The Complainant is Nextten Stauer, LLC of West Burnsville, Minnesota, United States of America ("US"), represented by ThompsonMcMullan, P.C., US.
The Respondent is Zhichao Yang of Hefei, Anhui, China. 2. The Domain Names and Registrar
The disputed domain names and are registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 3, 2015. On November 4, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 4, 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 proceeding commenced on November 16, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 6, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 8, 2015.
The Center appointed Michel N. Bertschy as the sole panelist in this matter on December 21, 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 retailer specializing in jewelry and watches. The Complainant has used the mark STAUER in connection with the sale of watches and jewelry since August 2003 and owns a substantial number of registrations for the mark in various countries including the US, the European Union, China, Australia, New Zealand and Thailand.
The Complainant also owns and operates a website in connection with the domain name , first registered on May 6, 2003. Through this website, the Complainant offers jewelry and watches for sale.
The disputed domain names were respectively registered on June 8, 2012 and September 11, 2013.
A reverse WhoIs search undertaken on October 29, 2015 revealed 6,360 domain name registrations owned, used and/or connected with the Respondent. Moreover, 11 UDRP cases have been filed against the Respondent by a variety of trademark holders, all of which resulted in the transfer or the cancellation of the disputed domain names. 5. Parties' Contentions A. Complainant
The Complainant contends the following:
1. Identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant's registrations demonstrate the notoriety of the trademark and the extent to which the STAUER brand is closely associated with the Complainant by relevant consumers. Because of the Complainant's long-standing use of STAUER in connection with jewelry and watches and various other goods and services, consumers have come to associate the trademark with Stauer, and Stauer has therefore firmly established trademark rights to the STAUER mark. The Complainant also owns and operates a website in connection with the domain name registered on May 6, 2003, through which the Complainant offers jewelry and watches for sale.
The disputed domain names are confusingly similar to the Complainant's trademark because each contain a common or obvious misspelling or alteration of STAUER and the misspelled trademarks are the dominant or principal component of the disputed domain names (Wachovia Corporation v. Peter Carrington,WIPO Case No. D2002-0775; Humana Inc. v. Cayman trademark Trust,WIPO Case No. D2006-0073; Express Scripts, Inc. v. Whois Privacy Protection Service Inc. / Domaindeals, Domain Administrator,WIPO Case No. D2008-1302).
2. The Respondent has no rights or legitimate interests in respect of the disputed domain names.
The Respondent has not made any legitimate bona fide offering of goods or services under the Complainant's trademark in its original or misspelled form. On the contrary, through the registration of the disputed domain names, the Respondent diverts Internet users to a page that offers, among other things, links to products that directly compete with the Complainant's wares. The sole purpose of the respondent's domain names is to resolve to a pay-per-click advertising websites and collect click-through revenue from advertising links. There is no indication on the website that the Respondent has made a bona fide use of the disputed domain names. Past UDRP decisions have noted that the use of a domain name to post parking and landing pages or pay-per-click links may be permissible in some circumstances, but the use would not of itself confer rights or legitimate interests arising from a bona fide offering of goods or services, or from legitimate noncommercial or fair use of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder (WIPO Overview of WIPO Panel Views of Selected UDRP Questions ("WIPO Overview 2.0"), Section 2.6). The Respondent neither is known by a name consisting in whole or in part of the trademark nor is an agent or licensee of the Complainant. Moreover, the Respondent's use is solely for commercial gain. In the view of this, the Respondent has sought knowingly and intentionally to confuse consumers seeking the Complainant and its website.
3. The disputed domain names were registered and are being used in bad faith.
The disputed domain names are being used for the commercial advertising of watches and jewelry of the Complainant's competitors. Given the fame of the STAUER trademark in China and elsewhere throughout the world, the registration and subsequent advertising use of the disputed domain names represents an intent to mislead Internet users seeking the website of the Complainant by presenting such users with advertising for other competitor's products on domain names that can be reached by misspellings of the STAUER trademark. The use of the disputed domain names in this manner is consistent with the illustration of bad faith in paragraph 4(b)(iv) of the Policy (Rolex Watch U.S.A., Inc. v. Vadim Krivitsky,WIPO Case No. D2008-0396).
