The Complainant is HanesBrands Inc. of North Carolina, United States of America; DIM S.A.S. of Levallois-Perret, France; DBA LUX 1 S.A. of Luxembourg; DBApparel S.A.S. of Rueil Malmaison, France, represented by Kilpatrick Townsend & Stockton LLP, United States of America.
The Respondent is VistaPrint Technologies Ltd of Hamilton, Bermuda, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland. 2. The Domain Names and Registrar
The disputed domain names , , , are registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 31, 2015. On August 31, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 31, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 15, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 5, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 6, 2015.
The Center appointed Andrea Dawson as the sole panelist in this matter on October 22, 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 an international manufacturer and marketer of apparel under some of the world’s strongest apparel brands.
The Complainant acquired DBA Lux Holding S.A. and its subsidiaries DBA LUX 1 S.A., DIM S.A.S., and DBApparel S.A.S. (collectively, “DBA Lux”).
DBA Lux is a leading marketer of intimate apparel, hosiery and underwear in Europe.
The Complainant’s DBA division operates in Europe and utilizes the domain name , which it has owned since 2005.
The Complainant had net sales of over USD 5 billion in 2014, has over 50,000 employees worldwide, and has thousands of customers.
The Complainant owns, inter alia, the following trademark registrations (“DBA Marks”):
- Community trademark Registration N° 11066164 DBAPPAREL.
- United Kingdom trademark Registration N°2423248 DBAPPAREL.
- Benelux trademark Registration N°812855 DBAPPAREL.
- Spain trademark Registration N°2714397 DBAPPAREL.
The disputed domain name was registered on August 23, 2015.
The disputed domain name was registered on August 19, 2015.
The disputed domain name was registered on August 18, 2015.
The disputed domain name was registered on August 18, 2015. 5. Parties’ Contentions A. The Complainant
The Complainant states that the disputed domain names are identical and/or confusingly similar to The Complainant’s DBA Marks, as each fully incorporates the DBA mark. In addition, the disputed domain names are also identical to Complainant’s actual DBA domain name, that Complainant’s DBA division uses to communicate with its customers.
The Complainant states that the Respondent cannot demonstrate or establish any right or legitimate interest in the disputed domain names.
The Complainant further adds that there is no relationship between the Complainant and Respondent giving rise to any license, permission, or other right by which Respondent could own or use any domain name incorporating the DBA Marks, since it is not an authorized licensee of the Complainant’s marks, and has no right to exploit Complainant’s marks in any manner.
The Complainant asserts that the Respondent is neither using the disputed domain names in connection with a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the disputed domain names. Additionally, there is no evidence of any demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services.
The Complainant states that upon information and belief, the Respondent is using the disputed domain names solely for a scheme to divert funds intended for the Complainant to bank accounts presumably under the Respondent’s control. Such actions plainly cannot be a legitimate use of a domain name and also show bad faith registration and use.
The Complainant finally states that the Respondent’s bad faith is further confirmed by its pattern and history of registering domain names that are the trademarks of other parties, and also established by the likelihood that the Complainant’s customers will mistakenly believe the disputed domain names are connected to or associated with the Complainant.
Consequently, in view of the above-mentioned circumstances, the Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain names and that the Respondent registered and used the disputed domains name in bad faith. The Complainant requests that the Panel order transfer of the disputed domains name to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy stipulates that the Complainant must prove the following three elements in order to be successful in its action:
(i) The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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 used in bad faith. A. Identical or Confusingly Similar
The Complainant has been able to demonstrate that it has rights to the DBA Mark.
The threshold test that allows the Panel to determine if the disputed domain names are identical or confusingly similar to the Complainant’s trademarks under the UDRP involves a comparison between the trademark and the disputed domain names themselves.
In order for the Panel to determine that there is confusing similarity, the trademark needs to be recognizable as such within a domain name, with the addition of common or descriptive terms that are typically insufficient to avoid confusion.
In this particular case, the disputed domain names consist of the term “dba”, with the addition of the letters “eu”, which can be understood as a geographical indicator for the European Union. Consequently, the mere addition of such common abbreviation as “eu”, to a trademark is not sufficient to eliminate the confusing similarity with the mentioned trademark.
