The Complainant is GmbH of Aschheim, Germany, represented by KLAKA Rechtsanwälte, Germany.
The Complainant has named two Respondents: PrivacyP and ICS INC. PrivacyP is a privacy domain name registration service. The Registrar has confirmed that the registered owner of the disputed domain name is ICS INC. of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland. Accordingly, the Panel will treat ICS INC. as the sole Respondent. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 8, 2013 concerning two domain names. On May 8, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 9, 2013, the Registrar transmitted by email to the Center its verification response for the domain name confirming that Domain Admin Private Registrations Aktien Gesellschaft is listed as the registrant and providing the contact details. On May 15, 2013, the Registrar transmitted by email to the Center its verification response for the disputed domain name confirming that the Respondent is listed as the registrant and providing the contact details. The Center sent an email communication to the parties on May 16, 2013 regarding the multiple underlying registrants of the two domain names filed in the initial Complaint. The Complainant filed an amendment to their initial Complaint by removing one of the domain names from the initial Complaint.
The Center verified that the Complaint together with the amendment to 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 May 24, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 13, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 14, 2013.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on June 26, 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 Complainant is the owner of the domain name , registered on October 11, 2005 (Annex 9 to the Complaint) through which it offers all kinds of luxury goods in its online shop (Annex 10 to the Complaint) since March 2006 (Annex 11 to the Complaint).
It is also the owner of a trademark with an International Registration No. 914889, registered on October 5, 2006 for MYTHERESA.COM to cover retail services related to clothing in Class 35, granted in Australia, China, the European Union, Japan, Singapore, and the United States (Annex 6 to the Complaint). The Complainant is also the owner of a trademark with an International Registration No. 1054329, registered on August 25, 2010 for MYTHERESA in Classes 25, 35 and 38, granted in the European Union and the United States (Annex 7 to the Complaint).
The disputed domain name was registered on March 5, 2012 (Annex 2 to the Complaint) and the website relating to it displays links to other luxury related websites (Annex 13 to the Complaint) 5. Parties’ Contentions A. Complainant
The Complainant asserts that the disputed domain name is confusingly similar to its domain name , registered on October 11, 2005 (Annex 9 to the Complaint) through which it offers all kinds of luxury goods in its online shop (Annex 10 to the Complaint) since March 2006 (Annex 11 to the Complaint), as well as to its trademarks (International Trademark Registrations No. 914889 for MYTHERESA.COM and No. 1054329 for MYTHERESA - Annexes 6 and 7 to the Complaint) and corporate name GmbH (registered on January 29, 2001 - Annex 8 to the Complaint).
In the Complainant’s view this is a clear case of typosquatting in which the only difference between its mark and the disputed domain name is the use of an “A” instead of a “Y”, which would not be sufficient to distinguish one from the other. Also, the prefix “ma” is the French translation of the English “my”.
Furthermore, the Complainant states that the Respondent has no rights or legitimate interest in respect of the disputed domain name given that:
(i) the Complainant has not found that the Respondent holds any registered trademark or trade name or even a personal name corresponding to the disputed domain name and the Complainant has not found anything that would suggest that the Respondent is or has been using the disputed domain name in any other way that would give it any rights or legitimate interests in the disputed domain name;
(ii) no license or authorization has been given by it to the Respondent to use the designation “”;
(iii) the Respondent is using the disputed domain name to generate traffic to sites with sponsored links related to fashion. Such use is misleading Internet users for commercial gain only by profiting from the confusing similarity between the disputed domain name and the Complainant’s mark, and
(iv) the use of a “Privacy Protection” service corroborates the absence of rights or legitimate interests in the disputed domain name.
As to the bad faith element in the registration and use of the disputed domain name, the Complainant concludes that such can be found in view of the following circumstances:
(i) the Respondent is using disputed domain name to generate traffic to websites with sponsored links which are all related to the Complainant’s business, i.e. clothing and fashion (Annex 13 to the Complaint);
(ii) the Respondent acts intentionally or at least with willful blindness given that it must have been aware of the Complainant’s rights in the domain name and trademark MYTHERESA.COM which have been widely used in the fashion industry in relation to online retail services; and
(iii) the Respondent has engaged in a pattern of bad faith conduct as can be shown by the 28 UDRP cases in which it has been named respondent (Annex 15 to the Complaint) only in the years 2012 and 2013. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(i) the disputed domain name is identical or confusingly similar to a trademark 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.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain name transferred to it, according to paragraph 4(a) of the Policy.
In accordance with paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide based upon the Complaint. A. Identical or Confusingly Similar
The Complainant has established its rights in the MYTHERESA.COM and MYTHERESA trademarks according to the international registrations owned by it (No. 914889, registered on October 5, 2006 in Class 35, granted in Australia, China, the European Union, Japan, Singapore, and the United States and No. 1054329, registered on August 25, 2010 in Classes 25, 35 and 38, granted in the European Union and the United States - Annexes 6 and 7 to the Complaint).
In this Panel’s view, the substitution of the letter “Y” for the letter “A” in the disputed domain name is not sufficient to distinguish the disputed domain name from the Complainant’s mark, especially in view of the fact that the prefix “ma” is the French translation of the English “my”, as the Complainant rightly pointed out.
For the reasons above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate the Respondent’s rights to or legitimate interests in the disputed domain name. These circumstances are:
(i) before any notice of the dispute, the Respondent’s 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) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, in spite of not having acquired trademark or service mark rights; or
(iii) the Respondent is 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 Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules (see e.g. Banco Bradesco S/A v. B Private Registrant, A Happy DreamHost Customer,WIPO Case No. D2010-2108). Nevertheless, the burden of proof is still on the Complainant to make a prima facie case against the Respondent.
In that sense, the Complainant indeed states that no authorization, license, permission or consent was granted for the use of “” in the disputed domain name.
Also, the absence of any indication that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name, or any possible link between the Respondent and the disputed domain name, that could be inferred from the details known of the Respondent or the webpage relating to the disputed domain name, further demonstrate the absence of a right or legitimate interest in the disputed domain name.
Indeed, according to the print-outs of the website the disputed domain name resolves to (Annex 13 to the Complaint) the Respondent is presently using the disputed domain to generate traffic to sites with sponsored links related to fashion. Such use can indeed mislead Internet users for commercial gain by profiting from the confusing similarity between the disputed domain name and the Complainant’s mark. The Panel finds that such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in the use of a domain name, with an intentional attempt to attract, for commercial gain, Internet users to the website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
In this case, the use of the disputed domain name in connection with a webpage containing sponsored links related to fashion can indeed mislead Internet users for commercial gain by profiting from the confusing similarity between the disputed domain name and the Complainant’s mark (Annex 13 to the Complaint).
Also, the fact that the Respondent has been named respondent in 28 UDRP cases in the years 2012 and 2013 having faced transfer or cancellation decisions in all of them (Annex 15 to the Complaint) clearly constitutes a pattern of bad faith conduct in this Panel’s point of view.
Lastly, the Respondent’s use of a “Privacy Protection” service and the provision of seemingly false addresses and telephone numbers in its WhoIs details further corroborate the finding of bad faith in the Respondent’s conduct.
For the reasons stated above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain name pursuant to paragraph 4(b)(iv) 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.
Wilson Pinheiro Jabur
Sole Panelist
Date: July 10, 2013
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