Complainant is H & M Hennes & Mauritz AB of Stockholm, Sweden, represented by SILKA Law AB, Sweden.
Respondent is Donnie Lewis of Austin, Indiana, United States of America ("United States"). 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 22, 2017. On March 22, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 23, 2017, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on March 31, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 20, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on April 21, 2017.
The Center appointed Roberto Bianchi as the sole panelist in this matter on May 3, 2017. 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 a leading fashion company. Complainant group's sales including VAT reached SEK 210 billion in 2015. Complainant owns several brands, among which is the WEEKDAY brand. This brand was founded in 2002 and became part of Complainant's group in 2008. Today there are 28 Weekday stores in the world in seven different markets. The brand has online presence in 18 markets. Weekday offers its clothes in the United States via retailers.
Complainant owns, inter alia, the following trademark registrations:
Trademark
Registration No.
Registration Date
Jurisdiction
Classes
WEEKDAY
1201591
January 17, 2014
International Trademark (designating the United States)
35 and 25
WEEKDAY
006298897
July 9, 2008
European Trademark
16, 18 and 25 (clothing, footgear, headgear)
WEEKDAY
012509791
July 5, 2014
European Trademark
25 (clothing, footgear, headgear) and 35
On April 18, 2012, Complainant filed application No. 4266228 with the USPTO for registration of the trademark WEEKDAY.
Complainant also owns the domain names (created in 1998), and (created in 2014), and (created in 2015). Complainant is using these domain names to connect to a website informing about its WEEKDAY mark and products.
The disputed domain name was registered on December 28, 2016. 5. Parties' Contentions A. Complainant
Complainant contends as follows:
The disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights. The disputed domain name incorporates Complainant's trademark WEEKDAY in its entirety, which is thus instantly recognizable. The descriptive word "clothing" does not differentiate the disputed domain name from Complainant's trademark. Rather, the addition of that word will increase the likelihood of confusion by directly describing goods that fall within Complainant's trademark specifications and field of business (namely clothing). The addition of the generic Top-Level Domain ("gTLD") ".com" does not add any distinctiveness to the disputed domain name.
Respondent has no rights or legitimate interests in respect of the disputed domain name. There is no bona fide offering of goods or services, since the disputed domain name incorporates a trademark not owned by Respondent, and Respondent is not known by the name "weekday". The combination with "clothing" strengthens the impression of a legitimate connection between the website at the disputed domain name and Complainant. Consumers are induced into visiting the related website under the false impression that it is a website endorsed by Complainant, and where Complainant's clothing is offered for sale. On the website, Respondent offers a large quantity of presumably counterfeit products and makes unauthorized use of Complainant's trademark. The reason for this conclusion is that Weekday does not produce the sizes XS or XXL for men. Further, a total of less than 1000 camo sweater for men were made, but on the website at the disputed domain name they claim to have 1000 sweaters of this sort in stock; see Annex 10 of the Complaint. In addition, on the website at the disputed domain name the potential customer can create an account where sensitive information is obtained, such as user name and password. Such request for sensitive information on a site that Complainant does not control is not only a security threat but can also cause prejudice if the information obtained is used in a manner that is not in accordance with Complainant's security measures.
The disputed domain name was registered in bad faith. Complainant's trademarks and domain names predate the registration of the disputed domain name. The US trademark application was applied for in 2012, four years prior to the registration of the disputed domain name. Further, the WEEKDAY brand was founded as early as in 2002, eight years prior to when the disputed domain name was registered. The active business presence of Complainant also shows that it is unlikely that Respondent was not aware of the unlawful registration of the disputed domain name. It is evident from the screenshots that Respondent only registered the disputed domain name due to the fame of the WEEKDAY mark.
The disputed domain name is used in bad faith. The website at the disputed domain name displays the WEEKDAY logotype multiple times: as a banner along the top line of the website, and at the center of the web page. Complainant has not authorized Respondent for any activities or any use of its trademarks. The combination of Complainant's trademark with the carefully selected term "clothing" indicates that Respondent was fully cognizant of Complainant's trademark and its commercial standing at the time of registration and subsequent use of the disputed domain name.
