The Complainant is Victoria Beckham of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by Demys Limited, United Kingdom.
The Respondent is Whoisguard Protected, WhoisGuard, Inc of Panama. 2. The Domain Name and Registrar
The disputed domain name (the "Disputed Domain Name") is registered with eNom (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 8, 2015. On December 8, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 11, 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 December 14, 2015. In accordance with the Rules, paragraph 5, the due date for Response was January 3, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 4, 2016.
The Center appointed John Swinson as the sole panelist in this matter on January 8, 2016. 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 Victoria Beckham, a former Spice Girl and currently a fashion designer and businesswoman. The Complainant's eponymous label was launched in 2008, and a diffusion label (Victoria by Victoria Beckham) was launched in 2011. The Complainant is and has been known as a style icon for many years prior to the launch of her label. The Complainant's label has been named designer brand of the year and the Complainant has been named entrepreneur of the year in the United Kingdom. The Complainant is also the International Goodwill Ambassador for the Joint United Nations Programme on HIV/AIDS.
The Complainant owns the following registered trade marks for VICTORIA BECKHAM:
- Community Trade Mark number 2543320, registered January 22, 2007; and
- Community Trade Mark number 10935211, registered December 11, 2012,
(collectively, the "Trade Mark"). These registrations cover a number of different classes.
The Complainant also claims common law rights in the Trade Mark.
The Complainant owns the domain name , at which her products are offered for sale.
The Respondent is Whoisguard Protected, WhoisGuard Inc of Panama. The Respondent did not file a Response, and consequently little information is known about the Respondent.
The Respondent registered the Disputed Domain Name on February 24, 2004.
The website at the Disputed Domain Name features pay-per-click ("PPC") links relating to fashion and clothing. Some of these links refer specifically to the Complainant (but with her surname misspelled). There is a banner in the top right corner of the webpage which says "Buy this Domain", and which redirects to an Afternic page containing contact details in relation to the sale of the Disputed Domain Name. 5. Parties' Contentions A. Complainant
The Complainant makes the following contentions. Identical or Confusingly Similar Unregistered trade mark rights
The Complainant claims unregistered rights in the Trade Mark. The Complainant adopted the name "Victoria Beckham" when she married former professional football player David Beckham on July 4, 1999. Between 1994 and 2000, she was a member of the highly popular music group, the Spice Girls. She participated in the group under her married name from July 1999. After the Spice Girls disbanded, the Complainant pursued a solo music career in her own name, and released three singles between 2001 and 2003.
The Complainant has appeared on television and in films under her own name on numerous occasions. She also appeared in three autobiographical documentaries prior to the Respondent registering the Disputed Domain Name.
The Complainant has been commercially exploiting the goodwill that she has built up in her name and in the Trade Mark, which allows her to enjoy unregistered rights in her name. Comparison of Trade Mark to Disputed Domain Name
The Disputed Domain Name is confusingly similar to the Trade Mark in that it only differs by the lack of the letter "h". This does not distinguish the Disputed Domain Name from the Trade Mark. Rights or Legitimate Interests
The Respondent does not have any rights or legitimate interests in the Disputed Domain Name.
The Complainant has found no evidence that the Respondent has been commonly known by or traded as the Disputed Domain Name, or that it owns a registered trade mark which incorporates the Disputed Domain Name. The Complainant has not granted its consent nor a license to the Respondent for its use of the Disputed Domain Name.
The Respondent's use of the Disputed Domain Name for PPC advertising cannot be construed as a legitimate noncommercial or fair use.
Given the Complainant's fame, there is no conceivable use for the Disputed Domain Name that could confer any legitimate interest on the Respondent. Registered and Used in Bad Faith
The Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Trade Mark as to the source, sponsorship, affiliation or endorsement of its website (paragraph 4(b)(iv) of the Policy).
The Disputed Domain Name is a typographical variation of the Trade Mark. The Complainant cannot conceive of any circumstances under which the redirection of the Disputed Domain Name to PPC advertising for competing services could not be considered bad faith registration and use under the Policy. The PPC advertisements direct Internet users to third party clothing retailers and designers, and to other competitors of the Complainant.
The Respondent intended to target the value in the Trade Mark and financially benefit through the display of PPC advertising relating directly to the Complainant and her activities. Such use is likely to cause confusion among Internet users searching for the Complainant, and may cause them to be redirected to third parties and competitors of the Complainant.
Finally, the Disputed Domain Name is listed for sale, which suggests that the Respondent registered the Disputed Domain Name primarily for the purpose of selling to the Complainant for valuable consideration in excess of its out-of-pocket costs (paragraph 4(b)(i) of the Policy). B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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 has been registered and is being used in bad faith.
The onus of proving these elements remains on the Complainant even though the Respondent has not filed a Response. A. Procedural Issues
The Respondent's failure to file a response does not automatically result in a decision in favour of the Complainant (see e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyP,WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondent's default. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Disputed Domain Name differs from the Trade Mark only by an omitted letter (the letter "h" in "Beckham"). It is well established that "typosquatting" can constitute confusing similarly (Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc.,WIPO Case No. D2001-1314; DaimlerChrysler Corporation v. Worshipping, Chrisler, and Chr, aka Dream Media and aka Peter Conover,WIPO Case No. D2000-1272 and Playboy Enterprises v. Movie Name Company,WIPO Case No. D2001-1201).
