The Complainant is Icewind TLC, LLC of Phillipsburg, New Jersey, United States of America, represented by Roger H. Doumanian, United States of America.
The Respondent is Kevin Settineri d/b/a as RigtPuppy / xxx xxx of Salisbury, North Carolina, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 12, 2016. On March 14, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 15, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 16, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on March 23, 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 March 24, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 13, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 15, 2016.
The Center appointed William R. Towns as the sole panelist in this matter on April 26, 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, a limited liability company organized in 2006, provides kennel and dog breeding services, including breeding services for Shibas. The Complainant is the owner of United States trademark registrations for ICEWIND FARM and ICEWIND, issued by the United States Patent and Trademark Office (“USPTO”) on July 26, 2011, and November 3, 2015, respectively (hereinafter collectively referred to as the “ICEWIND marks”). The Complainant asserts it has provided kennel and dog breeding services under the ICEWIND marks since its formation in 2006.
The Respondent registered the disputed domain name on January 20, 2009, according to WhoIs records maintained by the Registrar. The disputed domain name has been used by the Respondent with a website on which he holds himself out as a breeder of Shiba Inus and offers Shiba puppies for sale. The disputed domain name presently does not resolve to an active website.
The Complainant learned of the Respondent’s website in March 2015, and thereafter contacted the Respondent’s daughter, requesting the transfer of the disputed domain name. The Complainant, after receiving no reply, instructed its attorney to send a cease and desist letter to the Respondent. Subsequently, in January 2016, the Complainant received an email communication from the Respondent’s daughter, who advised “we are willing to sell it for $500.” However, after the Complainant’s attorney contacted the Respondent’s daughter to arrange for the transfer of the disputed domain name, the Respondent indicated somewhat crudely that he would have nothing further to do with the Complainant, and stated he would instead “sell the domain name to someone else.” 5. Parties’ Contentions A. Complainant
The Complainant submits that it has established rights in the ICEWIND marks through registration and use, and that the disputed domain name is confusingly similar to the Complainant’s marks. According to the Complainant, the inclusion of the word “shibas” does not distinguish the disputed domain name from the Complainant’s mark.
The Complainant maintains that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant avers that the Respondent has not been commonly known by the disputed domain name, and has not been authorized to use the Complainant’s ICEWIND marks. The Complainant submits that the Respondent has neither used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods are services, nor made a legitimate noncommercial or fair use of the disputed domain name. To the contrary, the Complainant asserts that the Respondent is using the disputed domain name to divert Internet users to the Respondent’s website by creating the false and misleading impression that the Respondent’s website is affiliated with the Complainant.
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The Complainant explains that the Respondent had business dealings with the Complainant prior to registering the disputed domain name, and had “in-depth knowledge” of the Complainant’s business and ICEWIND marks. The Complainant submits that the Respondent sought for commercial gain to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s ICEWIND marks as to source, sponsorship, affiliation or endorsement of the Respondent’s website. The Complainant observes that the Respondent’s website represented that purchasers would be buying an “Icewind Shiba.” The Complainant contends that the Respondent created an avatar called “Karen” that resembled Karen Moore, the Complainant’s president. According to the Complainant, the Respondent is damaging the Complainant’s mark because he is a “scammer” known for selling sick puppies. The Complainant points to a number of third party websites warning consumers not to do business with the Respondent. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 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 ICEWIND marks, in which the Complainant 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 ICEWIND marks for purposes of the Policy. The Complainant’s ICEWIND marks are distinctive in relation to the Complainant’s services, and the disputed domain name incorporates the Complainant’s ICEWIND mark in its entirety. The addition of “Shibas” – a well-known breed of dog – does not serve to differentiate the disputed domain name from the Complainant’s marks. If anything, given the nature of the Complainant’s business, the addition of “Shibas” compounds the confusing similarity with the Complainant’s marks.
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 ICEWIND marks, and has used the disputed domain name with a website offering services that compete directly with the Complainant’s services. Upon being contacted by the Complainant, the Respondent sought to profit by selling the disputed domain name to the Complainant or offering the disputed domain name for sale to the public.
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 ICEWIND marks when registering the disputed domain name. While the Respondent may have acquired the disputed domain name prior to the federal registrations of the Complainant’s ICEWIND marks, it is evident from the record that the Respondent had prior dealings with the Complainant and as such would have been aware of the Complainant’s use of the ICEWIND marks. 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 ICEWIND marks 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 has used the disputed domain name in order to divert Internet users to the Respondent’s website, where the Respondent offered services directly competitive with those of the Complainant. 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 considers that the Respondent was aware of the Complainant and had the Complainant’s marks in mind when registering the disputed domain name. The record demonstrates that the Respondent’s motive in relation to the registration and use of the disputed domain name was 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. The Respondent’s more recent passive holding of the disputed domain name does not preclude a finding of bad faith registration and use, taking into account, among other factors, that the Respondent upon being contacted by the Complainant sought to profit by selling the disputed domain name to the Complainant or otherwise offering the disputed domain name for sale.
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 names be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: May 10, 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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