Complainant is Forideas Pty Limited of Richmond, Victoria, Australia, represented by Sipara, United Kingdom of Great Britain and Northern Ireland.
Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States of America (“US”); Grenco Science of North Hollywood, California, US; and Anthony Barron of North Hollywood, California, US. 2. The Domain Names and Registrar
The disputed domain names , and (the “Disputed Domain Names”) are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 1, 2013. On August 2, 2013, the Center transmitted by email to GoD, LLC a request for registrar verification in connection with the disputed domain name. On August 5, 2013 and clarified on August 7, 2013, GoD, LLC 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 Complainant on August 7, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 8, 2013.
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 Respondent of the Complaint, and the proceedings commenced on August 9, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 29, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 30, 2013.
The Center appointed Ross Carson as the sole panelist in this matter on September 11, 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.
On September 17, 2013, a representative of Grenco Science forwarded a submission to the Center. On September 18, 2013 the Center acknowledged receipt of the submission to Grenco Sciences’ representative and forwarded the submission to the Panel. The Panel forthwith considered Grenco Sciences submission and rejected the submission for failing to establish “exceptional circumstances” warranting acceptance of the late filling of the submission as required by paragraphs 10(c) and 14 under the Rules. The Center advised the Parties of the Panel’s decision to reject the late filed submission on September 19, 2013. The material in the late filed submission is not part of the record for purposes of this decision. 4. Factual Background
Complainant is a corporation incorporated in Australia. Complainant is the proprietor of numerous registered trademarks for the brand MOVEMBER including in Australia in classes 35, 36, 41, 42 and 44 under number 1462968; New Zealand in classes 35, 36, 41, 42 and 44 under number 853334; and in the European Union in classes 35, 36, 41, 42 and 44 under number 1106394. Complainant is also the owner of a registered trademark for the word mark M MOVEMBER, United States registration number 3514669 registered October 14, 2008; the letter M is a stylized M. The United States registration is registered in relation to services in classes 35, 36, 41, 42 and 44.
Complainant is affiliated with and licenses its trade marks to registered charities around the world, raising awareness of men’s health issues such as prostate cancer, testicular cancer and depression. Complainant raises funds for charities concerned with men’s health Issues by encouraging men to grow a moustache for the whole month of November and raise money by being sponsored for doing so. Complainant hopes that by encouraging men to get involved with this challenge, they will help to educate men about the importance of getting annual check-ups, the awareness of any family history of cancer and about adopting a healthier lifestyle.
Since the start of the charity in Melbourne in 2003, Complainant has grown significantly and in 2012 was active in 21 countries, including formal campaigns in the United Kingdom, US, Canada, Australia, New Zealand, South Africa, Ireland, Finland, the Netherlands, Spain, Denmark, Norway, Belgium, the Czech Republic, Austria, France, Germany, Sweden, Switzerland, Hong Kong and Singapore. The Complainant also has supporters in Russia, United Arab Emirates, Hong Kong, Antarctica, Rio de Janeiro and India. In 2012 the “Movember” men’s health campaign raised over GBP 90.5 million.
Complainant was voted as one of the top 100 NGOs by The Global Journal in 2012. The journal ranks operation or advocacy focused non-profit organizations based on their impact, innovation and sustainability.
Complainant endorses “Movember” merchandise created by a range of third parties, including Links of London, Marshall Amplification, Kent Brushes, Toms Shoes and Lucky Seven. Links to these products appear on the Complainant's website. The third party merchandise is carefully selected to ensure that the third parties and their products are in alignment with the objectives of the charity.
The Disputed Domain Names were each registered on October 26, 2012.
Each of the disputed domain names resolves to the website “”. The Grenco Science website offers a Charity Series of products for sale including a personal vaporizer. The website also invites online donations, stating: “Grenco Science believes in giving back to our communities, click here to learn more about our current charity projects. Click to donate !” 5. Parties’ Contentions A. Complainant A.1. Identical or Confusingly Similar
Complainant states that it is the registered owner of Australian, New Zealand, European Union and US trademarks for the trademark MOVEMBER as set out in Section 4 immediately above.
