The Complainant is Tom Lowes, Sykes Cottages Ltd of Chester, United Kingdom of Great Britain and Northern Ireland, represented internally.
The Respondent is Balticsea LLC of Kaliningrad, the Russian Federation / Contact Privacy Inc. Customer 0131380348 of Toronto, Ontario, Canada. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 17, 2015. On April 17, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 17, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 22, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Center also sent an email inviting the Complainant to amend the Complaint to reflect the correct Registrar information and its full contact details. The Complainant filed an amendment to the Complaint on April 24, 2015.
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, and the proceeding commenced on April 30, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 20, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 21, 2015.
The Center appointed Luca Barbero as the sole panelist in this matter on May 29, 2015. 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 is the owner of the United Kingdom trademark registration No. UK00002503649, filed on December 1st, 2008 and registered on April 3, 2009, in classes 39 and 43 for the following series of marks: HOGAN COTTAGES, HOGANCOTTAGES, HOGANS COTTAGES and HOGANSCOTTAGES.
The Complainant is also the owner of the domain name , registered on October 13, 2008 and pointed to a web site where the Complainant offers booking services of cottages in Ireland.
The disputed domain name was registered on June 1, 2010. According to the evidence on records, the disputed domain name was pointed to a parking page with pay-per-click mainly referred to cottages and holiday homes. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to its trademarks and to its domain name , of which it is a clear misspelling.
The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name and highlights that the disputed domain name was redirected to a parking page with pay-per-click (“PPC”) links. The Complainant informs the Panel that there is no relationship between the Complainant and the Respondent and that the Respondent has not been authorized to register and use the disputed domain name.
With reference to the circumstances evidencing bad faith, the Complainant states that the Respondent’s pointing of the disputed domain name is evidence of abusive registration and is causing damage to the Complainant by misleading customers, monetizing brand traffic and causing the Complainant to have to acquire its own customers by paying for PPC advertising. The Complainant further states that the Respondent will be gaining unfair advantage from the disputed domain name, through the provision of PPC advertisements and directing visitors to competitors’ web sites when they were looking for similar goods and services to those offered by the Complainant.
The Complainant also contends that the disputed domain name was registered with the intention of preventing the Complainant from registering the disputed domain name with the intention to subsequently offer the disputed domain name for sale to the Complainant.
As an additional circumstance evidencing bad faith, the Complainant submits that the fact that the Respondent has chosen to register the disputed domain name through a private registration further raises suspicion regarding the intentions of the Respondent’s use of 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
Paragraph 4(a)(i) of the Policy requires that the Complainant demonstrate that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant has provided evidence of a United Kingdom trademark registration covering the series of marks HOGAN COTTAGES, HOGANCOTTAGES, HOGANS COTTAGES and HOGANSCOTTAGES.
The threshold test for confusing similarity under paragraph 4(a)(i) of the Policy involves a comparison between the trademark and the disputed domain name to determine the likelihood of confusion by Internet users. The trademark at issue generally needs to be recognizable as such within the domain name, and the addition of common, dictionary, descriptive or negative terms are typically not regarded as sufficient to prevent threshold confusion by Internet users. See paragraph 1.2 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
In the case at hand, the Panel notes that the trademark HOGAN COTTAGES is entirely comprised in the disputed domain name, with the addition of the term “Irish”, which is insufficient to exclude the likelihood of confusion between the disputed domain name and the Complainant’s trademark.
