Complainant is Eveready Battery Company, Inc. of St. Louis, Missouri, United States of America (“USA”), represented by Bryan Cave, LLP, USA.
Respondent is Jared Burnup of Schofield, Wisconsin, USA. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 10, 2013. On June 11, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 11, 2013, 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 June 17, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 7, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 8, 2013.
The Center appointed Jeffrey D. Steinhardt as sole panelist in this matter on July 15, 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
Complainant owns abundant worldwide registrations for the SCHICK trademark including, for example, United States Trademark Registration No. 788,722 in International Class 8, registered April 27, 1965 with a first use in commerce dating to June 17, 1926. Complainant also owns a variety of websites that include in their domain names the SCHICK trademark.
The disputed domain name was registered on March 6, 2013 and routes to a website with sponsored listings. The website prominently states that the domain name is for sale, and displays links to Complainant’s major competitors in the consumer razor blade business, along with links promoting discount coupons on competitors’ products.1 5. Parties’ Contentions A. Complainant
Complainant avers that it acquired the SCHICK brand from Pfizer, Inc. in 2003. Complainant avers that it markets and sells a range of razors and related shaving products in over sixty-eight countries around the world under the famous SCHICK brand. Complainant avers that it enjoys one of the top market shares in the US razor market, and that it is second in global razor sales.
In its legal allegations under the Policy, Complainant contends that (1) the disputed domain name is identical to Complainant’s trademark, (2) that Respondent has no rights or legitimate interests in the disputed domain name, and (3) that Respondent registered and uses the disputed domain name in bad faith.
The Complaint states that Complainant’s legal counsel sent Respondent a notice of infringement on April 8, 2013, requesting transfer of the disputed domain name. Allegedly there was no reply and the website to which the disputed domain name routes remained active following the letter notification.
On this basis, Complainant seeks transfer of the disputed domain name, or, in the alternative, cancellation. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Notification of Proceedings to Respondent
The Policy and the Rules establish procedures to give respondents notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules).
The Center sent to Respondent by courier notification of these proceedings. The Center used the address from the Registrar’s verification, but the notification was not deliverable to that address. After attempting to contact Respondent to get an updated address, the courier company stated that the phone number provided was also incorrect.
The Center also sent email and fax notifications to contacts provided by the Registrar, but the notifications returned delivery errors.
The Panel is satisfied that by sending communications to the contacts verified by the Registrar, based on those provided by Respondent and listed in the WhoIs records, the Center has exercised care and has fulfilled its responsibility under paragraph 2(a) of the Rules to employ all reasonably available means to serve actual notice of the Complaint upon Respondent. B. Substantive Rules
The Panel is required to render its Decision 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. Rules, paragraph 15(a). Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) 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.
Complainant must establish these elements even if Respondent does not submit a response. E.g., The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064. In the absence of a response, the Panel may also accept as true the reasonable factual allegations in the Complaint. E.g., ThyssenKrupp USA, Inc. v. Richard Giardini,WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009). C. Identical or Confusingly Similar
Complainant alleges that the disputed domain name is identical to its trademarks. The Panel instead finds that the disputed domain name is confusingly similar to a trademark in which Complainant has rights. Therefore, the Panel rules that the Complaint fulfills the first element of paragraph 4(a) of the Policy, as elaborated below.
UDRP panels generally disregard the generic Top Level Domain (gTLD) suffix in determining whether a disputed domain name is identical or similar to a complainant’s marks. See, e.g., HUK-COBURG haftpflicht-Unterstützungs-Kasse kraftfahrender Beamter Deutschlands A.G. v. DOMIBOT (HUK-COBURG-COM-DOM), WIPO Case No. D2006-0439; VAT Holding AG v. V,WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc.,WIPO Case No. D2006-1315.
Without the gTLD suffix, the disputed domain name consists of the combination of Complainant’s SCHICK trademark with the added phrase “razorcoupons.” The Panel concludes that the addition of the descriptive words “razor” and “coupons” does not negate the confusion created by Respondent’s complete inclusion of the SCHICK trademark in the disputed domain name. E.g., Sanofi-aventis, Sanofi-Aventis Deutschland GmbH v. Andrey Mitrofanov,WIPO Case No. D2007-1772; Giata Gesellschaft für die Entwicklung und Vermarktung interaktiver Tourismusanwendungen mbH v. Keyword Marketing, Inc.,WIPO Case No. D2006-1137; Hoffmann-La Roche Inc. v. Aneko Bohner,WIPO Case No. D2006-0629.
In fact, given that Respondent uses its website to promote razor blade products, including razors from Complainant’s competitors, the addition of the term “razor” to Complainant’s trademark in the disputed domain name simply increases the confusion that Internet users would experience. Cf. ACCOR, Société Anonyme à Directoire et Conseil de surveillance v. Tigertail Partners,WIPO Case No. D2002-0625 (“[c]onfusion is only heightened when the generic word added by Respondent is descriptive of the Complainant’s goods or services marketed in relation to the trademark….”). D. Rights or Legitimate Interests
The Panel also concludes that Respondent has no rights or legitimate interests in the disputed domain name.
The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in a domain name. The list includes: (1) using the domain name in connection with a bona fide offering of goods or services; (2) being commonly known by the disputed domain name; or (3) making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Policy, paragraphs 4(c)(i)-(iii).