Complainant submits the Disputed Domain Names , , and are confusingly similar to Complainant’s trademark MOVEMBER.
Complainant further submits that it is well established that where a domain name has been created by a respondent by adding a descriptive or generic word to a distinctive mark in which the complainant has rights, then such a domain is to be considered confusingly similar to the complainant's mark for the purposes of paragraph 4(a)(i) of the Policy (see section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition [“WIPO Overview 2.0”], e.g. Hachette Filipacchi Presse v. Vanilla Limited/Vanilla Inc/Domain Finance Ltd.,WIN,WIPO Case No. D2005-0587).
Complainant further states that in the present case, Respondent has appropriated Complainant’s entire trade mark, MOVEMBER, as the dominant element of each of the Disputed Domain Names. Moreover, appropriating another’s entire mark and adding descriptive or non-distinctive matter to it (i.e. the words “pen”, “gpen” or “vaporizer” are not sufficient to give rise to distinctiveness in their own right), and does not avoid likely confusion. See, Microsoft Corporation v. I. Holiday Co.,WIPO Case No. D2000-1493. As the Complainant’s MOVEMBER trade mark is the dominant and distinctive part of the Disputed Domain Names, the Disputed Domain Names are confusingly similar to Complainant’s MOVEMBER trademark. A.2. No Rights or Legitimate Interests in Respect of the Domain Names
Complainant states that paragraph 4(c) of the Policy provides that a respondent has a right or legitimate interest in a disputed domain name where:
(i) Before any notice to respondent of the dispute, respondent has made use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if respondent has acquired no trademark or service mark rights; or
(iii) 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.
Complainant submits that to the best of its knowledge and belief, Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. Respondent had not used, or made demonstrable preparations to use the Disputed Domain Names or a name corresponding to the Disputed Domain Names in connection with a bona fide offering of goods or services before any notice to Respondent of the dispute.
Complainant further submits that the Disputed Domain Names currently resolve to a website selling personal vaporizers and accessories for the same. Whilst this may indeed qualify as an offering of goods, it is submitted that such offering is not bona fide. Respondent has not been authorized by Complainant to offer such products under its trademark and it is clear that Respondent has chosen the Disputed Domain Names in an attempt to elicit an association with Complainant’s well-known MOVEMBER trade mark.
Complainant further submits that it is not aware of any evidence that Respondent has been commonly known by the Disputed Domain Names.
Complainant submits that Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish Complainant’s trade mark or service mark at issue. The presence of an online store, hosted by Respondent at the website associated with the Disputed Domain Names, selling personal vaporizers, clearly demonstrates that Respondent is using the Disputed Domain Names for commercial gain and is misleadingly diverting consumers to its website. Such use is not legitimate noncommercial or fair use (see Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415.
Complainant further submits that it is well established that, whilst the overall burden of proof rests with Complainant, this could result in the often impossible task of proving a negative. Therefore Complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests. Once such a prima face case is made, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Names. If Respondent fails to come forward with such appropriate allegations or evidence, a Complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy (see section 2.1 of the WIPO Overview, 2.0 and Croatia Airlines d d v. Modern Empire Internet Ltd,WIPO Case No. D2003-0455).
Complainant contacted the Respondent on May 31, 2013, setting out their concerns about the Disputed Domain Names. When no response was received, Complainant sent a further letter to Respondent on July 1, 2013. Respondent did not reply to either letter, and therefore Complainant is unaware of, and unable to respond to, any claims by Respondent to have any rights of legitimate interests in respect of the Disputed Domain Names. In the circumstances, Complainant respectfully submits that it has satisfied paragraph 4(a)(ii) of the Policy, in that a prima facie case of no rights or legitimate interests has been made out, and the burden having shifted has not been discharged by Respondent. A.3. Registration and Use in Bad Faith Registration in Bad Faith
Complainant submits that its trade mark MOVEMBER is distinctive and well-known internationally. It appears from the website of Respondent that they are based in the US. The reputation of MOVEMBER is such that Respondent in all likelihood knew of the existence of the Complainant’s trade marks at the time the Disputed Domain Name were registered. Respondent’s knowledge of Complainant is evidenced by the website content associated with the Disputed Domain Names, which each include so-called “limited edition” products for sale under the name "G Stache" and which carry a prominent moustache design (which is associated with the fund-raising activities of Complainant), and where a percentage of the cost would supposedly go to the Complainant's charity.