See also, among the numerous UDRP decisions finding that the addition of generic or descriptive terms to a trademark is not a distinguishing feature, Barry D. Sears, Ph.D. v. YY / Yi Yanlin, WIPO Case No. D2007-0286 (“diet” added to the ZONE mark); Fry’s Electronics, Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1435 (“electronic” added to the FRY mark); Wal-Mart Stores, Inc. v. Henry Chan,WIPO Case No. D2004-0056 (“chase”, “girlsof”, “jobsat”, “sams”, “application”, “blackfriday”, “blitz”, “books”, “career(s)”, “check”, “flw”, “foundation”, “games”, “mart”, “photostudio”, “pictures”, “portrait”, “portraitstudio(s)”, “registry”, “retaillink” and “wire” added to the WALMART mark); PepsiCo, Inc. v. Henry Chan,WIPO Case No. D2004-0033 (“chart”, “miusic”, “earena”, “sweep”, “nfl” and “coliseum” added to the PEPSI mark); International Organization for Standardization ISO v. Quality Practitioners Institute and Website Pros, Inc. and Quality,WIPO Case No. D2005-1028 (“net” and “training” added to the ISO mark); Banca Intesa S.p.A v. Roshan Wickramaratna,WIPO Case No. D2006-0215 (“online” added to BANCAINTESA mark); Groupe Auchan v. Jakub Kamma,WIPO Case No. D2007-0565 (addition of the term “software” to the trademark AUCHAN).
Indeed, the Panel finds that the inclusion of the term “Irish” is particularly apt to mislead Internet users into believing that the web site published at the disputed domain name is operated by, or with the authorization of, the Complainant, which actually operates in Ireland.
In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires that the Complainant demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
It is established in paragraph 4(a) of the Policy that the Complainant has the burden of proof. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.
Accordingly, in line with previous UDRP decisions, it is well-established that it is sufficient that the Complainant make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (See Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393; Accor v. Eren Atesmen, WIPO Case No. D2009-0701).
In the case at hand, the Panel finds that the Complainant has made a prima facie case and that the Respondent, by not submitting a Response, has failed to prove any of the circumstances that could demonstrate, pursuant to paragraph 4(c) of the Policy, rights or legitimate interests in the disputed domain name.
According to the documents and statements submitted by the Complainant, there is no relation between the Respondent and the Complainant, the Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademark or to register the disputed domain name.
In addition, there is also no indication before the Panel that the Respondent might be commonly known by the disputed domain name or have used or made preparations to use the disputed domain name in connection with a bona fide offering of goods or services, or with a legitimate, noncommercial or fair use.
The Panel is also satisfied that the pointing of the disputed domain name, confusingly similar to the Complainant’s marks, to a parking page with PPC links does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use.
The Panel therefore finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant demonstrate that the disputed domain name has been registered and is being used in bad faith.
The Panel finds that, in light of the prior registration and use of the trademarks of the Complainant and of the substantial correspondence of the disputed domain name with the domain name owned and used by the Complainant, the Respondent’s registration of the disputed domain name cannot be ascribed to a mere coincidence.
In view of the above and in the absence of a Response, the Panel finds that the Respondent was likely aware of the Complainant and its trademarks at the time of the registration of the disputed domain name.
As to the use of the disputed domain name, the evidence on records shows that it was previously pointed to a landing page displaying PPC links mainly referred to cottages in Ireland. The Panel finds that this use could lead Internet users to believe that the Respondent’s web site was either maintained by the Complainant or by another individual or entity somehow linked with the Complainant. The Panel also believes that the Respondent may have benefited directly or indirectly from such confusion, for instance, by receiving “click-through” commissions (see also Humana Inc. v. Domain Deluxe,WIPO Case No. D2005-0231).
Therefore, the Panel finds paragraph 4(b)(iv) of the Policy to be applicable in this case since the Respondent has attempted to attract Internet users to its web site for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of its web site and of the products promoted therein.
At the time of the drafting of this decision, the disputed domain name is not pointed to an active web site.
However, as mentioned in prior UDRP cases, the Panel notes that passive holding of a domain name does not prevent the finding of bad faith use. See, amongst others, the leading case Telstra Corporation Limited v. Nuclear Marshmellows,WIPO Case No. D2000-0003.
The Panel also finds that the Respondent’s use of a privacy service and its failure to respond to the Complaint are additional circumstances evidencing the Respondent’s bad faith.
In view of the above, the Panel finds that the disputed domain name was registered and is being used in bad faith. 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.
Luca Barbero
Sole Panelist
Date: June 12, 2015
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