The Complainant is Smarty Had A Party, LLC of Saint Louis, Missouri, United States of America (“US”), represented by Jason Schmidt, US.
The Respondent is Private Whois of Grand Cayman, Cayman Islands, the Overseas Territory of the United Kingdom of Great Britain and Northern Ireland (“UK”) and Telecom Tech Corp of Panama, Panama. 2. The Domain Name and Registrar
The disputed domain name is registered with Bargin Register Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 9, 2012. On November 12, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 26, 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 November 27, 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 December 2, 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 December 3, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 23, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 24, 2012.
The Center appointed Debrett G. Lyons as the sole panelist in this matter on January 10, 2013. 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 facts relevant to the findings and decision in this case are that:
1. the Complainant provides catering services and entertainment supplies by reference to the trade mark SMARTY HAD A PARTY;
2. the trade mark is, inter alia, the subject of US Federal Trade Mark Regn. No. 3,777,476 filed on September 1, 2009;
3. the disputed domain name was registered on March 19, 2010;
4. the disputed domain name resolves to a website which promotes services in competition with those offered by the Complainant under the trade mark;
5. there has been no commercial or other relationship between the parties and the Complainant has not authorized the Respondent to use the trade mark or to register any domain name incorporating the trade mark. 5. Parties’ Contentions A. Complainant
The Complainant asserts trade mark rights in SMARTY HAD A PARTY and alleges that the disputed domain name is confusingly similar to the trade mark.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant alleges that the Respondent registered and is using the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
It is the responsibility of the Panel to consider whether the requirements of the Policy have been met, regardless of the fact that the Respondent failed to submit a reply. According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The 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.
Having considered the Complaint and the available evidence, the Panel finds the following: A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to the trade mark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trade mark rights. It is accepted that a trade mark registered with a national authority is evidence of trade mark rights for the purposes of the Policy1. The Complainant provides evidence of registration of the trade mark SMARTY HAD A PARTY and so satisfies the Panel of its trade mark rights.
The disputed domain name is confusingly similar to the Complainant’s trade mark. Arguably, it is identical. For the purposes of testing confusing similarity, the generic top-level domain (“gTLD”) “.com” can be ignored.2 The disputed domain name and the trade mark then differ only by the replacement of the word “smarty” by its phonetic equivalent, “smartie”.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trade mark.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has the burden to establish that the Respondent has no rights or legitimate interests in the disputed domain name. Nevertheless, it is well-settled that the Complainant need only make out a prima facie case, after which the onus shifts to the Respondent to rebut such prima facie case by demonstrating rights or legitimate interests.3
Notwithstanding the lack of a Response to the Complaint, paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The publicly available WhoIs database identifies the registrant as a proxy service provider which does not support any conclusion that the Respondent might be commonly known by the disputed domain name. The Panel considers the same to be true in relation to the Registrar-confirmed registrant, Telecom Tech Corp. There is no evidence that the Respondent has trademark rights in the disputed domain name, registered or not. The disputed domain name resolves to a website that carries links to a range of party, wedding and event goods and services which compete with the offerings from the Complainant. The Panel finds no basis for any rights or legitimate interests in the disputed domain name.
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and that the Respondent, in failing to reply, has not rebutted such prima facie case.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and so the Complainant has satisfied the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out circumstances which shall be evidence of the registration and use of a domain name in bad faith. They are:
“i. circumstances indicating that you 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 trademark 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 trademark 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 web site 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 web site or location or of a product or service on your web site or location.”
The Complainant does not present submissions which go towards the possible application of any of these scenarios. It rests on the claims that it has worldwide exclusivity to the trade mark and that the only rational explanation for the Respondent’s behaviour is that the disputed domain name was registered opportunistically.
The Panel finds that the Respondent’s actions fall squarely under paragraph 4(b)(iv) of the Policy. The Panel has already found the disputed domain name to be confusingly similar to the Complainant’s trade mark. The website corresponding with the disputed domain name is clearly of a commercial nature and for financial gain by way of click-through referral fees or otherwise. In terms of paragraph 4(b)(iv) of the Policy, the Panel finds it more likely than not that Respondent used the domain name to intentionally attract Internet users to a website by creating a likelihood of confusion with the Complainant’s trade mark for the purpose of commercial gain. Accordingly, the Complainant has satisfied the third and final limb of the Policy. 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 disputed domain name be transferred to the Complainant.
Debrett G. Lyons
Sole Panelist
Date: February 11, 2013
1 See State Farm Mutual Automobile Insurance Company v. Periasami Malain, NAF Claim No. 705262 (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, NAF Claim No. 174052 (finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
2 See Gardline Surveys Ltd v. Domain Finance Ltd., NAF Claim No. 153545 (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
3 See, Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Claim No. 741828; AOL LLC v. Jordan Gerberg, NAF Claim No. 780200.
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