The Complainant is Footwear Industries Pty Ltd of Malaga, Australia, represented by Williams + Hughes, Australia.
The Respondent is Peter Zanis of Sydney, Australia. 2. The Domain Name and Registrar
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 February 5, 2016. On February 5, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent's contact details. The Center sent an email communication to the Complainant on February 15, 2016, inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on February 15, 2016.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 15, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 6, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 7, 2016.
The Center appointed David Stone as the sole panelist in this matter on March 15, 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 a manufacturer of safety footwear, including boots. The primary market of the Complainant is Australia but it also supplies its safety footwear internationally in the United States of America ("USA"), Europe (e.g., the United Kingdom of Great Britain and Northern Ireland, Germany, Belgium, the Netherlands, Ireland, Denmark), the Middle East region, Asia, South Africa and New Zealand.
The Complainant owns several word and figurative trademarks for STEEL BLUE, including but not limited to: Australian Trademark registration number 677200, registered on November 3, 1995; Australian Trademark registration number 1050841 registered on April 14, 2005; Australian Trademark registration number 1373454, registered on July 21, 2010; Benelux Trademark registration number 829816, registered on March 31, 2004; International Trademark registration number 895894, registered on August 4, 2006 (covering Switzerland, the European Union, Mongolia, Norway, Russian Federation and the USA); International Trademark registration number 863133, registered on September 16, 2005 (covering Switzerland, China and the European Union).
As evidenced in the Complaint at the time the Complaint was filed, the disputed domain name provided links to third party websites offering safety boots and shoes.
The Respondent did not meet the deadline of March 6, 2016 for responding to the Complaint. 5. Parties' Contentions A. Complainant
The Complainant asserts that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant also asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the Respondent has registered and has subsequently used, and is using, the disputed domain name in bad faith.
The Respondent has not made, and is not making, a legitimate noncommercial use of the disputed domain name. The Respondent is using the disputed domain name to post pay-per-click links to the Complainant's competitors, including Cotton Traders and Debenhams. Such use demonstrates that the Respondent has used the disputed domain name to derive a commercial benefit.
The Complainant requests that the disputed domain name be transferred to it. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy sets out the three requirements that the Complainant must prove in order to succeed:
(i) that the Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has demonstrated in the Complaint that it is the owner of rights in several trademarks including the words "steel blue", both through registration as a trademark in several countries, including but not limited to Australia, the European Union and the USA, and through long use. These trademarks pre-date the Respondent's registration of the disputed domain name.
Other than the addition of the word "boots" at the end of the disputed domain name, the disputed domain name is identical to the Complainant's trademark. The addition of the word "boots" is insufficient to vitiate the confusing similarity. The disputed domain name wholly incorporates the Complainant's registered trademark and the additional word "boots" only describes the products of the Complainant. The additional word therefore strengthens the supposition that it is connected to the Complainant's trademarks.
The Panel therefore finds that the Complainant has satisfied the condition set out in the Policy, paragraph 4(a)(i), and that the disputed domain name is confusingly similar to the Complainant's trademarks in which the Complainant has rights. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the criteria which determine whether a domain name registrant has rights or legitimate interests in a domain name, namely if it has a:
(i) prior bona fide offering of goods or services:
(ii) common association with the domain name; or
(iii) legitimate noncommercial use.
The Respondent does not appear to offer any goods or services in connection with the disputed domain name. Rather, at the time the Complaint was filed, the disputed domain name provided links with footwear subjects such as "Safety Steel Toe Boots", "Safety Word Boots", "Waterproof Mens [sic] Boots", etc. When an Internet user clicked on one of the subjects, the user was directed to a further page listing links to competitors of the Complainant.
The Complainant has set out a prima facie case further to the criteria set out above, relating to paragraph 4(c) of the Policy, demonstrating that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Respondent has not replied to the Complaint and thus has not presented any evidence or elements to justify any rights or legitimate interest in connection with the disputed domain name.
There is no indication that any of the circumstances described in paragraph 4(c)(i) – (iii) of the Policy applies to the present matter.
Therefore, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) sets out the non-exhaustive criteria for bad faith. Bad faith constitutes the intention to register and use a domain name in order to:
(i) sell, rent or transfer the domain name to the trademark owner (or a competitor thereof) for a profit;
(ii) prevent the trademark owner from registering its trademark in a domain name;
(iii) disrupt the business of a competitor; or
(iv) divert Internet traffic for commercial gain.
The Complainant has two main contentions in relation to the disputed domain name being registered and used in bad faith and has submitted evidence to this effect.
First, regarding paragraph 4(b)(iii) of the Policy, the Complainant contends that the Respondent knew or ought to have known of the existence of the STEEL BLUE trademarks because of the Complainant's extensive advertising in Australia (where the Respondent is based). The fact that the disputed domain name provided footwear subjects which linked to competitors of the Complainant demonstrates the Respondent's knowledge of the Complainant's rights and is evidence of acting in bad faith.
Second, regarding paragraph 4(b)(iv) of the Policy, the Complainant submits that the Respondent is acting in bad faith by registering the disputed domain name for the commercial benefit derived from the confusion of Internet users. The purpose of the confusion is to increase the number of users being drawn to the disputed domain name and, consequently, to divert web traffic to competitors to the detriment of the Complainant.
The Panel therefore finds that the criteria in the Policy in paragraphs 4(b)(iii) and 4(b)(iv) are made out, and that there is sufficient evidence to find that the Respondent registered and is using the disputed domain name 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.
David Stone
Sole Panelist
Date: March 21, 2016
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