Complainant further submits that the incorporation of a well-known trade mark in disputed domain names by a registrant having no plausible explanation for doing so may be, in and of itself, an indication of bad faith (see Veuve Clicquot Ponsardin, Moison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087; and Microsoft Corporation v. Montrose Corporation, WIPO Case No. D2000-1568). In this case, there is no plausible reason why Respondent needed to incorporate Complainant’s trade mark in the Disputed Domain Names in order to offer products for sale where a portion of the proceeds would go to the Complainant’s charity. Used In Bad Faith
Complainant submits that it is concerned that the use of the Disputed Domain Names by Respondent is an attempt to attract Internet users to its website to encourage them to purchase goods by creating a likelihood of confusion with the Complainant’s mark and suggesting that the Complainant endorses Respondent’s website and the products sold on the Respondent's website.
Complainant further submits that Respondent has attracted viewers by creating a likelihood of confusion within the meaning of paragraph 4(b)(iv) of the Policy, constituting registration and use in bad faith (see Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273). The likelihood of confusion is accentuated by Respondent’s use of a moustache on some of the products and by suggesting that money from each purchase will be donated to Complainant’s charity. These give the misleading impression that the website is associated with or endorsed by Complainant.
The Complainant states that it invited Respondent to explain how the use of the Disputed Domain Names had led to Respondent supporting the Complainant’s charity, but Respondent did not respond.
As described above, Respondent has been selling personal vaporizers on the website which resolves from the Disputed Domain Names. Complainant submits that it is particularly concerned that there is a likelihood that the public would believe that Respondent’s products are in some way endorsed by the Complainant’s charity. The products sold by Respondent are well-known as being a method of ingesting illegal drugs and Complainant is particularly concerned by the possibility that Complainant will be associated with such products through the use of the Disputed Domain Names. Attached as Annex 12 to the Complaint is a selection of screenshots from Respondent’s twitter feed where people mention using Respondent’s products to take illegal drugs. Complainant’s charity is committed to raising awareness of issues relating to men’s health and the possible association with products such as those of Respondent is very worrying to Complainant.
Complainant contacted Respondent on May 31, 2013 and received no reply. Complainant then sent a second email to Respondent on July 1, 2013 and again received no reply. Respondent has failed to explain to Complainant its reasons for registering and using the Disputed Domain Names and Complainant therefore respectfully submits that the Disputed Domain Names were registered and are being used in bad faith under paragraph 4(b)(iv) of the Policy. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain names should be cancelled or transferred:
(i) the Disputed Domain Names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
(iii) the Disputed Domain Names have been registered and are being used in bad faith.
The fact that Respondent did not submit a formal Response does not automatically result in a decision in favor of Complainant. The failure of Respondent to file a formal Response results in the Panel drawing certain inferences from Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following there from in the Complaint as true. See Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403. A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, Complainant must establish rights in a trademark and secondly that the Disputed Domain Names are identical to or confusingly similar to the trademark in which Complainant has rights.
Complainant is the owner of trademark registrations for the trademark MOVEMBER in Australia, New Zealand, the European Union and the US as set out in Section 4 immediately above. Complainant’s MOVEMBER trademarks were registered and widely used years before Respondent registered the Disputed Domain Names on October 26, 2012.
Each of the Disputed Domain Names , and incorporate Complainant’s MOVEMBER trademark as the distinctive element of the Disputed Domain Names.
As seen on the Grenco Sciences webpage to which the Disputed Domain Name resolves, the disputed domain name is comprised of Complainant’s trademark MOVEMBER and the descriptive term “pen” which Respondent uses to describe the shape of a vaporizer sold in association with the Disputed Domain Name .
