The Complainant is Oriental Trading Company, Inc. of Omaha, Nebraska, United States of America (“United States”), represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).
The Respondent is The Party People Australia Pty Ltd of Sydney, New South Wales, Australia, internally represented. 2. The Domain Names and Registrars
The disputed domain name is registered with GoD, LLC. The disputed domain names and are registered with Go France Domains, LLC (collectively the “Registrars”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2017. On June 1, 2017, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On June 2, 2017, the Registrars transmitted by email to the Center their verification responses confirming that the Respondent is listed as the registrant and providing the contact details. On June 6, 2017, the Respondent submitted two informal email communications to the Center. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on June 7, 2017.
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 the Respondent of the Complaint, and the proceedings commenced on June 8, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 28, 2017. Pursuant to paragraph 5(b) of the Rules, the due date for Response was extended until July 2, 2017. The Respondent did not submit any substantive response. Accordingly, the Center notified the Respondent that it would proceed to the Panel appointment.
The Center appointed Tobias Zuberbühler as the sole panelist in this matter on July 5, 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
The Complainant is a United States company based in Omaha, Nebraska, which was founded in 1932 and which subsequently grew into one of the major suppliers for the carnival trade in the United States. Today, the Complainant operates as an e-retailer and cataloger of party supplies, arts, crafts, school supplies, toys and novelties, through its official website “www.m”. According to the material submitted together with the Complaint, the Complainant has been recognized as a leader in its industry and as one of the top 50 Internet retailers and catalogue companies.
The Complainant is the owner of the Canada trademark No. TMA522030 for ORIENTAL TRADING (registered on January 21, 2000) and of the United States trademark No. 1754376 for ORIENTAL TRADING (registered on February 23, 1993).
The disputed domain name was registered on September 8, 2010. The Complainant has submitted evidence that the disputed domain name was initially used to redirect Internet users to the Respondent’s company website, “”, offering the same type of products as the Complainant, party and event supplies (see Annex 13 to the Complaint, consisting of a screenshot dated April 28, 2017). A more recent look at the website linked to the disputed domain name, however, shows different content. At the time this Decision is rendered, the website linked to the disputed domain name advertises the services of an entity named “Oriental Trading People”, with the same address and telephone number as the Respondent’s.
The disputed domain names and were registered on September 26, 2016 and June 14, 2016, respectively. Both domain names are inactive, with the exception of a banner that reads “website coming soon!”. 5. Parties’ Contentions A. Complainant
In summary, the Complainant contends the following:
All three of the disputed domain names are confusingly similar to the Complainant’s ORIENTAL TRADING trademark, as they incorporate the trademark verbatim. The Top-Level Domain (“TLD”) suffixes “.shop” and “.store” only serve to add confusion, given their generic meaning and the Complainant’s business of selling tangible products usually found in shops or stores. As a result, the disputed domain names might make Internet users believe that the websites linked to them are operated by the Complainant.
The same is true for the TLD suffix “.co”, which is often an abbreviation of the word “company”. The disputed domain name thus runs the risk of misleading Internet users searching for the Complainant as a company. Additionally, it takes advantage of Internet users looking for the Complainant’s website “www.m”, who accidentally omit the letter “m” in “.com”.
The Respondent lacks rights and legitimate interests in the disputed domain names. The Respondent is not using the disputed domain names in connection with a bona fide offering of goods and services. While the disputed domain names and are inactive, the disputed domain name redirects users to the website of the Respondent’s company. This company can be viewed as a competitor of the Complainant, since it offers the same type of products, which can also be shipped to the United States and Canada – the main territories of the Complainant. By using the disputed domain name, the Respondent seeks to redirect Internet users who are looking for the Complainant to the Respondent's own company’s website.
Neither is the Respondent making a legitimate noncommercial or fair use of the disputed domain names. The two disputed domain names and , which have been inactive from their registration, do not show any legitimate use other than the ulterior intention of withholding these domain names from the Complainant. The third domain name is used commercially to entice Internet users to purchase the products offered by the Respondent.
To the Complainant’s best knowledge, the Respondent is not commonly known by the name “Oriental Trading”. Furthermore, no other trademarks are registered for ORIENTAL TRADING, except for those registered by the Complainant. The Respondent was never authorized by the Complainant to use its ORIENTAL TRADING trademark.
Finally, the Complainant contends that the Respondent has registered and used the disputed domain names in bad faith, by taking advantage of the Complainant’s goodwill and extensive reputation. Since ORIENTAL TRADING is not a generic term and is specifically associated with the Complainant, it is unlikely that the Respondent had no knowledge of the Complainant’s rights before registering the disputed domain names. This all the more so since the Complainant can be regarded as a competitor of the Respondent, the Respondent can be reasonably expected to be aware of who its competitors are, and a simple Google search would have revealed that the Complainant is the owner of the ORIENTAL TRADING trademark.