Furthermore, the Complainant is the owner of the domain name , the only difference with the disputed domain names being the Top-Level Domain suffix.
Finally taking into consideration both elements above, the similarity with the Complainant’s trademarks and the similarity with the Complainant’s domain name, there is a very high probability that Internet users may believe there to be a real connection between the disputed domain names and the Complainant. The overall impression cannot be denied.
For the above-cited reasons, the Panel concludes that the disputed domain names are confusingly similar to the Complainant’s trademark and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name.
However, many prior UDRP panels have established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in a domain name the burden of production shifts to the respondent to demonstrate that it does have rights or legitimate interests in the domain name.
The Panel agrees that the Complainant needs only to make out a prima facie case and finds that it has met that standard. The Panel accepts the arguments of the Complainant that the Respondent has not been authorized by the Complainant to use its trademark, or to seek registration of any domain name incorporating said mark and that the Respondent has no prior rights or legitimate interests in the disputed domain names.
The Panel finds that the Respondent is neither commonly known by the name “dbaeu” nor in any way affiliated with Complainant, nor authorized or licensed in any other way to use the DBA Mark.
The Complainant has provided proof that at one point the disputed domain names resolved to the Respondent’s websites on which the Respondent promotes its own purported VistaPrint website creation services. (Exhibit G.)
The Respondent has not provided any proof that it is using the disputed domain names in connection with a bona fide offering of goods or services; nor is there proof that it is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue, actually the proof provided by Complainant demonstrates the contrary. The use given to the disputed domain names (Exhibit F) is that of posing as an employee of the Complainant and diverting funds intended for the Complainant to bank accounts presumably under Respondent’s control.
Consequently, the Panel finds that the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain names have been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances which, in particular but without limitation, if found by the Panel to be present, shall be evidence of both registration and use of the disputed domain names in bad faith.
The Panel finds that the Complainant has submitted evidence, unchallenged by the Respondent, that the Respondent has registered the disputed domain name with the knowledge of the Complainant’s rights in the DBA trademark and that the Respondent’s bad faith is evidenced by several circumstances indicating that the Respondent must have been aware of the Complainant’s trademarks at the time of the registration of the disputed domain name.
“Dbaeu” is not a common term to the Panel’s knowledge. The Panel finds that it is implausible to conclude that the Respondent did not have the Complainant’s trademark and domain name in mind when registering the disputed domain names, since the disputed domain names are identical to the Complainant’s domain name and confusingly similar to Complainant’s trademarks. It is unlikely that the Respondent was unaware of the Complainant when it registered the disputed domain names.
In addition to the above, in this particular case, the evidenced provided by the Complainant allows the Panel to determine that the Respondent has registered the domain names primarily for the purpose of disrupting the Complainant and that by using the disputed domain names, it has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online 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.
As mentioned, the Panel finds that the Complainant has submitted evidence, unchallenged by the Respondent, that the disputed domain names have been used in connection with, to say the least, illegitimate activities or practices, to deceive or mislead the Complainant and the Complainant’s customers. Specifically, the Respondent is sending email messages with sender addresses using the disputed domain names – which are confusingly similar to Complainant’s actual domain name for DBA employee email – to the Complainant’s business customers. In these messages, the Respondent is posing as an employee of the Complainant and is providing new bank account information so that such amounts are deposited in the Respondents account and not the Complainants.
The Respondent’s bad faith is further confirmed by its pattern and history of registering domain names that are the trademarks of other parties.
Finally, the disputed domain names presently resolve to active PPC website, allowing this Panel to conclude that the use of the disputed domain names is not for any legitimate or noncommercial use, but for no use at all, which in accordance to many prior UDRP panels allows for the inference of registration and use in bad faith.
For the above-cited reasons, the Panel finds that the disputed domain names were registered and are being used in bad faith; therefore, the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case. 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 , , , be transferred to the Complainant.
Andrea Dawson
Sole Panelist
Date: November 6, 2015
Full & Egal Universal Law Academy