As seen on the Grenco Science webpage to which the Disputed Domain Name resolves, Respondent Grenco Science uses the letter “G” as a corporate logo. The Disputed Domain Name is comprised of Complainant’s trademark MOVEMBER, the letter “g” representing Respondent’s logo “G” and the descriptive term “pen” describing the shape of the vaporizer sold by Respondent Grenco Science in association with the Disputed Domain Name .
As seen on the Grenco Science webpage to which the Disputed Domain Name resolves, the Disputed Domain Name is used to describe “vaporizers “offered for sale by Respondent Grenco Science in association with the Disputed Domain Name .
Respondent has appropriated Complainant’s entire trade mark, MOVEMBER, as the dominant element of each of the disputed domain names. Moreover, appropriating another’s entire mark and adding descriptive or non-distinctive matter to it (i.e. the words “pen”, “gpen” or “vaporizer” are not sufficient to give rise to distinctiveness in their own right), and does not avoid likely confusion. See Microsoft Corporation v. .I. Holiday Co, WIPO Case No. D2000-1493..
It is well established by prior UDRP panels that where a domain name has been created by a respondent by adding a descriptive or generic word to a distinctive mark in which the complainant has rights, then such a domain is to be considered confusingly similar to complainant's mark for the purposes of paragraph 4(a)(i) of the Policy (see section 1.9 of the WIPO Overview 2.0; e.g. Hachette Filipacchi Presse v. Vanilla Limited/Vanilla Inc/Domain Finance Ltd., WIN,WIPO Case No. D2005-0587)
The inclusion of the gTLD “.com” in the Disputed Domain Names does not affect a finding of confusing similarity. UDRP panels have repeatedly held that the specific top level of the domain name such as “.org”, “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525 holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name; and Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429 finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
Respondent’s use of the descriptive term “pen”, the letter “g”, the generic word “vaporizer” and the gTLD “.com” does not sufficiently distinguish the Disputed Domain Names from Complainant’s registered trademark MOVEMBER.
The Panel finds that Complainant has established rights in its trademark MOVEMBER and also proven that the Disputed Domain Names , , and are each confusingly similar to Complainant’s registered trademark MOVEMBER. 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 Disputed Domain Names.
Respondent is not affiliated with Complainant and has never been authorized by Complainant to use Complainant’s MOVEMBER trademark Complainant has not permitted Respondent to register or use any domain name incorporating its MOVEMBER trademark. Complainant has no business or other relationship with Respondent.
Complainant has been using its MOVEMBER trademark through authorized and regulated licensees for ten years. Complainant is affiliated with and licenses its trade marks to registered charities around the world, raising awareness of men's health issues such as prostate cancer, testicular cancer and depression. Complainant raises funds for charities concerned with men’s health Issues by encouraging men to grow a moustache for the whole month of November and raise money by being sponsored for doing so. Complainant hopes that by encouraging men to get involved with this challenge, they will help to educate men about the importance of getting annual check-ups, the awareness of any family history of cancer and about adopting a healthier lifestyle.
Since the start of the charity in Melbourne in 2003, Complainant has grown significantly and in 2012 was active in 21 countries, including formal campaigns in the United Kingdom, US, Canada, Australia, New Zealand, South Africa, Ireland, Finland, the Netherlands, Spain, Denmark, Norway, Belgium, the Czech Republic, Austria, France, Germany, Sweden, Switzerland, Hong Kong and Singapore. Complainant also has supporters in Russia, United Arab Emirates, Hong Kong, Antarctica, Rio de Janeiro and India. In 2012 the MOVEMBER men’s health campaign raised over GBP 90.5 million.
Respondent appears to have registered or acquired the Disputed Domain Names on October 26, 2012.
There is no evidence that Respondent has ever been known by or used the trademark MOVEMBER in association with its own goods or services.