Relying on a misleading impression of a legitimate association between the disputed domain name and Complainant for financial gain, offering for sale counterfeit copies of Complainant's products is misleading consumers into believing that the products are genuine, where in reality no such connection exists. This amounts to a use in bad faith of the disputed domain.
Complainant undertook further research and found out that Respondent had registered additional domain names incorporating famous brands, such as the famous Swedish fashion brand SANDQVIST in and the trademark REISS in the domain name . The websites at these two domain names adopt the look and feel of official Sandqvist and Reiss websites respectively, by displaying their logotypes and purporting to be offering their clothes for sale. The current behavior of registering at least two other well-known brands in domain names does not constitute good faith use, but rather the contrary. See Annex 11 of the Complaint for WhoIs and trademark extracts.
On January 25, 2017, Complainant tried to contact Respondent and sent him a letter with a notice of infringement to the email address listed on the WhoIs record. Complainant advised Respondent that the unauthorized use of its trademarks within the disputed domain name violated Complainant's trademark rights, and requested a voluntary transfer of the disputed domain name. Respondent never responded, and simply disregarded such communication. It has been mentioned in earlier cases that the failure of a respondent to respond to a cease and desist letter has been considered relevant in a finding of bad faith, e.g., News Group Newspapers Limited and News Network Limited v. Momm Amed Ia,WIPO Case No. D2000-1623; Nike, Inc. v. Azumano Travel,WIPO Case No. D2000-1598; and America Online, Inc. v. Antonio R. Diaz,WIPO Case No. D2000-1460. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Complainant has submitted printouts of official trademark databases showing that it owns registrations for the WEEKDAY mark, thus proving that it has rights in this mark for purposes of Policy paragraph 4(a)(i). See section 4 above.
The Panel notes that in the disputed domain name the relevant element is the trademark WEEKDAY, which is incorporated in its entirety, just adding the generic term "clothing" preceded by a hyphen, and the gTLD ".com". It is well established by panels applying the Policy that the addition in a domain name of a trademark and a generic, descriptive or geographic term generally is inapt to distinguish the domain name from the mark, while a hyphen and a gTLD are also irrelevant for the distinction. In fact, the addition of the generic term "clothing", which happens to be the line of goods covered by Complainant's trademark registrations, rather reinforces the impression of association – and confusion – of the disputed domain name with Complainant's marks.
The Panel concludes that the disputed domain name is confusingly similar to Complainant`s marks. B. Rights or Legitimate Interests
Complainant contends that Respondent is not known by the name "weekday". The Panel agrees with Complainant, since according to the WhoIs database of the registrar for the disputed domain name, the registrant name and registrant organization is "donnie Lewis". Clearly, Policy paragraph 4(c)(ii) is not applicable.
Complainant also contends that on the website at the disputed domain name, the WEEKDAY logo is imitated, and clothing products are being marketed. In addition, visitors of the website are invited to create an account by providing on a form personal data such as name, full address, email address, phone number, etcetera, profiting from the impression of association of Respondent's website at the disputed domain name with Complainant's mark and official websites. In the opinion of the Panel, this use of the website at the disputed domain name is an attempt of phishing or at other improper practice which, in any case, is neither a use in connection with a bona fide offering of goods or services under Policy paragraph 4(c)(i), nor a fair or legitimate noncommercial use without intent for commercial gain to misleadingly divert consumers under Policy paragraph 4(c)(iii).
Complainant further contends that Respondent on the website at the disputed domain name is offering presumably counterfeit products while using Complainant's trademark without authorization. Complainant's contention on counterfeiting is based on its assertion that Complainant does not produce sizes XS or XXL for men's clothing, or in large quantities, as offered on the website at the disputed domain name.
