Complainant is Edgewell Personal Care Brands, LLC of Shelton, Connecticut, United States of America ("United States"), represented by Thompson Coburn LLP, United States.
Respondent is Christopher Visser, All Top 3 of Altamonte Springs, Florida, United States / WhoisGuard Protected, Whois Guard, Inc. of Panama City, Panama. 2. The Domain Name and Registrar
The disputed domain name is registered with NameCheap, Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 26, 2016. On July 26, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 29, 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 Complainant on August 1, 2016, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 5, 2016.
The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceeding commenced on August 10, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 30, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on August 31, 2016.
The Center appointed Gary J. Nelson as the sole panelist in this matter on September 7, 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
Complainant is the owner of a large number of trademark registrations for BANANA BOAT in the United States, and throughout the world. Complainant uses its BANANA BOAT in connection with its sunblock and sunscreen preparations, and related skincare products. Specifically, Complainant owns at least the following trademark registrations:
Country/Territory
Registration No.
Mark
Classes
Date of Registration
United States
1093524
BANANA BOAT
003
June 20, 1978
United States
1754761
BANANA BOAT
003; 005; 025
March 2, 1993
The disputed domain name, , appears to have been registered on November 19, 2015, and resolves to a website with multiple click-through links at this URL address. 5. Parties' Contentions A. Complainant
Complainant is an industry leader in providing personal care products, including sunscreens and tanning lotions in numerous countries throughout the world.
Complainant's BANANA BOAT trademark has been a trusted source identifier since at least 1976 and was first used in the United States in that same year, and was first registered many years before the disputed domain name, , was registered.
Through extensive use and prominent advertising, Complainant and its BANANA BOAT trademark have become world-renowned.
Complainant owns numerous trademark registrations for the BANANA BOAT trademark in the United States and throughout the world.
The disputed domain name is confusingly similar to Complainant's BANANA BOAT trademark.
Respondent has no rights or legitimate interests in the disputed domain name.
Respondent registered and is using the disputed domain name in bad faith. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant has established that it owns prior rights in the BANANA BOAT trademark and the disputed domain name is identical or confusingly similar to Complainant's BANANA BOAT trademark.
Complainant owns numerous registrations for the BANANA BOAT trademark throughout the world. Specifically, Complainant owns at least two BANABA BOAT word mark trademark registrations in the United States (i.e., United States Trademark Registration Nos. 1754761 and 1093524).
Accordingly, Complainant has established rights in its BANANA BOAT trademark pursuant to Policy, paragraph 4(a)(i). See Janus International Holding Co. v. Scott Rademacher,WIPO Case No. D2002-0201 (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. The respondent has the burden of refuting this presumption).
The disputed domain name is identical or confusingly similar to Complainant's BANANA BOAT trademark because the disputed domain name incorporates the entirety of Complainant's BANANA BOAT trademark and merely deletes the space between the words "banana" and "boat" and adds the generic Top-Level Domain ("gTLD") ".xyz" domain suffix.
Neither the addition of purely descriptive terms to a well-known mark nor the addition of a gTLD suffix is typically sufficient to create a distinct domain name capable of overcoming a proper claim of confusing similarity. See Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409 (finding that "[n]either the addition of an ordinary descriptive word […] nor the suffix '.com' detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY" and thus Policy, paragraph 4(a)(i) is satisfied).
In this case, the addition of the gTLD ".xyz" domain suffix directly behind Complainant's BANANA BOAT trademark is insufficient to avoid a finding of confusing similarity.
The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Respondent has failed to file a Response, which can suggest, in appropriate circumstances, that a respondent lacks rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse.,WIPO Case No. D2000-1221 (finding that a respondent's failure to respond in a UDRP proceeding can be construed, in appropriate circumstances, as an admission that it has no rights or legitimate interests in a domain name).
