The Complainant is Helly Hansen AS of Oslo, Norway, represented by Crowell & Moring, LLP, Belgium.
The Respondent is Domain Admin Whois Privacy Corp. of Nassau, Bahamas. 2. The Domain Name and Registrar
The disputed domain name is registered with TLD Registrar Solutions Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 11, 2016. On February 12, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 February 17, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 8, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 11, 2016.
On March 12, 2016, a third party sent an email to the Center stating “Hi, The domain under discussion is no longer on my account! It was pushed by me to the Internetbs account registered on this email – []@ in AUGUST 2015 – prior to the complains [sic] issue. I am attaching a screenshot of the push receipt confirmation i have.” The attached screenshot apparently consists of an email from the Registrar in 2015 regarding a list of domain names pushed from one account to another. The Center acknowledged receipt on March 14, 2016 indicating that the Complaint was filed against the named Respondent and that the email would be forwarded to the Panel upon appointment. No other communication was received from the Respondent or third party.
The Center appointed William R. Towns as the sole panelist in this matter on March 17, 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, founded in 1877, produces and sells jackets and other outdoor and work-related apparel. The Complainant is headquartered in Oslo, Norway. The Complainant is the owner of the HELLY HANSEN trademark, and holds numerous registrations for the mark around the world, including a United States registration issued on December 11, 1984, a Community Trademark registration obtained on May 10, 1999, a Norwegian registration secured on May 11, 2009, and registrations in Austria, Japan, China and the Republic of Korea.
The Respondent registered the disputed domain name on July 13, 2015. The disputed domain name resolves to a website advertising the use of condoms with a link to another website where condoms are offered for sale. 5. Parties’ Contentions A. Complainant
The Complainant submits that the disputed domain name is confusingly similar to its HELLY HANSEN mark, which the Complainant asserts is a well-known mark all over the world. The Complainant maintains that the disputed domain name incorporates the Complainant’s HELLY HANSEN mark in its entirety, and that the addition of a hyphen and the dictionary word “workwear” does not serve to distinguish the disputed domain name from the Complainant’s mark.
The Complainant maintains that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. According to the Complainant, the Respondent is not commonly known by the disputed domain name and has not acquired trademark or service mark rights in HELLY HANSEN. The Complainant further avers that the Respondent has not been authorized to use the Complainant’s mark. According to the Complainant, the Respondent’s use of the disputed domain name to divert Internet users to a website advertising the use of condoms and linked to another website where condoms are sold is neither a legitimate noncommercial use of the disputed domain name nor use of the disputed domain name with a bona fide offering of goods or services.
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The Complainant maintains that the Respondent must have been aware of the Complainant’s HELLY HANSEN mark when registering the disputed domain name. The Complainant urges that the addition of the dictionary word “workwear” is a direct reference to a type of product sold by the Complainant. The Complainant further observes that a cursory search by the Respondent when registering the disputed domain name would have revealed the Complainant’s trademark rights. The Complainant submits that the Respondent is seeking to capitalize on the reputation and fame of the Complainant’s mark by misleadingly suggesting to consumers that the Respondent’s website or products are recommended or endorsed by the Complainant. The Complainant further asserts that the Respondent’s use of a privacy service to conceal his or her identity is further evidence of bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions.
The Panel has considered the email from the third party of March 12, 2016, but finds it adds nothing of substance to the Panel’s consideration and Decision. 6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use (see Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774). Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting” (see Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187; and the Final Report of the WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 and 170).
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the respondent 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 with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the disputed domain name are the sole remedies provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a disputed domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the disputed domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. A. Identical or Confusingly Similar
The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain name is confusingly similar to the Complainant’s HELLY HANSEN mark, in which the Complainant beyond question has demonstrated rights. In considering the question of identity or confusing similarity, the first element of the Policy operates essentially as a standing requirement.1 The threshold inquiry under the first element of the Policy is framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar.
Applying this standard, the disputed domain name is confusingly similar to the Complainant’s HELLY HANSEN mark for purposes of the Policy. The addition of a hyphen followed by the word “workwear” does not serve to differentiate the disputed domain name from the Complainant’s mark. If anything, the addition of the word “workwear” compounds the confusing similarity with the Complainant’s mark, given that “workwear” is descriptive of products produced and sold by the Complainant.
Although the generic Top-Level Domain (“gTLD”) may in appropriate circumstances be considered when evaluating identity or confusing similarity, gTLDs may also be disregarded, and usually are not taken into consideration when evaluating the identity or confusing similarity between the complainant’s mark and the disputed domain name. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com,WIPO Case No. D2001-0374.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel finds that the Complainant has made a prima facie showing. The Respondent, without the Complainant’s authorization or consent, has registered a domain name that is confusingly similar to the Complainant’s mark, and is using the disputed domain name with a website advertising condoms and featuring a link to another website on which condoms are offered for sale.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not submitted a substantive response to the Complaint or otherwise, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
Based on the record in this proceeding the Panel considers it highly likely that the Respondent was aware of the Complainant and the Complainant’s HELLY HANSEN mark when registering the disputed domain name. In the absence of any reply by the Respondent, the Panel concludes that the Respondent registered the disputed domain name in order to trade on the goodwill and reputation of the Complainant’s mark through the creation of Internet user confusion. See Levantur, S.A. v. Media Insight,WIPO Case No. D2008-0774.
The record before the Panel does not reflect the Respondent’s use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. To the contrary, the Respondent registered and is using the disputed domain name in order to divert Internet users to the Respondent’s website, providing a link to another website selling condoms, from which the Respondent in all likelihood derives revenue. Under the attendant circumstances, this does not constitute use of the disputed domain name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. See, e.g., Barceló Corporación Empresarial, S.A. v. Hello Domain,WIPO Case No. D2007-1380. Nor, in the circumstances of this case, does the Panel consider that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers, or that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy.
Accordingly, the Panel finds the Complainant has satisfied the requirements of 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 domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the 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. See 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 circumstances where the registrant seeks to profit from and exploit the trademark of another. See M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iv) of the Policy. As noted above, the Panel concludes that the Respondent was aware of the Complainant and had the Complainant’s mark in mind when registering the disputed domain name. The record demonstrates that the Respondent’s primary motive in relation to the registration and use of the disputed domain name has been to capitalize on or otherwise take advantage of the Complainant’s trademark rights for commercial gain, by intentionally creating a likelihood of confusion with the Complainant’s mark as to sponsorship, endorsement or affiliation with the Respondent’s website.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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.
William R. Towns
Sole Panelist
Date: March 31, 2016
1 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2.
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