The Complainant is Well Known Media Limited of Ramsey, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Pinsent Masons LLP, United Kingdom.
The Respondent is TechShaper Domains of Jessore, Dhaka, Bangladesh. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 29, 2015. On July 29, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 30, 2015, 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 August 7, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 27, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 28, 2015. The Center received an informal communication from the Respondent on September 1, 2015.
The Center appointed Lynda M. Braun as the sole panelist in this matter on September 4, 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.
The Panel has determined that the language of the proceeding is English. Paragraph 11(a) of the Rules provides that “[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement […].” 4. Factual Background
The Complainant, a United Kingdom-based technology company, is the owner of the domain name , which it registered on November 1, 2004. The Complainant then established the website “www.”, which allows users to download computer software. It has a section that contains a list of most recently updated computer programs, and another section which lists the most popular downloads. The computer programs are organized into categories and the Complainant’s website contains information about computer programs as well as articles containing recent technology news. According to the Complainant, the aim of the website is to provide users with the simplest method of downloading the newest versions of the best software.
The Complainant owns several trademark registrations for FILEHIPPO (the “FILEHIPPO Mark”) worldwide, including the following:
- United Kingdom Trademark FILEHIPPO, registered on September 18, 2009, in International Classes 9, 35 and 42;
- Community Trade Mark FILEHIPPO, registered on August 10, 2010, in International Classes 9, 35 and 42; and
- United States of America Trademark FILEHIPPO, registered on October 4, 2011, in International Classes 9, 35, 39 and 42.
As a result of the Complainant’s continuous use for eleven years of the FILEHIPPO Mark and associated domain name, it has acquired goodwill and gained a reputation in relation to the products and services for which the FILEHIPPO Mark is registered.
The Respondent registered the Disputed Domain Name on August 13, 2014. When the Complainant first became aware of the Disputed Domain Name, the Disputed Domain Name resolved to a website that appeared to mirror the Complainant’s website. The Respondent then changed its WhoIs information listed with the Registrar and also changed its website so that computer software could be downloaded. Finally, the Respondent changed its website once again to include a disclaimer on its homepage to disclaim any affiliation or association with the Complainant.
On June 10, 2015, the Complainant sent a cease-and-desist letter to the Respondent, informing the Respondent of the Complainant’s rights in the trademark registrations for the FILEHIPPO Mark and requesting that the Respondent cease and desist its use of the Disputed Domain Name and website to which the Disputed Domain Name resolved. The Respondent responded by email on June 14, 2015, agreeing to the Complainant’s demands. However, soon after, the Respondent did not comply with the demands, but changed its WhoIs information without including the required contact information. The present UDRP proceeding was subsequently filed.
As of the writing of this Decision, the Disputed Domain Name resolves to a page which states: “The www.Pc domain, IP address, or hostname you have searched for is not active or we are unable to successfully process your query for www.Pc.” 5. Parties’ Contentions A. Complainant
The following are the Complainant’s contentions:
- The Disputed Domain Name is confusingly similar to the Complainant’s trademark.
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
- The Disputed Domain Name was registered and is being used in bad faith.
The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. However, after the Respondent’s default, the Respondent sent a non-substantive communication to the Center. 6. Discussion and Findings
In order for the Complainant to prevail and have the Disputed Domain Name transferred, the Complainant must prove the following (Policy, paragraph 4(a)):
(i) The Disputed 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 in respect of the Disputed Domain Name; and
(iii) The Disputed Domain Name was registered and is being used in bad faith. A. Identical or Confusingly Similar
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.
It is uncontroverted that the Complainant has established rights in the FILEHIPPO Mark based on both continuous use as well as its ownership of several trademark registrations for the FILEHIPPO Mark. The Disputed Domain Name consists of the FILEHIPPO Mark preceded by the descriptive abbreviation “pc” (which typically stands for “personal computer”), and followed by the generic Top-Level Domain (“gTLD”) “.com”. “The fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy.” Six Continent Hotels, Inc. v. The Omnicorp,WIPO Case No. D2005-1249 (quoting Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903).
