The Complainant is Nobis Inc. of Markham, Ontario, Canada, represented by Gowling Lafleur Henderson LLP, Canada.
The Respondent is Gogogo Liu of Uxbridge, London, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain names and (the “Disputed Domain Names”) are registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 3, 2014. On February 5, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On February 6, 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 February 10, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 2, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 3, 2014.
The Center appointed Nicholas Weston as the sole panelist in this matter on March 6, 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.
The Panel finds that appropriate notice of this proceeding has been given to the Respondent and that the Center has discharged its responsibility under paragraph 2(a) of the Rules. The words “calculated to achieve actual notice” in paragraph 2 of the Rules do not demand proof of service. 4. Factual Background
The Complainant operates a business based in Canada selling footwear, clothing and accessories globally. The Complainant holds registrations for the NOBIS trademark and variations of it in Canada, which it uses internationally to designate footwear, clothing and accessories. The registrations cited in evidence are set out below:
Registration No.
Trademark
Country
Registration Date
TMA 724856
NOBIS
Canada
September 30, 2008
TMA 769843
Canada
June 16, 2010
The Canadian trademark registration for the word NOBIS has been in effect since 2008.
The Complainant conducts business on the Internet using numerous domain names containing its mark NOBIS including and with footwear, clothing and accessories business websites resolving from these domain names. The Complainant also operates various social media accounts comprising or containing the term “nobis”.
The Disputed Domain Names and were created on March 7, 2013. Four of the five Disputed Domain Names resolved to a parking web page containing advertisements and links relating to outdoor clothing. One of the five Disputed Domain Names, resolved to a parking web page containing advertisements and links relating to “dating”. 5. Parties’ Contentions A. Complainant
The Complainant cites its trademark registrations of the trademark NOBIS in Canada as prima facie evidence of ownership.
The Complainant submits that the mark NOBIS is an invented word, is well known and that its rights in that mark predate the registration of the Disputed Domain Names and . It submits that the Disputed Domain Names are confusingly similar to its trademark, because the Disputed Domain Names incorporate in their entirety the NOBIS trademark and that the confusing similarity is not removed by the addition of the descriptive words “coat”, “jacket”, “outlet”, “parka” and “shop”.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because the Respondent has no trademark rights in or license to use the Complainant’s trademark. The Complainant also contends that use, which intentionally trades on the fame of another to divert traffic to a PPC website cannot constitute a bona fide offering of goods or services (citing Research In Motion Limited v. International Domain Names Inc./ Moniker Privacy Services, WIPO Case No. D2008-0780; B and J García, S.L., Arnedo, Spain v. Gorila, WIPO Case No. D2004-1071; Lowen Corporation d/b/a Lowen Sign Company v. Henry Chan, WIPO Case No. D2004-0430).
Finally, the Complainant alleges, inter alia, that the registration and use of the Disputed Domain Names were, and currently are, in bad faith, contrary to paragraphs 4(a)(iii) and 4(b) of the Policy, using the Complainant’s NOBIS mark in the Disputed Domain Names, and has intentionally attempted to attract for commercial gain Internet users to the Respondent’s websites or other online locations, by creating likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent’s websites (citing cases including: Research In Motion Limited v. International Domain Names Inc./Moniker Privacy Services, supra; Lowen Corporation d/b/a Lowen Sign Company v. Henry Chan, supra; and Deloitte Touche Tohmatsu v. Henry Chan,WIPO Case No. D2003-0584). B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the complainant has the burden of proving the following:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the panel to:
“decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable.” A. Identical or Confusingly Similar
The Panel finds that the Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark NOBIS in Canada. The Panel finds that the Complainant has rights in the mark NOBIS in Canada, pursuant to Canadian Trademark Registration No. 724856 registered on September 30, 2008. In any event, “the propriety of a domain name registration may be questioned by comparing it to a trademark registered in any country” (see Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358). The Panel finds that the Complainant has rights in the mark NOBIS.
Turning to whether the Disputed Domain Names are identical or confusingly similar to the NOBIS trademark, the Panel observes that each of the Disputed Domain Names comprise: (a) an exact reproduction of the Complainant’s trademark; (b) followed respectively by the suffixes: “coat”, “jacket”, “outlet”, “parka” and “shop”; and (e) followed by the generic Top-Level (gTLD) domain suffix “.com”.
It is well established that the top-level designation used as part of a domain name may be disregarded when considering identity or confusing similarity: (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.;WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; and Phenomedia AG v. Meta Verzeichnis Com,WIPO Case No. D2001-0374). The relevant comparison to be made in these circumstances is with the second-level portion of each Disputed Domain Name, respectively “nobiscoat”, “nobisjacket”, “nobisoutlet”, “nobisparka”, and “nobisshop”.
It is also well established that where a domain name incorporates a complainant’s distinctive trademark in its entirety, it may be found confusingly similar to that mark despite the addition of a word or, in this case, an obvious contraction of a descriptive word (see Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; and Wal-Mart Stores, Inc. v. Kuchora, Kal,WIPO Case No. D2006-0033).
This Panel agrees with the numerous other UDRP panels that have followed the line of reasoning set out in Deutsche Telekom AG v. Timmy Comeau, WIPO Case No. D2003-0377, which held that the addition of the word “shop” was not sufficient to avoid confusion. Nor is the addition of other descriptive words such as “coat”, “jacket”, “outlet”, or “parka” sufficient to remove the similarity or avoid confusion. In this Panel’s view, the use of these descriptive words exacerbates the confusion having regard to the outdoor wear and retail nature of the Complainant’s business.
In Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698, the panel held that “[t]he use to which the site is put has no bearing upon the issue whether the domain name is confusingly similar to the trademark, because by the time Internet users arrive at the Website, they have already been confused by the similarity between the domain name and the Complainant’s mark into thinking they are on their way to the Complainant’s Website”. The Panel finds that the Disputed Domain Names are therefore confusingly similar to the NOBIS trademark.
Accordingly, the Panel finds that the Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exhaustive list of ways that the respondent may demonstrate rights or legitimate interests in the 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 it 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.
The Policy places the burden on the complainant to establish the absence of respondent’s rights or legitimate interests in the domain name. Because of the inherent difficulties in proving a negative, the consensus view is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The evidential burden of production then shifts to the respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles,WIPO Case No. D2000-1306; and WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO Overview 2.0”), paragraph 2.1).
It is well established that a respondent may have a right to register and use a domain name to attract Internet traffic based solely on the appeal of a commonly used descriptive phrase, even where the domain name is confusingly similar to the registered mark of a complainant (see, National Trust for Historic Preservation v. Barry Preston,WIPO Case No. D2005-0424; Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc.,WIPO Case No. D2004-0843; T. Rowe Price Associates, Inc. v. J A Rich,WIPO Case No. D2001-1044; Sweeps Vacuum & Repair Center, Inc. v. Nett Corp.,WIPO Case No. D2001-0031; and EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047). However, this business model is legitimate only if the domain name was registered because of its attraction as a descriptive phrase comprising dictionary words, and not because of its value as a trademark and that website is then used to post links that are relevant only to the common meaning of the phrase comprising dictionary words. (See National Trust for Historic Preservation v. Barry Preston, supra.; The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340; WIPO Overview 2.0, paragraph 2.2).
This Panel observes that the word “nobis” is not invented as contended by the Complainant but rather is the Latin pronoun as a dative plural of the word “ego” meaning “for us” or “to us” and in its ablative plural form means “by us” or “with us”. However this Panel finds its adoption and use as an outdoor clothing brand renders it distinctive in that context rather than merely descriptive.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because each is misleadingly directing Internet users to a pay-per-click (“PPC”) landing web page dominated by links advertising or offering for sale products in connection and competition with the Complainant’s mark, and in one case to a dating related PPC page thereby illegitimately passing off the owner’s goodwill and reputation for its own benefit. The Complainant also has not licensed, permitted or authorized the Respondent to use the Complainant’s trademark.
On any objective view, the Respondent is not a reseller with a legitimate interest in a domain name incorporating a manufacturer’s mark, such that it could meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc., supra. Nor, alternatively, is the Respondent commonly known by any of the Disputed Domain Names.
This Panel finds that the Respondent is making an illegitimate commercial use of the Disputed Domain Names. By misleadingly diverting consumers, it can be inferred that the Respondent is opportunistically using the Complainant’s well-known mark in order to attract Internet users to its websites and has been using the Disputed Domain Names to divert Internet traffic to its PPC web pages.
The Panel finds for the Complainant on the second element of the Policy. C. Registered and Used in Bad Faith
The third element of the Policy that the Complainant must also demonstrate is that the Disputed Domain Names have been registered and are being used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both.
“b. Evidence of Registration and Use 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, (relevantly):
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The examples of bad faith registration and use in Policy, paragraph 4(b) are not 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 objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. (See M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230).
The evidence supports the Complainant’s contention that the Respondent registered and has used the Disputed Domain Names in bad faith. The onus is on the Respondent to make the appropriate enquiries. Paragraph 16 of the Registration Agreement to which the Respondent is a party clearly states: “You represent and warrant that neither the registration of a domain name nor the manner in which it is directly or indirectly used nor the use of other of the services infringes the legal rights of a third party.” The apparent lack of any good faith attempt to ascertain whether or not the Respondent was registering and using someone else’s trademarks, such as by conducting trademarks searches or search engine searches, supports a finding of bad faith (see Mobile Communication Service Inc. v. WebReg, RN,WIPO Case No. D2005-1304; L’oreal v. Domain Park Limited,WIPO Case No. D2008-0072; BOUYGUES v. Chengzhang, Lu Ciagao,WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, WebReg,WIPO Case No. D2006-0964; and mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141).
The diversion of Internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous UDRP decisions. (See L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000‑0163; and Hoffmann-La Roche Inc. v. Samuel Teodorek,WIPO Case No. D2007-1814).
The Respondent’s use of each Disputed Domain Name is apparently for domain monetization unconnected with any bona fide supply of goods or services by the Respondent. The Panel surmises that the business model in this case, is for the Respondent to passively collect click-through revenue generated solely from the Complainant’s goodwill and Internet users’ inaccurate guessing of the correct domain name associated with the Complainant’s Nobis products. Exploitation of the reputation of a trademark to obtain click-through commissions from the diversion of Internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous UDRP decisions. (See Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., supra; Lilly ICOS LLC v. The Counsel Group LLC,WIPO Case No. D2005-0042; and L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, supra; Research In Motion Limited v. International Domain Names Inc./Moniker Privacy Services, supra; Lowen Corporation d/b/a Lowen Sign Company v. Henry Chan, supra and Deloitte Touche Tohmatsu v. Henry Chan, supra).
In the absence of any evidence to the contrary, this Panel finds that the Respondent has taken the Complainant’s trademark NOBIS and incorporated it in the Disputed Domain Names without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademark by diverting Internet users to PPC parking web pages for commercial gain.
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 Names, , , , and be transferred to the Complainant.
Nicholas Weston
Sole Panelist
Date: March 20, 2014
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