The Complainant is Icebug AB of Göteborg, Sweden, represented by Domain and Intellectual Property Consultants, DIPCON AB, Sweden.
The Respondent is Domain Administrator of West Bay, Grand Cayman, the Overseas Territory of the United Kingdom of Great Britain and Northern Ireland (“UK”). 2. The Domain Name and Registrar
The disputed domain name is registered with R Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 24, 2013. On October 24, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 30, 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 November 6, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 26, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 27, 2013.
The Center appointed Richard Hill as the sole panelist in this matter on December 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 owns the trademark ICEBUG, with rights dating back to 2000. Particularly, the Complainant owns Swedish trademark application no. 0355859 of September 7, 2000, with registration date of May 31, 2002, as well as the Community trademark application no. 002102374 of February 23, 2001, with registration date of January 19, 2005 (Annex 3 to the Complaint).
The Respondent acquired the disputed domain name in 2009.
The website at the disputed domain name contains advertising links to products that compete with the Complainant’s products, as well as links to websites that sell the Complainant’s products. 5. Parties’ Contentions A. Complainant
The Complainant alleges that it is a market-leading company selling shoes focused on the wintertime environment. Its products are promoted under the registered trademark ICEBUG, with rights dating back to 2000.
According to the Complainant, the disputed domain name, which was acquired by the Respondent in 2009, is identical to its mark.
The Complainant states that the Respondent has no rights in the trademark ICEBUG, nor is it a licensee of the Complainant. The Complainant has not given the Respondent any permission to use its mark.
Further, says the Complainant, the disputed domain name is used to point to a website that hosts a number of sponsored links. Those links are related to the products offered by the Complainant, including websites that sell products that compete with the Complainant’s products, and that sell the Complainant’s products.
The Complainant alleges that the Respondent was well aware of the Complainant’s trademark and business when it registered the disputed domain name. Thus, the disputed domain name was registered, and is being used, to profit commercially from the likelihood of confusion between the Complainant’s trademark and the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has provided evidence showing that it owns the trademark ICEBUG, which is used to market footwear. The disputed domain name is obviously identical to the Complainant’s mark. B. Rights or Legitimate Interests
The Respondent does not have any license or other authorization to use the Complainant’s mark. It is using the disputed domain name to point to a website that offers products that compete with the Complainant’s products.
The Panel finds that the Respondent is redirecting Internet users interested in the Complainant’s products and services to a website for commercial gain and that such use does not fall within the parameters of a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy or a legitimate noncommercial or fair use pursuant to paragraph 4(c)(iii) of the Policy. See for example F. Hoffmann-La Roche Inc. v. Samuel Teodorek,WIPO Case No. D2007-1814 (“the Respondent’s use of the disputed domain name to redirect Internet users to an on-line pharmacy demonstrates Respondent’s lack of a legitimate interest in the domain name”); see also Pfizer Inc v. Juan Gonzales,WIPO Case No. D2004-0589 (“no good faith can be assumed in Respondent’s conduct, in view of the fact that the Domain Name is confusingly similar with Complainant’s trademark and is used in connection with the promotion and sale of competing products”). C. Registered and Used in Bad Faith
It is clear that the Respondent must have been aware of the Complainant’s marks when it acquired and started using the disputed domain name, because the website at the disputed domain name contains the Complainant’s mark.
The Respondent (who did not reply) has not presented any plausible explanation for its use of the Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from the Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that the Respondent did not have a legitimate use in mind when it acquired the disputed domain name.
Indeed, the Respondent’s actual use of the disputed domain name (as noted above) is clearly not bona fide, because the Respondent operates a website that promotes products that compete with the Complainant’s product. This indicates that the Respondent acquired and is using the disputed domain name to take advantage of the confusing similarity between the disputed domain name and the Complainant’s mark in order to profit from the goodwill associated with the mark in bad faith under paragraph 4(b)(iv) of the Policy. See for example The Jennifer Lopez Foundation v. Jeremiah Tieman, Jennifer Lopez Net, Jennifer Lopez, Vaca Systems LLC,WIPO Case No. D2009-0057 (“The record further reflects the Respondent's use of the disputed Domain Names to attract Internet users to the Respondent’s website in order to generate pay-per-click advertising revenues. The Panel concludes for the foregoing reasons that the Respondent registered and is using the disputed Domain Names in bad faith.”); see also Philip Morris Incorporated v. Alex Tsypkin,WIPO Case No. D2002-0946 (“It follows from what has been said about legitimacy that the Panel is satisfied that Respondent is using the disputed Domain Names intentionally to attempt to attract, for commercial gain, Internauts to his web site by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of his web site. Pursuant to Policy paragraph 4(b)(iv), this constitutes evidence of both bad faith registration and bad faith use, for the purposes of paragraph 4(a)(iii).”) 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.
Richard Hill
Sole Panelist
Date: December 7, 2013
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