Moreover, the Complainant sent two letters to the physical and email addresses listed in the WhoIs records corresponding to the disputed domain names. The Complainant received no answers. Further still, a reverse WhoIs search undertaken on October 29, 2015 revealed 6,360 domain name registrations owned, used and/or connected with the Respondent. Moreover, 11 UDRP cases have been filed against the Respondent by a variety of trademark holders, all of which resulted in the transfer or the cancellation of the disputed domain names. The sheer number of domain names registered by the Respondent when considered with the fact that the Respondent has registered two disputed domain names that are misspellings of the STAUER trademark suggests a pattern of bad faith registrations. Finally, the Complainant notes that "[…] even if the advertising links served up to visitors on the website associated with the Domain name are automated, the Respondent remains responsible for the uses to which the Domain Name is put" (Rolex Watch U.S.A., Inc. v. Vadim Krivitsky,WIPO Case No. D2008-0396). Accordingly, regardless of whether the advertising links found on the disputed domain names were put there by the Respondent or not, the Respondent is still responsible for their appearance on the websites associated with the disputed domain names.
4. Remedies Requested.
For the reasons described above, the Complainant requests the Panel that the disputed domain names be transferred 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 requires the complainant to prove that the respondent has registered a domain name which is: (i) 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. The Complainant must prove each of these three elements. A. Identical or Confusingly Similar
The Complainant has demonstrated that it has rights in the STAUER trademarks. To establish confusing similarity, the Complainant's trademarks should be recognizable as such within the disputed domain names. Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the Complainant's registered marks with the second level domain name of the disputed domain names.
It is also well-established that a generic Top-Level Domain ("gTLD") (i.e. ".com") should typically not be taken into consideration for the purposes of evaluating whether a disputed domain name is identical or confusingly similar to the complainant's marks in question. Further, a domain name which contains a common or obvious misspelling of a trademark will normally be found to be confusingly similar to the trademark if the misspelt trademark remains the dominant or principal component of the domain name ("typosquatting"; Express Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator,WIPO Case No. D2008-1302; Zions Bancorporation v. Whois Privacy Service Pty Ltd / Mike Patterson,WIPO Case No. D2013-0866 and Zions First National Bank v. Xu Shuaiwei / Domain Administrator, see PrivacyG,WIPO Case No. D2015-1177).
In the present case, the Panel agrees with the Complainant that the dominant part of the disputed domain names contains a name that is confusingly similar to the Complainant's STAUER trademark and the Complainant's domain name also. This is because the disputed domain names only differ from the trademarks by the inversion of the letters "a" and "t" in and the addition of the letter "s" in .
It is conceivable that an Internet user searching for the Complainant's website may erroneously misspell STAUER when keying in the Complainant's domain names or making an Internet search. This would have the effect of redirecting traffic meant for the Complainant's website to the Respondent's.
The Panel therefore finds that paragraph 4(a)(i) of the UDRP is satisfied. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain names. Once the complainant establishes a prima facie case showing that the respondent has no rights or legitimate interests in the disputed domain names, the burden of production shifts to the respondent. The burden of proof, however, remains with the complainant to prove each of the three elements of paragraph 4(a) of the Policy (Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Panel finds that the sole purpose of the disputed domain names is to resolve to pay-per-click advertising websites and to collect click-through revenue from advertising links. There is no indication on the website that the Respondent has made a bona fide use of the disputed domain names.
The Complainant has therefore established a prima facie case that the Respondent lacks rights or legitimate interests in respect of the disputed domain names and there has been no rebuttal by the Respondent. Nothing in the record gives reason to believe that the Respondent has any rights or legitimate interests in respect of the disputed domain names.
Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a disputed domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the disputed domain name; or
(ii) circumstances indicating that the respondent registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding disputed domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). The overriding objective of the Policy is "to curb the abusive registration of domain names in the circumstances where the registrant is seeking to profit from and exploit the trademark of another" (M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230).
In this case, the disputed domain names differ from the Complainant's trademarks by the inversion of the letters "a" and "t" in and the addition of the letter "s" in . Noting also the content of the website at the disputed domain names, the Panel finds more likely than not that the Respondent has intentionally registered the disputed domain names, which are confusingly similar to the Complainant's trademarks, and has intentionally diverted Internet users to a website appearing to offer the same or similar products as those offered by the Complainant. Such registration and use can only be motivated by commercial gain. The Panel fails to see what other legitimate motivation the Respondent's conduct can have and the Respondent has failed to present any evidence of good faith use of the disputed domain names.
The Panel therefore considers that the Respondent's conduct in this case constitutes bad faith registration and use of the disputed domain names within the meaning of paragraph 4(b)(iv) of the Policy.
Accordingly, the Complainant has satisfied all three elements of paragraph 4(a) 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.
Michel N. Bertschy
Sole Panelist
Date: January 4, 2016
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