel accepts as true the allegations set forth in the Complaint and finds that Respondent has no rights or legitimate interests in respect of the Domain Name. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that Complainant must, in addition to the elements set out above, further demonstrate that the Domain Name has been registered and used in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances which “if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith”, in particular:
(i) circumstances indicating that you [respondent] have registered or you have 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 trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
Complainant contends that the Domain Name has been registered and used in bad faith.
A review of reported domain name cases reveals that Respondent is a company that actively registers domain names. Further, the Panel accepts, absent any Response from Respondent, that the latter has a history of abusive registration and use of domain names that incorporate third parties' trademark rights, as contended by Complainant. In this respect, Respondent has been ordered to transfer disputed domain names in a numerous UDRP cases including: Hunkemöller B.V. v. Top Business Names,WIPO Case No. D2011-0362; SusieCakes, LLC v. Top Business Names,WIPO Case No. D2010-2253; The American Automobile Association, Inc. v. BWI Domains, Top Business Names, World Idea Business,WIPO Case No. D2010-0319; Investment AB Kinnevik v. Top Business Names,WIPO Case No. D2010-0549; Constellation Brands Inc. and its wholly-owned subsidiary Robert Mondavi Winery v. Top Business Names, NAF Claim No. 1270471; Houston McLane Company, Inc. d/b/a The Houston Astros Baseball Club v. Top Business Names c/o Domain Administrator, NAF Claim No. 1296706 ; United States Automobile Association v. Top Business Names / Domain Administrator, NAF Claim No. 1338416; and U.S. Smokeless Tobacco Manufacturing Company LLC v. Top Business Names / Domain Administrator, NAF Claim No. 1347836.
Paragraph 4(b)(ii) of the Policy provides that registering a domain name in order to prevent the owner of a trademark or service mark from reflecting the mark in a corresponding domain name is evidence of registration and use in bad faith provided the respondent has engaged in a pattern of such conduct. Hence, the pattern of abusive registration relied upon by Complainant is evidence of bad faith. See Jim Carrey v. BWI Domains,WIPO Case No. D2009-0563.
Respondent chose the word “factorie” for its Domain Name, which is identical to Complainant’s FACTORIE trademark. The word is not otherwise commonly used in the English (or French, German or Spanish) language unless the intent is to refer to the plural of “factory”, in which case there should be an “s” at the end. Respondent chose this term without any conceivable basis for doing so, and did not have authorization from Complainant. The Domain Name was registered by Respondent in September of 2007. Complainant launched its FACTORIE brand and trademark in 2007. Under the circumstances, the Panel finds on the balance of the probabilities that this is not a coincidence, but instead evidence that the registration of the Domain Name was in bad faith. Further, Respondent has been found in several UDRP cases to have engaged in evasive conduct, such as deliberate and blatant provision of false aliases and contact information, which is consistent with Respondent’s conduct in this case. The American Automobile Association, Inc. v. BWI Domains, Top Business Names, World Idea Business,WIPO Case No. D2010-0319. Under the circumstances, the current lack of active use of the Domain Name does not prevent the Panel from finding bad faith registration and use for the reasons previously discussed. See Telstra Corporation Limited. v. Nuclear Marshmallows,WIPO Case No. D2000-0003 (finding respondent’s passive holding of the disputed domain name did not prevent a finding of bad faith under the totality of the circumstances).
This Panel accordingly finds that, for all the foregoing reasons, the Domain Name has been registered and 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 Complainant.
Christopher S. Gibson
Sole Panelist
Dated: December 6, 2012
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