Respondent has used the Disputed Domain Names to resolves to a website operated by Respondent Grenco Science under the domain name . The Grenco Science website offers a Charity Series of products for sale including a personal vaporizer. The website also invites online donations, stating: “Grenco Science believes in giving back to our communities, click here to learn more about our current charity projects. Click to donate !”
Another vaporizer offered on Respondent’s website bearing Respondent’s corporate logo “G” and the trademark GPEN. While Respondent’s offer to sell goods may indeed qualify as an offering of goods, such offering is not bona fide. Respondent has not been authorized by Complainant to offer such products in association with a domain name incorporating its MOVEMBER trademark and it is clear that Respondent has chosen the disputed domain names in an attempt to elicit an association with Complainant’s well-known MOVEMBER trade mark. Furthermore the goods offered on Respondent’s website associated with Complainant’s MOVEMBER trademark have not been approved by Complainant.
Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Names, without intent for commercial gain to misleadingly divert consumers. The presence of an online store, hosted by Respondent at the website associated with the Disputed Domain Names, selling personal vaporizers, clearly demonstrates that Respondent is using the Disputed Domain Names for commercial gain and is misleadingly diverting consumers to its website. Such use is not legitimate noncommercial or fair use (see Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415).
Previous UDRP panels have stated that “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the [holder of the mark]”. See, Drexel University v. David Brouda,WIPO Case No. D2001-0067.
The Panel finds that Complainant has made a prima facie case that Respondent has no rights or legitimate interests in the Disputed Domain Names.
It is difficult for a complainant to prove the negative that a respondent does not have any rights or legitimate interests in a domain name. Previous panel decisions under the UDRP have found it sufficient for a complainant to make a prima facie case showing that a respondent does not have any rights or legitimate interests in a domain name or domain names. Once this showing is made, the burden of production shifts to the respondent to demonstrate its rights or legitimate interests in the domain name. See Deutsche Telekom AG v. Britt Cordon,WIPO Case No. D2004-0487 where the panel stated “A number of WIPO cases have established that, by virtue of paragraph 4(c) of the Policy, once a Complainant establishes a prima facie case that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent.” See also section 2.1 of the WIPO Overview, 2.0 and Croatia Airlines d d v. Modern Empire Internet Ltd,WIPO Case No. D2003-0455. In this case, Respondent was given the opportunity by way of Response to demonstrate any rights or legitimate interests in the Disputed Domain Names pursuant to paragraph 4(c) of the Policy. However, Respondent did not file a Response nor avail itself of the benefits of paragraph 4(c) of the Policy.
Under the circumstances, the Panel finds that Complainant has proven on a balance of probabilities that Respondent does not have any rights or legitimate interests in the Disputed Domain Names. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(a)(iii) of the Policy, Complainant must prove that the Disputed Domain Names have been registered and are being used in bad faith. C.1. Registered in Bad Faith
Complainant’s trademark MOVEMBER has been in use since 2003 in relation to raising awareness of men’s health issues such as prostate cancer, testicular cancer and depression. Complainant raises funds for charities concerned with men's health Issues by encouraging men to grow a moustache for the whole month of November and raise money by being sponsored for doing so. Complainant hopes that by encouraging men to get involved with this challenge, they will help to educate men about the importance of getting annual check-ups, the awareness of any family history of cancer and about adopting a healthier lifestyle.
Since the start of the charity in Melbourne in 2003, use of Complainant’s trademark has grown significantly and in 2012 was active in 21 countries, including formal campaigns in the United Kingdom, US, Canada, Australia, New Zealand, South Africa, Ireland, Finland, the Netherlands, Spain, Denmark, Norway, Belgium, the Czech Republic, Austria, France, Germany, Sweden, Switzerland, Hong Kong and Singapore. Complainant also has supporters in Russia, United Arab Emirates, Hong Kong, Antarctica, Rio de Janeiro and India. In 2012 the MOVEMBER men’s health campaign raised over GBP90.5 million.
Complainant’s United States Trademark Registration No. 3514689 for the trademark M MOVEMBER was registered on October 14, 2008 in relation to goods and services in IC 16, 25, 35, 36, and 41.
Respondent registered the disputed domain names on October 26, 2012.
