The Complainant is Mister Smith Entertainment Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Hofstetter, Schurack & Partner, Germany.
The Respondent is Mr. Smith BV of Doorn, Netherlands, represented internally. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 4, 2013. On October 4, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 4, 2013, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on October 9, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 29, 2013. The Response was filed with the Center on October 22, 2013.
The Center appointed William R. Towns as the sole panelist in this matter on November 5, 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, headquartered in London, United Kingdom, is a provider of global film financing, licensing, distribution, and related entertainment products and services. Incorporated in England and Wales on April 11, 2012, the Complainant is the owner of a Community Trademark for MISTER SMITH ENTERTAINMENT (Reg. 010829968), which was applied for on April 23, 2012 and registered on September 19, 2012.1 The Complainant also registered the domain name on April 20, 2012, and uses this domain name with a commercial website providing information about the Complainant and its products and services. The Complainant through its legal counsel issued a formal demand letter to the Respondent on September 16, 2013, to which no reply was received.
The Respondent is located in the Netherlands. The Respondent offers modular entertainment systems for yachts and the hospitality market. The Respondent registered the disputed domain name on October 21, 2012, and currently uses the disputed domain name with its website. The Respondent registered Mr. Smith BV as a Dutch private limited liability company on January 7, 2013. The Respondent applied to register the design plus word mark MR.SMITH ENTERTAINMENT SYSTEMS with the Benelux Office for Intellectual Property (BOIP) on October 10, 2013. There is no indication in the record that the Respondent’s applied-for mark has obtained registration as a Benelux mark. 5. Parties’ Contentions A. Complainant
The Complainant submits that the disputed domain name is confusingly similar to its company name and trademark as the distinctive element of the disputed domain name is nearly identical with “Mister Smith Entertainment”. According to the Complainant, the Respondent has no trademark rights or prior company rights in “Mister Smith Entertainment”, is not associated in any manner with the Complainant, and is not an authorized dealer, distributer, or licensee of the Complainant. The Complainant further contends that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services and is not otherwise making a legitimate noncommercial or fair use of the disputed domain name.
The Complainant maintains that the Respondent registered and is using the disputed domain name in bad faith. The Complainant observes that the Respondent registered the disputed domain name well after the Complainant registered and began using the domain name , and within months following the Complainant’s registration of its MISTER SMITH ENTERTAINMENT mark. The Complainant concludes that the Respondent must have been well aware of the Complainant’s rights, and that the Respondent is intentionally attempting to attract for commercial gain Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The Complainant notes that the Respondent did not register “Mr. Smith BV” as its corporate or trading name until January 2013. B. Respondent
The Respondent explains that it offers specially designed multimedia entertainment systems for the yacht and hospitality market, that its registered company name is Mr. Smith BV, and that it registered the disputed domain name in order to promote its goods and services over the Internet under its company name. The Respondent submits that prior to registering the disputed domain name it “thoroughly checked” for prior brand registrations on the BOIP search engine, which searches both Benelux and Community trademarks, and found no prior registrations for “Mr. Smith Entertainment.” The Respondent further represents that it has registered MR. SMITH ENTERTAINMENT SYSTEMS as a Benelux mark. The Respondent submits that it uses the disputed domain name to promote its products and solutions, which the Respondent maintains does not conflict with the Complainant’s use of its mark, and that its use of the disputed domain name accordingly is not in violation of the Policy. 6. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(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 with respect to the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Cancellation or transfer of the disputed domain name is the sole remedies provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations. Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar and virtually identical to the Complainant’s mark, in which the Complainant has established rights through registration and use. In considering this issue, the first element of the Policy is essentially a standing requirement.2 The threshold inquiry under the first element of the Policy is largely framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar. In this case, the disputed domain name as a practical matter simply appropriates the Complainant’s MISTERSMITHENTERTAINMENT mark in its entirety. Neither the substitution of the commonly used abbreviation “mr.” for “mister” nor the addition of a hyphen between “smith” and “entertainment” serves to distinguish the disputed domain name from the Complainant’s mark.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. The disputed domain name is virtually identical and confusingly similar to the Complainant’s mark. It is undisputed that the Respondent has not been authorized to use the Complainant’s mark. The Respondent notwithstanding has registered and is using the disputed domain name with a website offering products and services that are related to the Complainant’s products and services, and appear in some instances to overlap with goods and services claimed by the Complainant’s registration in International Classes 9, 38, and 41.3