The Panel accordingly determines that the Disputed Domain Name is confusingly similar to the Trade Mark. The Complainant succeeds on the first element of the Policy. C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel finds that the Complainant has made out a prima facie case. This finding is based upon the following:
- The Respondent has not used, or made demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services. The website at the Disputed Domain Name displays PPC advertising links. These links refer to the Complainant, and redirect Internet users to third party retail providers which sell the Complainant's and other designer products. In the circumstances, the Respondent's use is not bona fide.
- The Complainant has not authorized, licensed or otherwise permitted the Respondent to use the Trade Mark or the Disputed Domain Name.
- The Respondent has not been commonly known by the Disputed Domain Name, and has no trade marks which incorporate the Disputed Domain Name.
- The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain. The Panel considers it likely that the Respondent is generating advertising or affiliate referral revenue from the various PPC links provided at the Disputed Domain Name.
- As previous panels have found, typosquatting does not constitute a legitimate use of the Trade Mark (see, e.g., Hartford Fire Insurance Company v. Zhichao Yang,WIPO Case No. D2015-1551, and the cases cited therein).
The Respondent had the opportunity to demonstrate its rights or legitimate interests, but did not do so. In the absence of a Response from the Respondent, the prima facie case established by the Complainant has not been rebutted.
In light of the above, the Complainant succeeds on the second element of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The Trade Mark was first registered on January 22, 2007. However, the Complainant is also claiming common law rights in the Trade Mark, with a date of first use on July 4, 1999.
In order to successfully assert common law or unregistered trade mark rights, the Complainant must show that the Trade Mark has become a distinctive identifier associated with the Complainant or the Complainant's goods or services (i.e., that the Trade Mark has acquired a "secondary meaning"). It is well established that famous people using their name in trade and commerce can have a common law trade mark in their public name for the purposes of the Policy. See, e.g., Julia Fiona Roberts v. Russell Boyd,WIPO Case No. D2000-0210; Van Morrison and Exile Productions Limited v. Unofficial Club de Van Morrison,WIPO Case No. D2002-0417 and Nicole Kidman v. John Zuccarini d/b/a Cupcake Party,WIPO Case No. D2000-1415.
The Complainant was married to David Beckham (who was, at the time, a high profile professional football player) on July 4, 1999. Given that the Complainant was a member of the Spice Girls at that time, this was a highly publicized marriage. The Complainant continued to be a member of the Spice Girls, and was known by her married name. Although the Spice Girls split up not long after the Complainant was married, the Complainant continued in the public eye. She pursued a solo music career for a short time in the early 2000s, and appeared on television. More recently, the Complainant has gained a reputation in fashion, and owns an eponymous fashion label.
The Complainant has used the Trade Mark extensively in trade and commerce since July 4, 1999. The Panel is satisfied that the Complainant has held common law rights in the Trade Mark since that date.
In 2004, when the Respondent registered the Disputed Domain Name, the Complainant had already been in the public eye for around ten years, and was a globally recognised celebrity. The Complainant had been known by her married name, which corresponds with the Trade Mark, for half of that time. Previous UDRP panels have found that where the reputation of a complainant in a given mark is significant and the mark has strong similarities to the disputed domain name, the likelihood of confusion is such that bad faith may be inferred (see, e.g., Verner Panton Design v. Fontana di Luce Corp,WIPO Case No. D2012-1909 and cases cited therein).
Given that the Disputed Domain Name is a misspelling of the Trade Mark, and that the PPC advertising links on the website at the Disputed Domain Name direct Internet users to various websites through which they can purchase the Complainant's products, the Panel finds it inconceivable that the Respondent was not aware of the Trade Mark at the time the Disputed Domain Name was registered.
Previous UDRP panels have found that if a respondent has engaged in typosquatting, that is sufficient to establish registration and use in bad faith (Barnes & Noble College Bookstores, Inc. v. Oleg Techino,WIPO Case No. D2006-1537; E, Inc. v. Yingkun Guo, dba This domain is 4 sale,WIPO Case No. D2006-0694; Sephora v. WhoisGuard,WIPO Case No. D2006-0845). As previously mentioned, this is a clear case of typosquatting, where the Respondent has registered the Disputed Domain Name which is identical to the Trade Mark save for one omitted letter. The Respondent clearly intended to divert traffic from the Complainant's website to the Respondent's website. The Panel finds that this constitutes bad faith registration and use under paragraph 4(b)(iv) of the Policy.
In light of the above, and in the absence of a Response and any evidence rebutting bad faith registration and use, the Panel finds that the Complainant has succeeded on the third element 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 Name be transferred to the Complainant.
John Swinson
Sole Panelist
Date: January 19, 2016
Full & Egal Universal Law Academy