By not filing a Response, Respondent has not provided any evidence that it is commonly known by the disputed domain name, or that it is commonly known by any name consisting of, or incorporating the terms "banana", "boat", or any combination of these words. In Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403, the panel held that a lack of rights or legitimate interests could be found where (1) the respondent is not a licensee of the complainant; (2) the complainant's rights in its related trademarks precede the respondent's registration of the domain name; and (3) the respondent is not commonly known by the domain name in question. The Panel notes that by not submitting a Response, Respondent also failed to provide any evidence that it may be a licensee of Complainant or that its registration of the disputed domain name predates the establishment of Complainant's rights in its BANANA BOAT trademark.
The disputed domain name resolves to a website featuring numerous click-through links for sun screen and sun tan lotion or related products. Because Complainant also promotes and distributes sun screen and sun tan lotion or related products, the Panel concludes that Respondent is using the disputed domain name in association with a website that competes directly with Complainant's business interests. Furthermore, it is likely Respondent is receiving click-through fees each time an Internet user accesses the website at "www." and clicks on any of the numerous links available. The use of another's well-known trademark for the purpose of deriving this type of commercial benefit is evidence that Respondent has no rights or legitimate interests in the disputed domain name.
For the disputed domain name, the Panel also finds that Respondent is maintaining an undeveloped website. In this case, Respondent's failure to develop website corresponding to the disputed domain name for any descriptive purpose is evidence supporting the conclusion that Respondent has no rights or legitimate interests in the disputed domain name. See Pharmacia & Upjohn AB v. Dario H. Romero,WIPO Case No. D2000-1273 (finding no rights or legitimate interests where respondent failed to submit a response to the complaint and made no use of the domain name in question); see also Melbourne IT Limited. v. Grant Matthew Stafford,WIPO Case No. D2000-1167 (finding no rights or legitimate interests in the disputed domain name where there is no proof that respondent made preparations to use the disputed domain name in connection with a bona fide offering of goods and services before notice of the domain name dispute, the disputed domain name did not resolve to a website and respondent is not commonly known by the disputed domain name).
Accordingly, the Panel concludes Respondent is not using the disputed domain name in association with a bona fide offering of goods and services pursuant to Policy, paragraph 4(c)(iii). See America. Online, Inc. v. Xiangfeng Fu,WIPO Case No. D2000-1374 ("it would be unconscionable to find […] a bona fide offering of services in a respondent's operation of [a] web-site using a domain name which is confusingly similar to the complainant's mark and for the same business").
The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
The Panel finds that Respondent registered and is using the disputed domain name in bad faith.
The Panel finds that Respondent likely chose the disputed domain name with full knowledge of Complainant's rights in the BANANA BOAT trademark.
Respondent's awareness of the BANANA BOAT trademark may also be inferred because Complainant's BANANA BOAT trademark was registered with the United States Patent and Trademark Office prior to Respondent's registration of the disputed domain name, and since the BANANA BOAT trademark is widely known. The relevant priority dates for Complainant's relevant trademark registrations (i.e., June 20, 1978, and March 2, 1993) precede the date upon which the disputed domain name was registered (i.e., November 19, 2015). See T, Inc. v. Daniel Deamone,WIPO Case No. D2001-1066 (finding bad faith where respondent had actual and constructive notice of complainant's trademarks registered in the United States); see also Kraft Foods (Norway) v. Fredrik Wide and Japp Fredrik Wide,WIPO Case No. D2000-0911 ("the fact that Respondent [chose] to register a well-known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue").
Respondent is using Complainant's BANANA BOAT trademark to attract Internet users to a website at the disputed domain name . This website features click-through links including products that compete directly with the products sold by Complainant under its BANANA BOAT trademark. This is sufficient evidence of bad faith registration and use. See Lilly ICOS LLC v. Tudor Burdern d/b/a BM Marketing/Burden Marketing,WIPO Case No. D2005-0313.
Also, the Panel holds that this type of use of the disputed domain name by Respondent may be considered equivalent to the disputed domain name not being actively used. The apparent lack of so-called active use does not as such prevent a finding of bad faith in the circumstances of this case. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(iii). 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.
Gary J. Nelson
Sole Panelist
Date: September 15, 2016
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