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the disputed domain name, even if he has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
It appears from the record that the Respondent registered and commenced use of the disputed domain name prior to any notice to it of this dispute, as the Complainant’s demand letter of September 16, 2013 reflects. To establish rights or legitimate interests in the disputed domain name under paragraph 4(c)(i) of the Policy, however, the Respondent must show use or demonstrable preparation to use the disputed domain name in a connection with a bona fide offering of goods or services. In the Panel’s judgment, the Respondent has not made this showing. After careful consideration of the facts and circumstances in the record, the Panel finds that the Respondent most likely was aware of the Complainant and the Complainant’s mark when registering the disputed domain name. While the Respondent avers that before registering the disputed domain name it conducted a “thorough check” through a search of the BOIP Trademarks Register for Benelux and Community marks, even a cursory search of the BOIP Trademarks Register would have disclosed the existence of the Complainant’s registered Community Trademark. The Panel thus finds the Respondent’s claim that its “thorough check” did not disclose the Complainant’s mark lacking in credibility. Regardless, given the nature of the Complainant’s and the Respondent’s respective business activities, and considering the distinctiveness of the Complainant’s mark in relation to the goods and services offered thereunder, the record amply supports the Panel’s conclusion that the Respondent most likely was aware of the Complainant’s rights when registering the disputed domain name, which essentially appropriates the Complainant’s mark.
The Panel further concludes from the foregoing that the Respondent most likely registered the disputed domain name in order to trade on the goodwill and reputation of the Complainant’s distinctive mark through the creation of Internet user confusion. Internet users could easily expect the disputed domain name to be linked to the Complainant’s website or another website that is affiliated with, or has the endorsement or sponsorship of, the Complainant. See Levantur, S.A. v. Media Insight,WIPO Case No. D2008-0774. Further, the Respondent’s products and services are related to those of the Complainant, and in some instances potentially may overlap. Consequently, Internet visitors to the Respondent’s website might well remain confused as to such affiliation, endorsement or sponsorship.
In light of the foregoing, the record does not in the Panel’s view reflect the Respondent’s use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. Further, nothing in the record supports a claim that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers. The Respondent has not been authorized to use the Complainant’s mark, and in the absence of any good faith use of the disputed domain name, the Respondent cannot rely on a claim to have been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. There is no evidence in the record that the Respondent has obtained a Benelux registration for its applied-for mark, and the Respondent did not register Mr. Smith BV as its corporate name until January 2013.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Panel concludes that the Respondent most likely was aware of the Complainant and the Complainant’s mark when registering the disputed domain name. The record in this case reflects that in all likelihood the Respondent’s primary motive in relation to the registration and use of the disputed domain name was to capitalize on, or otherwise take advantage of, the Complainant’s trademark rights through the creation of Internet user confusion. The Panel finds that the Respondent registered and is using the disputed domain name in bad faith to intentionally attract for commercial gain Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship or affiliation. See E, Inc. v. Ult. Search Inc.,WIPO Case No. D2001-1319.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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.
William R. Towns
Sole Panelist
Date: November 19, 2013
1 The registration includes inter alia the following claimed goods and services in International Classes 9, 38, and 41:
IC 09: apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; recorded data carriers; magnetic data carriers, recording discs; compact discs, DVOs and other digital recording media; data processing equipment, computers; computer software,
IC 38: telecommunications, transfer of data via internet, including but not limited to the transfer of audio-,
visual-, text-, image- and graphic data in digital format, including the transfer of video-on-demand data,
IC 41: entertainment; sporting and cultural activities; film production; film distribution.
2 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2.
3 Refer to Note 1 supra.
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