The Panel finds that the Disputed Domain Name is nearly identical and is confusingly similar to the Complainant’s FILEHIPPO Mark. The abbreviation “pc” in the Disputed Domain Name is descriptive and implies that the website provides information about personal computer services. Potential consumers encountering the Disputed Domain Name would likely expect that the abbreviation “pc” describes the services offered by the Complainant under its FILEHIPPO Mark.
Numerous UDRP panel decisions have reiterated that the addition of a descriptive or generic word to a trademark is generally insufficient to avoid confusing similarity. Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo,WIPO Case No. D2011-0795; Hoffmann-La Roche, Inc. v. Wei-Chun Hsia,WIPO Case No. D2008-0923; Nintendo of America, Inc. v. Fernando Sascha Gutierrez,WIPO Case No. D2009-0434; Weight Watchers International Inc. v. Kevin Anthony,WIPO Case No. D2011-2067.
This is especially true where, as here, the descriptive or generic word is associated with the Complainant and its services. See, e.g., Gateway Inc. v. Domaincar,WIPO Case No. D2006-0604 (finding the domain name confusingly similar to the trademark GATEWAY because the disputed domain name contained “the central element of the Complainant’s GATEWAY marks, plus the descriptive word for the line of goods and services in which the Complainant conducts its business”).
Finally, the addition of a gTLD such as “.com” after a domain name is technically required. Thus, it is well established that such element may generally be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182.
Accordingly, the first element of paragraph 4(a) has been met by the Complainant. B. Rights or Legitimate Interests
Under the Policy, a complainant may make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name at issue. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
The Complainant has not authorized, licensed or otherwise permitted the Respondent to use its FILEHIPPO Mark. The Complainant does not have any type of business relationship with the Respondent, nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name. Instead, the Panel finds that the Respondent was improperly using the Disputed Domain Name for commercial gain. The only uses that the Respondent has made of the Disputed Domain Name are to host websites similar to the Complainant’s own official website and to hold the Disputed Domain Name passively. These uses do not give rise to rights or legitimate interests on the part of the Respondent. The Chase Manhattan Corp. v. Whitely,WIPO Case No. D2000-0346.
Finally, where a respondent has registered and used a domain name in bad faith (see the discussion below), the respondent cannot for that reason be found to have made a bona fide offering of goods or services.
In this case, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent has not submitted any substantive arguments or evidence to rebut the Complainant’s prima facie case.
Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant. C. Registered and Used in Bad Faith
This Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.
The Panel finds that the Respondent surely knew or should have known of the Complainant’s rights in its FILEHIPPO Mark when registering the Disputed Domain Name. According to the Complaint, the Respondent placed a disclaimer on its website homepage to disclaim endorsement by or affiliation with the Complainant; this demonstrates that the Respondent was well aware of the Complainant and its rights.
The Respondent’s action of registering the Disputed Domain Name and using it to direct Internet traffic to its website, despite its use of a disclaimer, evidences a clear intent to disrupt the Complainant’s business, deceive customers and trade off the Complainant’s goodwill by creating an unauthorized association between the Respondent and the Complainant’s FILEHIPPO Mark. See Banco Bradesco S.A. v. Fernando Camacho Bohm,WIPO Case No. D2010-1552.
Based on the circumstances here, the Panel finds the Respondent used the Disputed Domain Name in bad faith by attempting to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s FILEHIPPO Mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. The Respondent’s registration and use of the Disputed Domain Name indicates that such registration and use was done for the specific purpose of trading on the name and reputation of the Complainant and its FILEHIPPO Mark. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “M”,WIPO Case No. D2000-0847 (“[t]he only plausible explanation for Respondent’s actions appears to be an intentional effort to trade upon the fame of Complainant’s name and mark for commercial gain” and “[t]hat purpose is a violation of the Policy, as well as U.S. Trademark Law.”).
Therefore, based on the foregoing, the Panel concludes that the Respondent registered and is using the Disputed Domain Name in bad faith.
Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant. 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.
Lynda M. Braun
Sole Panelist
Date: September 8, 2015
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