The Respondent’s passive holding of the disputed domain names and is a further indication of its bad faith, as is its use of the disputed domain name to intentionally confuse users and attract them to the Respondent’s own website. B. Respondent
The Respondent did not submit any substantive reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, the Complainant must first demonstrate that it has rights in a trademark and secondly that the disputed domain name is identical or confusingly similar to such trademark.
Presently, the Complainant has proven that it is the owner of a trademark in the sense of the Policy.
In order to determine identity or confusing similarity between the disputed domain name and a complainant’s trademark, UDRP panels will only look at the second level of the disputed domain name and will usually disregard the applicable TLD. See, in this context, section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); see also Canyon Bicycles GmbH v. Domains by Proxy, LLC / Rob van Eck,WIPO Case No. D2014-0206.
In the present case, the alphanumeric string in the second level of all three disputed domain names is identical with the Complainant’s ORIENTAL TRADING trademark, with no additional elements. This is sufficient for the Panel to find that the disputed domain names are confusingly similar to the Complainant’s trademark.
Thus, the Panel holds that the Complainant has fulfilled paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. Reference is made especially to the Complainant’s arguments that (1) the Respondent was never authorized by the Complainant to use the ORIENTAL TRADING trademark; (2) the Respondent does not appear to be commonly known under the term ORIENTAL TRADING or to have any registered rights for this term; (3) the disputed domain name has been used to redirect Internet users to the Respondent’s company’s website offering competing products to those of the Complainant and that this cannot be construed as a bona fide offering of goods or services; (4) the disputed domain names and have been inactive since their registration, which does not indicate a legitimate noncommercial or fair use.
The burden of production therefore shifts to the Respondent to come forward with allegations or evidence to demonstrate that it has a right or legitimate interest in relation to the disputed domain names. Presently, the Respondent has chosen not to respond substantively to the Complaint, with the consequence that the Panel may accept as true the assertions of the Complainant, which are not unreasonable.
In the present case, the Panel finds the Complainant’s arguments convincing that the Respondent lacks rights or legitimate interests in the disputed domain names, so that paragraph 4(a)(ii) of the Policy is also satisfied. C. Registered and Used in Bad Faith
Under the third element of the Policy, the Complainant must demonstrate that the disputed domain names have been registered and are being used in bad faith.
Taking into consideration the circumstances of this case, it appears likely that the Respondent had previous knowledge of the Complainant’s trademark and that, by registering the disputed domain names, it sought to profit from the trademark’s notoriety.
In view of the Complainant’s alleged (and undisputed) extensive reputation, as well as of the fact that the Complainant and the Respondent are operating in the same industry (both are online retailers for party supplies), the Panel finds it plausible that the Respondent has registered and used the disputed domain name in an attempt to attract Internet users to its own website who are looking for the Complainant, in particular by taking advantage of a common mistyping of the Complainant’s website “www.m” through the accidental omission of the letter “m”. Pursuant to paragraph 4(b)(iv) of the Policy, this is an indication of bad faith.
The Panel therefore finds that the Respondent has registered and used the disputed domain name in bad faith and that paragraph 4(a)(iii) of the Policy is thus fulfilled with respect to this disputed domain name.
With respect to the disputed domain names and , the Panel notes that these domain names have been inactive since their registration. However, the apparent lack of active use of the domain name (so-called “passive holding”) does not prevent a finding of bad faith. The Panel refers to section 3.3 of the WIPO Overview 3.0 and the decisions cited therein. The Panel will therefore need to consider the totality of the circumstances of the case when determining whether the disputed domain names are being used in bad faith.
In the present case, the Complainant and the Respondent are operating competing businesses and the Respondent was or should have been aware of the Complainant’s rights in the ORIENTAL TRADING trademark. After registering the disputed domain names and , the Respondent has left them without any active content for several months. It is therefore plausible that the primary reason for registering these domain names was to either prevent the Complainant from reflecting its trademark in a corresponding domain name (paragraph 4(b)(ii) of the Policy) or to disrupt the business of the Complainant as the Respondent’s competitor (paragraph 4(b)(iii) of the Policy). It is not apparent that the Respondent has intended to actively use the disputed domain names for a different – legitimate – purpose.
Thus the Panel finds that the element of bad faith pursuant to paragraph 4(a)(iii) of the Policy is currently also fulfilled with respect to the disputed domain names and . 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 , and be transferred to the Complainant.
Tobias Zuberbühler
Sole Panelist
Date: July 14, 2017
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