The Complainant is CRI 2000, L.P. of San Diego, California, United States of America (“United States”), internally represented.
The Respondent is TD Domain Names of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland. 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 June 17, 2016. On June 17, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 17, 2016, 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 July 5, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 25, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 26, 2016.
The Center appointed Alistair Payne as the sole panelist in this matter on August 4, 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 owns a United States registered trade mark under number 3249885 for its GELWRITER mark, which was registered on June 5, 2007 for gel pens in class 16. The trade mark application was filed with a declaration of use in commerce confirming its use since July 15, 2005. The Complainant and its affiliate ECR4KIDS, L.P distribute and sell gel pens under this mark.
The Respondent acquired and registered the disputed domain name on April 24, 2015. The disputed domain name had formerly been registered in the Complainant’s name from February 24, 2005 until it lapsed on February 24, 2014. 5. Parties’ Contentions A. Complainant
The Complainant submits that it owns the registered trade mark GELWRITER as set out above, and that there is no distinguishing element in the disputed domain name prior to the “.com” element. As a result the Complainant submits that the disputed domain name is identical or confusingly similar to its registered trade mark.
The Complainant says that it has not authorised the Respondent to use its GELWRITER mark or the disputed domain name. It submits that to the best of its knowledge the Respondent has never been commonly known by the disputed domain name and has never used it in connection with a bona fide offering of goods or services. Further, it submits that the Respondent’s use of the disputed domain name to resolve to a website featuring sponsored links that refer visitors to third-party commercial websites does not constitute a legitimate, noncommercial use under paragraph 4(c)(iii) of the Policy.
The Complainant says that it registered the GELWRITER mark in 2007 and has consistently used this mark in commerce since 2005, which constitutes prima facie evidence that the Respondent knew or should have known about the mark when it registered the disputed domain name in April 2015. The Complainant says that it registered the disputed domain name on February 24, 2005 but let its registration expire due to human error on February 24, 2014. It says that the Respondent then registered the disputed domain name in April 2015 by which time the Complainant submits that the Respondent had actual or constructive knowledge of the Complainant’s rights to the GELWRITER mark. The Complainant says that the Respondent’s use of the disputed domain name to generate revenue through sponsored links constitutes bad faith under paragraphs 4(b) (ii) and (iv) of the Policy.
The GELWRITER mark is also not a common combination of English words, according to the Complainant, which creates an inference that the Respondent knew that the GELWRITER mark existed when it registered the disputed domain name. Further, says the Complainant, the Respondent is the owner of over 12,000 other domain names and clearly engaged in the business of purchasing domain names, and is therefore more acutely aware of its warranties under paragraph 2 of the Policy. The Respondent should be held to a higher standard in ensuring that its domain name registrations do not infringe upon another’s intellectual property rights as the Panel found in The Fragrance Foundation Inc. v. Texas International Property Associates, WIPO Case No. D2008-0982.
The Complainant submits that the Respondent’s use of the disputed domain name to host a website with sponsored links to products related to those sold by the Complainant under the GELWRITER mark constitutes a bad faith use of the disputed domain name because consumers of the Complainant’s products might reasonably be misled as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has demonstrated as set out above that it owns a United States registered trade mark under number 3249885 for its GELWRITER mark which was filed on November 3, 2004 and registered on June 5, 2007. The disputed domain name wholly incorporates the Complainant’s mark and the element of the disputed domain name before the generic Top-Level Domain (“gTLD”) suffix “.com” is identical to this mark and features no distinguishing element. As a consequence the Panel finds that the disputed domain name is identical to the Complainant’s registered trade mark and that the Complaint succeeds under the first element of the Policy. B. Rights or Legitimate Interests
The Complainant says that it has not authorised the Respondent to use its GELWRITER mark or the disputed domain name. It submits that to the best of its knowledge the Respondent has never been commonly known by the disputed domain name and has never used it in connection with a bona fide offering of goods or services. Further, it submits that the Respondent’s use of the disputed domain name to resolve to a website featuring sponsored links that refer visitors to third-party commercial websites does not constitute a legitimate, noncommercial use under paragraph 4(c)(iii) of the Policy.
The Panel finds for these reasons and also as noted below under Section C of the decision that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and that this has not been rebutted by the Respondent. Accordingly, the Complaint succeeds under the second element of the Policy. C. Registered and Used in Bad Faith
The Complainant’s United States GELWRITER trade mark application was filed in 2004 and according to its declaration of use the Complainant has used the mark since July 2005 and the Complainant asserts that it has consistently used its mark since that date. The Panel notes that the term “Gelwriter” is not a commonly used English term and that the disputed domain name was only registered by the Respondent in 2015 following the Complainant’s failure to renew its original registration and following its ownership for the previous 9 years. In these circumstances and also in view of the Respondent’s use of the disputed domain name to resolve to a parking page featuring sponsored links, the Panel infers that the Respondent registered the disputed domain name in bad faith. The fact that the Respondent appears, according to the Complainant, to be the owner of thousands of domain names and is most likely a professional domainer who could have chosen to reply to this Complaint, but has not done so, only serves to reinforce the Panel’s view in this regard.
After its acquisition in 2015, the Respondent had the disputed domain name resolve to a parking page featuring sponsored links. These links resolve to websites that according to the Complainant sell products that compete with its products sold under the GELWRITER mark. Under paragraph 4(b)(iv) of the Policy registering a domain name to intentionally attempt to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location amounts to evidence of registration and use in bad faith. Again the Respondent has provided no explanation for its registration or use of the disputed domain name in this way. In all the circumstances and in particular the circumstances of the Respondent’s registration of the disputed domain name following the Complainant’s error in failing to renew it and the Respondent’s failure to file a response explaining this registration, the Panel infers that the requirements of this section are, on the balance of probabilities, made out. As a result the Complaint succeeds under 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.
Alistair Payne
Sole Panelist
Date: August 15, 2016
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