The Complainant is R H Smith & Sons (Wigmakers) Limited of Leeds, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), internally represented.
The Respondent is John Weeks of Long Beach, California, United States of America ("United States"). 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 November 2, 2016. On November 2, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 3, 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 November 8, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 28, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 29, 2016.
The Center appointed Adam Taylor as the sole panelist in this matter on December 5, 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 1894, supplies fancy dress costumes, lingerie, accessories and novelty items. It trades under various names including "Smiffys". The Complainant supplies its products to around 5,000 businesses in some 60 countries, including the United States.
The Complainant owns United States trade mark no. 3576591 for "SMIFFY'S", filed December 6, 2004, and registered February 17, 2009, in classes 3, 14, 25, 26, 28 and 35.
The Respondent is or was connected with a Californian company called Brands on Sale Inc, which was a customer of the Complainant until 2009.
The disputed domain name was registered on June 10, 2012.
Thereafter the disputed domain name resolved to a GoDaddy parking page with various sponsored links, the first one of which was entitled "Halloween Costumes" and linked to the website of a party supplies retailer.
On July 22, 2016, the Complainant's lawyer sent a legal letter to the Respondent seeking transfer of the disputed domain name. The letter asserted that the Respondent was aware of the Complainant, having bought products from the Complainant on behalf Brands on Sale Inc.
The Respondent responded on August 6, 2016, stating: "We don't use this domain. My ex girlfriend is named smiffy and we were planning on opening a[n] online store someday but we not going to do that now."
On August 8, 2016, the Complainant emailed back, maintaining its entitlement to the disputed domain name and pressing for transfer. The Complainant emailed the Respondent again on August 17, 2016, but the Respondent did not reply. 5. Parties' Contentions A. Complainant
The Complainant has acquired substantial goodwill and reputation in its trade mark.
The disputed domain name is identical to the Complainant's trade mark, excluding the descriptive word "costumes", which refers specifically to the Complainant's core product.
The Respondent has no apparent or demonstrable right or legitimate interest in the disputed domain name.
The Respondent's refusal to correspond with the Complainant implies that the Respondent is passively holding the disputed domain name in order to block the Complainant.
The Respondent is not making a bona fide offering of goods or services via the disputed domain name. Instead, it is creating a likelihood of confusion with the Complainant's trade mark.
The first sponsored link on the parking page relates to the website of a party supplies retailer selling competitor products. This could result in customer confusion and a loss of sales on the part of the Complainant.
The Complainant never authorized the Respondent to register the disputed domain name.
The only plausible motivation of the Respondent in registering the disputed domain name was to deprive the Complainant of the disputed domain name.
The Respondent's conduct amounts to opportunistic bad faith given that the disputed domain name is so obviously connected to the Complainant and its products whereas the Respondent is not an authorized retailer of the Complainant's products and so has no connection with the disputed domain name.
Furthermore, the sponsored links demonstrate the Respondent's intention to divert potential customers away from the Complainant's website, resulting in commercial gain for the Respondent and commercial detriment to the Complainant. 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 rights in the mark SMIFFY'S by virtue of its registered trade mark for that term.
Paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") makes clear that the threshold test for confusing similarity under the UDRP involves a comparison between the trade mark and the disputed domain name to determine likelihood of Internet user confusion and that, in order to satisfy this test, the relevant trade mark would generally need to be recognizable as such within the domain name, with the addition of descriptive terms typically being regarded as insufficient to prevent threshold Internet user confusion.
Paragraph 1.9 of WIPO Overview 2.0 states that the addition of merely descriptive wording to a trade mark in a domain name is normally insufficient to avoid a finding of confusing similarity and that UDRP panels have usually found the incorporated trade mark to constitute the dominant or principal component of the domain name.
Here, the Complainant's distinctive trade mark is undoubtedly the dominant component of the disputed domain name and the addition of the descriptive term "costumes" is far from sufficient to avert a finding of confusing similarity.
For the above reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant's trade mark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 2.1 of WIPO Overview 2.0 explains the consensus view concerning the burden of proof regarding lack of rights or legitimate interests in UDRP cases:
"While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […] If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant."
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
As to paragraph 4(c)(i) of the Policy, the only evidence of use of the disputed domain name is for a parking page including a prominent link to a website offering products which compete with those of the Complainant. Such use of the disputed domain name could not of itself confer rights or legitimate interests. See paragraph 2.6 of WIPO Overview 2.0, which states:
"Panels have generally recognized that use of a domain name to post parking and landing pages or PPC links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a "bona fide offering of goods or services" … especially where resulting in a connection to goods or services competitive with those of the rights holder… By contrast, where such links are based on trademark value, UDRP panels have tended to consider such practices generally as unfair use resulting in misleading diversion."
In this case, the advertising links are at least partly related to trade mark value and so paragraph 4(c)(i) of the Policy does not avail the Respondent.
Nor is there any evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
In the Panel's view, it is obvious that the Respondent registered the disputed domain name with the Complainant's trade mark in mind.
The disputed domain name, comprising the Complainant's distinctive trade mark plus a descriptive word referable to the Complainant's core product, is uniquely referable to the Complainant. Furthermore, the Respondent has not denied the Complainant's specific assertion in correspondence that the Respondent was aware of the Complainant, having been associated with a company which used to trade with the Complainant.
The Respondent simply responded by claiming to have registered the disputed domain name in connection with a proposed project with his ex-girlfriend named "smiffy". The Panel is far from convinced by this, not least because the Respondent has failed to take the opportunity to file a Response and provide supporting evidence proving smiffy's existence.
In the Panel's view, paragraph 4(b)(iv) of the Policy applies. By using the disputed domain name, including the Complainant's distinctive trade mark, in connection with a parking page which included a prominent link to products relating to the Complainant's industry, the Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant's trade mark.
Paragraph 3.8 of WIPO Overview 2.0 makes clear that a domain name registrant will normally be deemed responsible for content appearing on a website at the disputed domain name, even if such registrant may not be exercising direct control over such content — for example, in the case of advertising links appearing on an "automatically" generated basis. WIPO Overview 2.0 adds that, to the extent that the presence of certain advertising or links under such arrangement may constitute evidence of bad faith use of the relevant domain name, such presence would usually be attributed to the registrant unless it can show some good faith attempt toward preventing inclusion of advertising or links which profit from trading on third-party trade marks.
Furthermore, it does not matter if the registrant has not himself profited directly under such arrangement. Paragraph 3.8 of WIPO Overview 2.0 states:
"It would normally be sufficient to show that profit or "commercial gain" was made by a third party, such as by the operator of an advertising revenue arrangement applicable to the registrant, or a domain name parking service used by the registrant. Reasons may include that a rights holder should be able to rely on the registrant for enforcement purposes, or that such registrant has undertaken not to infringe third party rights in its registration agreement (see paragraph 2 of the UDRP)."
In any case, even if there had not been a parking page, the Panel would nevertheless have concluded that the disputed domain name constituted a passive holding in bad faith, as explained in paragraph 3.2 of WIPO Overview 2.0.
The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) 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.
Adam Taylor
Sole Panelist
Date: December 8, 2016
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