The Complainant is Thendro Pty. Ltd. of Melbourne, Victoria, Australia, represented by Davies Collison Cave, Australia.
The Respondent is Nicholas Kappos of Aptos, California, United States of America (“US”). 2. The Domain Name and Registrar
The disputed domain name is registered with New Dream Network, LLC dba DreamH (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 10, 2014. On January 10, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 13, 2014, 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 January 16, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was February 5, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 6, 2014.
The Center appointed Antony Gold as the sole panelist in this matter on February 11, 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 the Rules, paragraph 7. 4. Factual Background
The Complainant provides body piercing services under the PUNKTURED brand. It has 25 stores across Australia. It has traded since November 1997 and, on October 19, 2001, a director of the Complainant registered in Australia the trade mark PUNKTURED in class 42 for “hygienic services: body piercing services: tattooing services: beauty care services”. A further trade mark application for PUNKTURED in additional classes, also filed by a director of the Complainant, has recently been accepted for registration by the Australian Trade Marks Office.
The Complainant has a Facebook page at “/punkturedbodypiercing”. As at October 17, 2013, the PUNKTURED Facebook page had 674 likes. The Complainant is also the registrant of five other domain names which incorporate the term “punktured”.
The disputed domain name was registered by the Respondent on April 25, 2011, and came to the Complainant’s attention in or about May 2013. At that time the website hosted at the disputed domain name resolved to a per-per-click website containing links to third party sites including to Australian websites which featured body piercing and jewellery. Two letters sent by the Complainant’s lawyers to the Respondent in July 2013 seeking a transfer of the disputed domain name did not receive a reply.
As at October 2013 the disputed domain name resolved to a pay-per-click website which included links to websites selling Earrings, Ear Plugs and Body Piercing services. 5. Parties’ Contentions A. Complainant
The Complainant says that the disputed domain name is identical to a trade mark in which it has rights, namely PUNKTURED. In addition to the registered Australian trade mark for PUNKTURED in Class 42 and the pending application for PUNKTURED in additional classes, the Complainant asserts that it makes extensive use of PUNKTURED on, for example, swingtags, soft goods and apparel as well as on in store signage, on vehicles and online at its Facebook page. In addition, the Complainant says that it spends approximately AUD 200,000 on promotional discounts and giveaways promoting the PUNKTURED trade mark.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It points out that PUNKTURED does not match the Respondent’s name nor is it an acronym or an abbreviation of it. It says that trade mark searches in Australia and the United States of America do not reveal that the Respondent owns any trade mark registrations or pending trade mark applications for PUNKTURED and that searches have not revealed any trading presence by the Respondent under the mark PUNKTURED nor any evidence that the Respondent is known by that name. The Complainant also points out that PUNKTURED is a made-up word with no dictionary definition.
The Complainant says that it has never authorized the Respondent to use its PUNKTURED trade mark nor is the Complainant aware of any other right which the Respondent might have acquired to use the PUNKTURED mark. The Respondent is accordingly not making a legitimate noncommercial or fair use of the disputed domain name.
The Complainant also says that the Respondent’s use of the disputed domain name is not bona fide in that it resolves to a pay-per-click website which contains sponsored links to third party websites, a number of which are selling body piercing services and jewellery, that is, goods and services identical or similar to the Complainant’s area of business, and appear to be specifically directed at the Australian market. In this respect the Complainant says that whilst use of a domain name to resolve to pay-per-click websites might be permissible in some circumstances, it does not of itself confer rights or legitimate interests arising from a “bona fide offering of goods and services”. In this respect, the Complainant points out that the disputed domain name does not consist of a dictionary or common word such that the sponsored links on the website relate to the generic meaning of a word which forms the disputed domain name. Rather, the nature of the sponsored links is related to the goods and services offered by the Complainant under its distinctive trade mark. The Complainant says that such a practice amounts to unfair use and it refers to a number of panel decisions in support of this contention.
The Complainant also asserts that the disputed domain name was registered and used in bad faith. It says that the disputed domain name was registered primarily for the purpose of disrupting the business of the Complainant or because the Respondent was intentionally attempting to attract for commercial gain Internet users to the Respondent’s website and other online locations.
In support of this contention the Complainant points out that the word “punktured” is an intentional misspelling of the dictionary word “punctured” and that the replication of the misspelling by the Respondent cannot be accidental. Moreover the links which appear on the website at the disputed domain name promote goods and services which are the same as those of the Complainant’s, namely body piercing, jewellery and associated products. The Complainant says that persons visiting the Respondent’s website will be led to believe that the Respondent’s goods or services are connected with the Complainant or have the Complainant’s sponsorship or endorsement.
The Complainant says that the fact that the links at the Respondent’s website promote the same goods and services as the Complainant suggests that the Respondent is aware of the Complainant’s trade mark and reputation and is accordingly seeking to direct Internet users to the website at the disputed domain name for commercial gain by creating a likelihood of confusion with the Complainant’s business under its PUNKTURED trade mark. In this respect, the Complainant points out that at the time of registration of the disputed domain name in April 2011, the Complainant had been trading as PUNKTURED for 14 years and its trade mark had been registered for 10 years. Accordingly it says that the Respondent must have registered the disputed domain name in the knowledge of the Complainant’s rights and reputation in the PUNKTURED trade mark.