In the Panel's opinion, Complainant's contentions are supported by the available evidence, and are sufficient to make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name. The burden of production then shifts to Respondent to provide arguments and evidence in its own favor. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1. ("[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.")
Since Respondent failed to contest any of Complainant's contentions, and to provide any allegations, arguments or evidence in its own favor, the Panel concludes that Respondent does not have any rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
A number of factors indicate that Respondent was aware of, and had Complainant and its WEEKDAY mark in mind at the time of registering the disputed domain name. First, Complainant has shown that its registrations for the mark WEEKDAY predate the registration of the disputed domain name by several years. Second, in the disputed domain name the term "clothing" is added to Complainant's mark, which protects clothing, footgear, headgear, etcetera. Third, on the website at the disputed domain name, Respondent is offering clothing in competition with Complainant. Fourth, on the front-page of this website there is a logo imitating Complainant's logo for WEEKDAY on its legitimate website. In the circumstances of this case, these facts lead to conclude that the registration of the disputed domain name was in bad faith.
Complainant also has shown that on the website at the disputed domain name, goods are offered under the WEEKDAY mark, without any authorization of Complainant, and in some cases, in quantities exceeding those produced by Complainant, or in sizes that are not produced by Complainant. In other words, at least some of the goods marketed on the website at the disputed domain name might be counterfeited merchandise. In addition, on the website at the disputed domain name personal data are being elicited from Internet users presumably looking for Complainant and its legitimate WEEKDAY clothing.
The Panel agrees with previous UDRP panels that phishing is a use in bad faith of the disputed domain name. See for instance The Royal Bank of Scotland Group plc v. Secret Registration Customer ID 232883 / Lauren Terrado,WIPO Case No. D2012-2093 ("[u]se of a disputed domain name for the purpose of defrauding Internet users by the operation of a 'phishing' website is perhaps the clearest evidence of registration and use of a domain name in bad faith."). See also MasterCard International Incorporated v. Jose Carlos Bisognin Panzenhagen,WIPO Case No. D2009-0864 (although eliciting personal information related to credit cards, such as full name, name as printed on the card, card number, expiration date, verification code, etcetera, might not be sufficient to conclude that a 'phishing' scam exists, there is little room to infer anything else than respondent most likely attempted to deceive inadvertent Internet users, by inducing them to believe that they were connected with a legitimate website, and thus to provide personal financial information to the operator of this fake website, which is a behavior in bad faith consistent with "phishing" and/or identity-theft purposes.) See also Halifax plc v. Sontaja Sunducl,WIPO Case No. D2004-0237 (Evidence of duplication in complainant's trading get-up, branding and imagery is direct evidence of the domain name is being used in bad faith. In particular, the availability of the online registration pages, and the apparent potential for 'phishing' and obtaining information by deception, is not just evidence of bad faith but possibly suggestive of criminal activity. On this basis, there is no other possibility than the site being registered in bad faith).
In sum, the evidence shows that Respondent, by using the disputed domain name as described above, has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of products or service on its website. According to Policy paragraph 4(b)(iv), this is a circumstance of registration and use in bad faith.
Finally, Complainant has shown that Respondent has registered at least two other third-party fashion marks as domain names: the mark SANDQVIST in the domain name and the mark REISS in the domain name . Both domain names were registered by Respondent on December 28, 2016, the same day of registration of the disputed domain name. Respondent also operates the corresponding websites at both domain names. See Annex 11 to the Complaint. The Panel agrees with Complainant that these registrations, made simultaneously with the registration of the disputed domain name, constitute a pattern of registering third party fashion marks to operate fake websites, and preventing the owner of the marks to reflect them in corresponding domain names, which is a further circumstance of bad faith registration and use of the disputed domain name under Policy paragraph 4(b)(ii).
The Panel concludes that the disputed domain name was registered and is being used in bad faith. 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 Complainant.
Roberto Bianchi
Sole Panelist
Date: May 15, 2017
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