The Disputed Domain Names resolve to Respondent’s “” website. Respondent’s “” website includes advertisements for G Stache Limited Edition I/ Charitable Contribution personal vaporizers featuring a fanciful mustache and Respondent’ “G” logo. The display of Respondent’s “Mustache” products is accompanied by the statement: “Grenco Science announces its participation in the annual Moustache Movember campaign, a global nonprofit organization dedicated to raising vital funds and awareness for prostrate and testicular cancer initiatives. With each purchase of a G Stache “Grenco Science” donates daily to the Movember organization 30% of net proceeds”.
Respondent was not authorized by Complainant to use its MOVEMBER trademark and associated mustache theme in association with any goods or services.
The fact that Respondent registered the three Disputed Domain Names in which the distinctive portion of the same was Complainant’s well-known MOVEMBER trademark and the Disputed Domain Names resolve to Respondent’s “” website, which advertises Respondent’s vaporizers, t-shirts and advertises that it is associated with Complainant’s projects to raise funds and promote knowledge concerning prostrate and testicular cancer leads to a strong inference that Respondent had Complainant’s MOVEMBER trademark in mind when registering the Disputed Domain Names on October 26, 2012.
In view of the above findings, the Panel concludes that Respondent registered the Disputed Domain Names in bad faith. C.2. Used in Bad Faith
Under paragraph 4(b)(iv) of the Policy, inter alia, the following circumstances shall be evidence of use and registration of a domain name in bad faith: by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s 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 its website or location or of a product or service on its website or location.
It appears from the content of Respondent’s “” website that they are based in the US. The reputation of MOVEMBER is such that Respondent in all likelihood knew of the existence of Complainant’s MOVEMBER trademark at the time the Disputed Domain Names were registered. Respondent’s knowledge of the Complainant is evidenced by the content of the “” website to which the Disputed Domain Names resolve. The “” website advertises so-called “limited edition” products for sale under the name “G Stache” and which carry a prominent moustache design, which is associated with the fund-raising activities of Complainant, where a percentage of the cost would supposedly go to Complainant’s charity. The representation of a mustache is also associated with other goods offered for sale on Respondent’s “” website. The above unauthorized use of the Disputed Domain Names by Respondent is an attempt to attract Internet users to its website to encourage them to purchase Respondent’s goods by creating a likelihood of confusion with the Complainant’s MOVEMBER trademark, falsely suggesting that Complainant endorses Respondent’s website and the products sold on Respondent's website.
Respondent has attracted viewers by creating a likelihood of confusion with Complainant’s MOVEMBER trademark within the meaning of paragraph 4(b)(iv) of the Policy, constituting registration and use of the disputed domain names in bad faith. See Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273. The likelihood of confusion is accentuated by Respondent’s use of a moustache on some of the products and by suggesting that money from each purchase will be donated to Complainant’s charity. These facts give the misleading impression that the website associated with the Disputed Domain Names is associated with or endorsed by Complainant.
Complainant's MOVEMBER trade mark is distinctive and well known internationally. All three Disputed Domain Names , and incorporate Complainant’s MOVEMBER trademark as the distinctive element. The incorporation of a well-known trade mark into a domain name by a registrant having no plausible explanation for doing so may be, in and of itself, an indication of bad faith (see Veuve Clicquot Ponsardin, Moison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087; Microsoft Corporation v. Montrose Corporation, WIPO Case No. D2000-1568). In this case, there is no plausible reason why Respondent needed to incorporate Complainant’s MOVEMBER trademark in the Disputed Domain Names, without Complainant’s authorization, in order to offer products for sale where only a portion of the proceeds would supposedly go to Complainant’s charity.
The Panel finds that Complainant has proven, on a balance of probabilities, that Respondent uses the Disputed Domain Names in bad faith within the meaning of paragraph 4(b)(iv) of the Policy, and that the Complaint satisfies the requirement under paragraph 4(a)(iii) of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Names , and be transferred to Complainant.
Ross Carson
Sole Panelist
Date: September 24, 2013
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