The Complainant adds that the Respondent is preventing it “from trading online under the PUNKTURED trade mark at the ‘.com’ level”. Lastly the Complainant draws attention to the fact that the two letters sent to the Respondent by post from its lawyers were returned to sender, suggesting that the address listed for the Respondent on the WhoIs database is not a valid address. The letters were also sent by email and no response was received to the emailed versions. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, these Rules, the Panel shall draw such inferences therefrom as it considers appropriate.
Paragraph 4(a) of the Policy requires that a complainant prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
For the purpose of comparing the disputed domain name with the trade mark in which the Complainant asserts it has rights, it is usual to disregard the generic Top-Level Domain “.com” suffix. On this basis, the disputed domain name is, as the Complainant contends, identical to the PUNKTURED mark relied on by the Complainant.
The question of whether the Complainant has rights in the trade mark relied on requires consideration. The registered trade mark and the pending (but approved) trade mark application are not in the name of the Complainant but are in the name of a director of the Complainant. The Complaint does not expressly assert that the director has licensed the Complainant to use the marks, nor does it append to the Complaint a copy of any license granted by the director to the Complainant. Whilst the grant of a formal or informal licence is the most likely construction to put on the facts disclosed in the Complaint (particularly when the lawyer’s letters sent to the Respondent were expressed to be written on behalf of both the Complainant and the director) it would have been helpful if the Complainant had dealt with this issue expressly. In any event, the Panel is prepared to infer the existence of a license and/or authorization from the particular facts.
Moreover, the evidence of use submitted by the Complainant indicate that, in addition to the registered rights which it claims, it has acquired unregistered rights in the PUNKTURED trading style through, amongst other activities, the advertising expenditure to which it has referred, its use of the mark on clothing and other items and the use of the mark on its Facebook page. Accordingly, the Panel finds that it has rights in the PUNKTURED mark for the purposes of the Policy. The Complainant has accordingly satisfied the first limb of the Policy. B. Rights or Legitimate Interests
As the Respondent chose not to respond to the Complaint, very little is known about his activities. However, based on the Complainant’s assertions, which the Panel accepts, the Respondent does not own any trade mark registrations or pending trade mark applications for PUNKTURED in the United States of America or in Australia, nor is there any evidence that the Respondent trades as PUNKTURED or is known by that name.
Moreover, the Complainant has not authorized the Respondent to use its PUNKTURED trade mark.
Paragraph 4(c) of the Policy provides three non-exhaustive bases whereby the Respondent might be able to demonstrate that it has rights or legitimate interests in the disputed domain name. There is nothing to suggest that the Respondent might fall within the first two grounds, namely (to summarize them briefly) that he had, before being contacted by the Complainant used or made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services or that he had been commonly known by the disputed domain name.
For the third ground to be met, the Respondent would need to demonstrate that he was making a legitimate noncommercial or fair use of the disputed domain name. The use of the disputed domain name in order to resolve to a pay-per-click website which contains sponsored links to third party websites at least some of which resolve to websites relating to body piercing and jewellery, these being the Complainant’s area of business, is not a legitimate or noncommercial fair use of the disputed domain name.
In this respect the Complainant says that whilst use of a domain name to resolve to a pay-per-click website might be permissible in some circumstances, it does not of itself confer rights or legitimate interests arising from a “bona fide offering of goods and services”. The Panel takes the same approach in assessing this issue as the panel in Paris Hilton v. Deepak Kumar,WIPO Case No. D2010-1364. In that decision the panel said that “in this case the assessment of rights or legitimate interests boils down to the question; is the Respondent using the Domain Name with the Complainant’s marks in mind and with a view to taking unfair advantage of the reputation of those marks?”. The Panel finds in the circumstances of the case that this is the Respondent’s motive and that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The final requirement for the Complainant is to establish that the disputed domain name was both registered and used in bad faith.
By the time that the disputed domain name was registered, the Complainant had been trading as “Punktured” for 14 years and its trade mark had been registered for 10 years. The use to which the website was put as at the time of first registration in April 2011 is not known but the distinctive character of the Complainant’s trade mark coupled with the evidence of later use which has been provided by the Complainant is such that the Panel finds that the Respondent registered the disputed domain name with the intention of intentionally attempting 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 its website or location or of a product or service on its website or location. Accordingly, the Panel finds that the registration of the disputed domain name was in bad faith.
The most recent evidence of use submitted by the Complainant of the website to which the disputed domain name resolves is dated October 23, 2013. At that time the website contained links to a variety of products including Wood Ear Plugs, Bones Earrings, Skull Earrings and Body Piercing. As the Complainant concedes, not every pay-per-click holding page is a bad faith use of a domain name. But the use of the Complainant’s trade mark as a domain name which resolves to a pay-per-click page containing links to goods and services identical or similar to those offered by the Complainant is, the Panel finds, bad faith use. The Panel is confirmed in this finding by the strong indications that the address provided by the Respondent as recorded in the WhoIs database appears to be inaccurate and that the Respondent failed to provide any response to the emailed version of the letters sent by the Complainant’s lawyers to the Respondent in July 2013 seeking a transfer of the disputed domain name. 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.
Antony Gold
Sole Panelist
Date: February 21, 2014
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