The Complainant is Warners’ Stellian Company, Inc. of Saint Paul, Minnesota, United States of America, represented by Arthur Chapman Kettering Smetak & Pikala, United States of America.
The Respondents are Moniker Privacy Services of Pompano Beach, Florida, United States of America, and HK Domain Privacy of Hong Kong, China (collectively, the “Respondent”). 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Moniker Online Services, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2013. On November 6, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 12, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on November 25, 2013.
The Center verified that 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 26, 2013. In accordance with paragraph 5(a) of the Rules, the due date for Response was December 17, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 20, 2013
The Center appointed Nicholas Smith as the sole panelist in this matter on January 3, 2014. 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 paragraph 7 of the Rules. 4. Factual Background
The Complainant is a retail appliance specialist that has operated in Minnesota, United States for over 50 years. It sells more than 50 brands of home appliances, such as kitchen and laundry appliances and also operates appliance repair services.
The Complainant has held a trade mark for the word mark WARNERS’ STELLIAN (the “WARNERS Mark”) since at least 2007 in the United States. It has also registered the domain name since 1998.
The Domain Name was created on October 7, 2004. It currently resolves to a site (the “Respondent’s Website”) that offers a number of sponsored links relating to home appliances and home appliance services. These links include links to the Complainant’s website as well as the websites of a number of competitors of the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s WARNERS Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the WARNERS Mark having registered the WARNERS Mark on January 30, 2007.
The Domain Name consists of the WARNERS Mark in its entirety omitting the letter “s”. This is a clear case of typosquatting.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent’s Website contains a number of sponsored links for products offered by competitors to the Complainant. The Respondent appears to be trying to pass its website off as linked to the Complainant for commercial gain. Such use does not amount grant the Respondent rights or legitimate interests in the Domain Name.
The Domain Name was registered and is being used in bad faith. The Domain Name resolves to a website that advertises goods and services in competition with the Complainant. The Respondent is also clearly attempting to sell the Domain Name. The Respondent’s Website advertises the Domain Name for sale, and upon receipt of a cease and desist letter from the Complainant, the Respondent offered the Domain Name for sale for USD1,400, which is USD100 less than the cost of commencing a UDRP proceeding. This conduct amounts to registration and use of the Domain Name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the WARNERS Mark, having registrations for WARNERS as a trade mark in the United States.
The Domain Name consists of the WARNERS Mark with the removal of the “s” at the end of the word “warners”. The Panel finds that the removal of the “s” does not prevent a finding of confusing similarity between the WARNERS Mark and the Domain Name. An individual viewing the Domain Name may be confused into thinking that the Domain Name would refer to a site run by the Complainant as the Domain Name differs from the WARNERS Mark in a minor way. The Domain Name and the WARNERS Mark are also phonetically identical. The Panel finds that the Domain Name is confusingly similar to the Complainant’s WARNERS Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making legitimate non-commercial 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.” (Policy, paragraph 4(c))
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the WARNERS Mark or a mark similar to the WARNERS Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial use. Rather, it appears from the evidence submitted by the Complainant that the Respondent was using the Domain Name to operate a website that provided pay-per-click links to the Complainant’s website and sites that offered similar goods and services to that offered by the Complainant. Such use is not a bona fide offering of goods or services.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had an opportunity to rebut the presumption that it lacks rights or legitimate interests but has chosen not to do so. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name’ registration to the Complainant who is the owners of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) The Respondent has registered the Domain Name in order to prevent the owner of the trade mark 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) The Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted 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 the Respondent’s website or location. (Policy, paragraph 4(b))
Although the Domain Name was registered prior to the Complainant registering its WARNERS Mark, the Panel finds that it is likely that the Respondent was aware of the Complainant at the time the Domain Name was registered. The Complainant had traded in the Minnesota area for almost 40 years at the time of registration and maintained a website at the domain name since 1998.
Furthermore, the WARNERS Mark is a coined mark with no generic or descriptive meaning. The Respondent does not provide, nor is it apparent to the Panel, any reason why the Domain Name was registered other than by reference to the Complainant. Furthermore, the Respondent’s Website provides a series of links to the Complainant and its competitors of the Complainant, indicating an awareness of the Complainant. The registration of the Domain Name in awareness of the Complainant and any rights it had at the time in the WARNERS Mark and in the absence of rights or legitimate interests amounts to registration in bad faith.
The Respondent is using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the Complainant’s Mark as to the source, sponsorship, affiliation or endorsement of its website. The Respondent’s Website consisted of a website offering links, on what appears to be a pay-per-click basis, to other websites offering goods and services similar to that offered by the Complainant. It is therefore highly likely that the Respondent received revenue from Internet users who happen to come across the Respondent’s Website by means of confusion with the WARNERS Mark. The Panel finds that such use amounts to use in bad faith.
Furthermore, the Panel finds that the conduct of the Respondent in offering the Domain Name for sale for USD1400, while making reference to avoiding a UDRP proceeding is evidence of circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under 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 Domain Name be transferred to the Complainant.
Nicholas Smith
Sole Panelist
Date: January 11, 2014
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