A complainant must show a prima facie case that a respondent lacks rights or legitimate interests. E.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. The absence of rights or legitimate interests is generally established if a complainant makes out a prima facie case and the respondent enters no response. Id., (citing De Agostini S.p.A. v. Marco Cialone,WIPO Case No. DTV2002-0005).
In the absence of a response, the Panel accepts as true Complainant’s allegations that Respondent has no authorization to use the SCHICK mark in its domain name and that Respondent is not commonly known by the disputed domain name.
Moreover, the record establishes that Respondent’s website contains sponsored link advertising, which precludes a finding of a noncommercial interest or fair use of the disputed domain name. See, e.g., The Bear Stearns Companies Inc. v. Darryl Pope, WIPO Case No. D2007-0593 (“[t]he Panel is free to infer that Respondent is likely receiving some pecuniary benefit . . . in consideration of directing traffic to that site” (citing COMSAT Corporation v. Ronald Isaacs, WIPO Case No. D2004-1082)). See Fat Face Holdings Ltd v. Belize Domain WHOIS Service Lt, WIPO Case No. D2007-0626; Sanofi-aventis v. Montanya Ltd, WIPO Case No. D2006-1079.
The Panel therefore concludes that Respondent’s use of the disputed domain name demonstrates Respondent’s lack of a legitimate noncommercial interest in, or fair use of, the disputed domain name. See, e.g., Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784.
The Panel agrees with Complainant that Respondent’s use of the disputed domain name evinces a “clear intent to confuse Internet users and improperly direct traffic and commercial sales to competing websites, and away from Complainant.” (citing Microsoft Corporation v. Zerbo,WIPO Case No. D2005-0644).
Filing no response, Respondent has not invoked any of the circumstances of paragraph 4(c) of the Policy to support the existence of its “rights or legitimate interests” in the disputed domain name.
Accordingly, the Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied. E. Registered and Used in Bad Faith
The Panel finds that the third element of paragraph 4(a) of the Policy, bad faith registration and bad faith use, is also established.
Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith registration and use. Policy, paragraph 4(b)(iv). See, e.g., L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623. UDRP panels may draw inferences about bad faith registration or use in light of the circumstances, including the failure to reply to a complaint and the failure to correct erroneous or outdated contact details with the registrar. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
Was Respondent aware of Complainant’s trademark and product name before Respondent’s registration of the disputed domain name?
The record does not indicate directly, but the Panel concludes that Respondent was aware, based on the many years and widespread usage of the SCHICK mark, which predates registration of the disputed domain name by roughly 87 years. Moreover, the content on the website strongly supports the conclusion that Respondent registered the disputed domain name intending to trade on the value of Complainant’s trademark in the field of razors. Since the Panel finds that Respondent deliberately attempted to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with Complainant’s mark, registration in bad faith is established. See, e.g., Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 (the disputed domain name “so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”).
Further, since Respondent’s website also promotes sales of razors, the disputed domain name is being used for direct competition with Complainant. This is often viewed as evidence of use in bad faith. See, e.g., Pfizer Inc. v. jg a/k/a Josh Green, supra (citing Google, Inc. v. and Jimmy Siavesh Behain,WIPO Case No. D2000-1240; Casio Keisanki Kabushiki Kaisha (Casio Computer Co., Ltd.) v. Jongchan Kim,WIPO Case No. D2003-0400; Downstream Technologies, LLC v. Bartels System GmbH,WIPO Case No. D2003-0088).
Finally, the Panel finds under the circumstances that Respondent’s choice to refrain from submitting a response to these proceedings is additional evidence of use in bad faith, Telstra Corporation Limited v. Nuclear Marshmallows, supra.2
The Panel consequently concludes that the disputed domain name was registered and is being used in bad faith under paragraph 4(b)(iv) of the Policy.
In the Panel’s view, there is ample evidence of both (1) Respondent’s lack of rights or legitimate interests in the disputed domain name, and (2) bad faith registration and use. The Panel need not, therefore, address several of the Complaint’s allegations, including that “Respondent adopted and continues to use [the disputed domain name] . . . for the illegal and improper commercial purpose[. . .] of . . . attempting to sell the Domain Name to Complainant for valuable consideration well in excess of its documented out-of-pocket costs.”3
Similarly, the Complaint alleges that a reverse WhoIs lookup revealed that Respondent has registered hundreds of domain names that contain and prey upon other famous trademarks. However, since the Panel’s attention has not been directed to any other UDRP or court proceedings involving Respondent, and bad faith use and registration have already been found on other grounds, the Panel refrains in this circumstance to infer bad faith under paragraph 4(b)(i) and (ii) 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 Complainant.
Jeffrey D. Steinhardt
Sole Panelist
Date: July 22, 2013
1 The Panel has undertaken limited research by visiting the web pages to which the disputed domain name routes. See paragraph 4.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). The webpages display images that are consistent with those submitted as exhibits to the Complaint.
2 Conceivably, Respondent may not have received notification of these proceedings. If so, it was due to Respondent’s failure to maintain accurate contact information, as required in the registration agreement. That failure by Respondent would constitute further evidence of bad faith. E.g., Ladbroke Group Plc v. Sonoma International LDC,WIPO Case No. D2002-0131; Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393 (citing The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340).
3 Basing the Panel’s decision on this inference is unnecessary under the facts presented. In any case, the Complaint contains little evidence in support of this allegation, other than pointing to the general offering for sale of the disputed domain name through a banner on the website.
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