The Complainant is Nobis Inc. of Markham, Ontario, Canada, represented by Gowling Lafleur Henderson, LLP, Canada.
The Respondent is WhoisGuard Protected of Panama City, Panama / Carolin Litoff of Brooklyn, New York, United States of America. 2. The Domain Names and Registrar
The disputed domain names and are registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 17, 2014. On January 17, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 20, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 22, 2014 providing the registrant and contact information disclosed by the Registrar, and the Complainant filed an amendment to the Complaint on January 23, 2014.
The Center verified that the Complaint together with the amendment to 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 with the amendment, and the proceedings commenced on January 29, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was February 18, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 19, 2014.
The Center appointed Alejandro Garcia as the sole panelist in this matter on February 25, 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 A. The Complainant
The Complainant is a company established in Canada. It sells premium outwear and accessories through distributors in more than 20 countries. B. The Complainant’s Trademarks
The Complainant holds two NOBIS trademark registrations in Canada as follows:
Registration No.
Trademark
Country
Registration Date
TMA 724856
NOBIS
Canada
September 30, 2008
TMA 769843
Canada
June 16, 2010
C. The Complainant’s Domain Names
The Complainant has registered a number of domain names containing the term “Nobis”, for example, and . The registration of these domain names predates the registration of the disputed domain name. D. The Respondent
The Respondent did not file any response. The disputed domain names were created on April 6, 2013. 5. Parties’ Contentions A. The Complainant Identical or Confusingly Similar
The Complainant argues that the disputed domain names are confusingly similar to the Complainant’s trademark NOBIS.
In this regard, the Complainant reminds the Panel of three principles that would be relevant to this case:
First, it is a well-established principle that the addition of a generic Top-Level Domain is without legal significance in determining the issue of confusing similarity.
Second, a respondent may not avoid confusion by appropriating someone else’s entire trademark in a domain name.
Third, it is well established that the addition of generic, geographical, descriptive or non-distinctive terms will not militate against a finding of confusion.
By reference to these three principles, the Complainant argues that the disputed domain names are all confusingly similar to the Complainant’s trademark NOBIS. Rights or Legitimate Interests
The Complainant argues that there is no evidence to demonstrate use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services.
The Complainant adds that the Respondent is not affiliated with the Complainant in any way nor has he been authorised by the Complainant to use and register its trademark, or to seek registration of any domain name incorporating the trademark NOBIS. The Complainant adds that the disputed domain names are used to divert Internet traffic to pay-per-click websites that display sponsored links to other clothing-related business. The Complainant asserts that this would constitute prima facie evidence of no right or legitimate interest. Registered and Used in Bad Faith
As for the requirement of bad faith registration and use, the Complainant argues that the Respondent has engaged in a pattern of registering domain names containing the trademark NOBIS for the purpose of trading on the fame and goodwill associated with this trademark. Furthermore, the disputed domain names contain references to some of the items sold by the Complainant, for example, coats.
The Complainant adds that the Respondent registered the disputed domain names with the purpose of disrupting the business of the Complainant. The fact that the disputed domain names resolve to competing pay-per-click websites would support this conclusion.
The Complainant also avers that the Respondent has sought intentionally to attract traffic for commercial gain by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement. Relief Requested
The Complainant seeks the transfer of the disputed domain names. B. The Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Applicable Test
Under paragraph 4(a) of the Policy, the Complainant has the burden of proving that:
(i) The disputed domain names are 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 in respect of the disputed domain names; and
(iii) The disputed domain names have been registered and are being used in bad faith. B. Identical or Confusingly Similar
The Complainant has established to the Panel’s satisfaction that it has rights in respect of the trademark NOBIS.
The dominant part of the disputed domain names is the term “Nobis”. This term is identical to the NOBIS trademark registered by the Complainant. The addition of generic or descriptive terms (including a hyphen) in the disputed domain names is insufficient to prevent the existence of confusion with the Complainant’s trademark. In this respect, paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) indicates:
“The first element of the UDRP serves essentially as a standing requirement. The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms […] typically being regarded as insufficient to prevent threshold Internet user confusion […]”
Accordingly, the Panel concludes that the disputed domain names are confusingly similar to the Complainant’s trademark NOBIS within the meaning of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three non-exclusive examples under which a respondent can demonstrate that it has rights or legitimate interests in a domain name:
“(i) Before any notice […] of the dispute, [the respondent’s] 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) [The respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) [The 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.”
In this case, particularly in light of the fact that the disputed domain names resolve to pay-per-click websites that promote competing goods, the Panel concludes that the Complainant has made a prima facie case that the Respondent does not have rights or legitimate interests and that none of the circumstances set out in paragraph 4(c) of the Policy apply. The Respondent has not rebutted the Complainant’s contentions. Accordingly, the Complainant meets the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
On the basis of the evidence before it, the Panel finds that the Respondent has engaged in a pattern of bad faith registration within the meaning of paragraph 4(b)(ii) of the Policy. This finding, in turn, leads to the conclusion that the disputed domain names have been registered and are used in bad faith.
Also on the basis of the evidence before it and in particular the fact that the disputed domain names resolve to competing pay-per-click websites, the Panel finds that the Respondent registered and is using the disputed domain names with the purpose of disrupting the business of the Complainant. Thus, in light of paragraph 4(b)(iii) of the Policy, the Panel concludes that the disputed domain names have been registered and are used in bad faith.
Furthermore, considering the evidence on record, and particularly on the basis that the disputed domain names resolve to competing pay-per-click websites, the Panel finds that the Respondent has sought intentionally to attract traffic for commercial gain by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement. This finding, pursuant to paragraph 4(b)(iv) of the Policy, also leads to the conclusion that the disputed domain names were registered and are used in bad faith.
As a result, the Panel concludes that the Complaint meets 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 names , , , , and be transferred to the Complainant.
Alejandro Garcia
Sole Panelist
Date: March 26, 2014
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