Complainant is Euromarket Designs, Inc. d/b/a Crate & Barrel of Northbrook, Illinois, United States of America ("United States" or "U.S"), represented by CSC Digital Brand Services Group AB of Stockholm, Sweden.
Respondent is WhoisGuard Protected / WhoisGuard, Inc. of Panama, Panama / Xanandu Xanandu of Charlotte, North Carolina, United States. 2. The Domain Name and Registrar
The disputed domain name (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 June 2, 2017. On June 2, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 6, 2017, 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 June 9, 2017, 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 June 13, 2017.
The Center verified that the Complaint 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 14, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 4, 2017. Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 6, 2017.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on July 13, 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 states that it is "a global company with more than 100 store locations in 12 countries across three continents… offering a wide range of unique home furnishings and home décor items." Complainant further states that its first store was opened in 1962 and that it "has a number of outlet locations and publishes a print catalogue… which reaches millions of its customers worldwide." Complainant further states that it ranked no. 77 on the Internet Retailer 2014 Top 500 Guide and that it employs approximately 8,300 people.
Complainant states that it owns a number of trademark registrations in the United States, Canada and the European Union for trademarks that consist of CRATE AND BARREL, CRATE&BARREL or CRATE & BARREL, including U.S. Reg. No. 1,469,515 for CRATE AND BARREL (registered December 15, 1987) for use in connection with, inter alia, "retail store and mail order services." These trademarks are referred to collectively herein as the "CRATE AND BARREL Trademark."
The Disputed Domain Name was registered on September 23, 2016, and redirects to Complainant's website using the domain name . 5. Parties' Contentions A. Complainant
Complainant contends, in relevant part, as follows:
- The Disputed Domain Name is confusingly similar to the CRATE AND BARREL Trademark because, inter alia, "[t]he Disputed Domain Name contains Complainant's CRATE AND BARREL trademark in its entirety, thus resulting in a domain name that is identical to the Complainant's CRATE AND BARREL trademark."
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, "Respondent is not sponsored by or affiliated with Complainant in any way"; "Complainant has not given Respondent permission to use Complainant's trademarks in any manner, including in domain names"; "Respondent is not commonly known by the Disputed Domain Name"; and by "redirect[ing] Internet users to Complainant's primary website … Respondent is attempting to deceive Internet users into believing that the Disputed Domain Name is associated with Complainant when in fact, it is not."
- The Disputed Domain Name was registered and is being used in bad faith because, inter alia, "Respondent is using the Disputed Domain Name to frame Complainant's actual website in an attempt to deceive Internet users into believing that the Disputed Domain Name is associated with Complainant when in fact, it is not"; "Respondent is attempting to cause consumer confusion in an attempt to pass itself off as Complainant"; and "Respondent has ignored Complainant's attempts to resolve this dispute outside of this administrative proceeding." B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a). A. Identical or Confusingly Similar
Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the CRATE AND BARREL Trademark.
As to whether the Disputed Domain Name is identical or confusingly similar to the CRATE AND BARREL Trademark, the relevant comparison to be made is with the second-level portions of the Disputed Domain Names only (i.e., "crateandbarrel") because "[t]he applicable Top Level Domain ('TLD') in a domain name (e.g., '.com', '.club', '.nyc') is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test." WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.11.1.
Here, the Disputed Domain Name contains the CRATE AND BARREL Trademark (and only the CRATE AND BARREL Trademark) in its entirety. Therefore, it is obvious without the need for elaboration that the Disputed Domain Name is identical to the CRATE AND BARREL Trademark. (Although the Disputed Domain Name does not contain the spaces that are present in the CRATE AND BARREL Trademark, this is irrelevant because spaces are unacceptable characters in domain names.)
Accordingly, the Panel finds that Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, "Respondent is not sponsored by or affiliated with Complainant in any way"; "Complainant has not given Respondent permission to use Complainant's trademarks in any manner, including in domain names"; "Respondent is not commonly known by the Disputed Domain Name"; and by "redirect[ing] Internet users to Complainant's primary website … Respondent is attempting to deceive Internet users into believing that the Disputed Domain Name is associated with Complainant when in fact, it is not."
WIPO Overview 3.0, section 2.1, states: "While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of 'proving a negative', requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element."
The Panel finds that Complainant has established its prima facie case and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the Policy. C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant's documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant's website or location or of a product or service on the registrant's website or location. Policy, paragraph 4(b).
Previous panels under the Policy have found that redirecting a domain name to Complainant's own website under the facts of this case is likely to cause confusion and, therefore, constitutes bad faith pursuant to paragraph 4(b)(iv) of the Policy. See, e.g., Mandarin Oriental Services B.V. v. Domain Administrator, Matama,WIPO Case No. D2017-0615 ("[s]uch behavior includes the risk that the Respondent may at any time cause Internet traffic to redirect to a website that is not that of, or associated with, the Complainant… and may increase customer confusion that the disputed domain name is somehow licensed or controlled by the Complainant"); Altavista Company v. Brunosousa, aka Bruno Sousa,WIPO Case No. D2002-0109 ("such redirection will allow the Respondent to divert future users to competing web sites after having built up mistaken confidence in the source of the content"); MySpace, Inc. v. Mari Gomez,WIPO Case No. D2007-1231 ("[i]nherent in that conduct is the risk that the Respondent may at any time cause Internet traffic to re-direct to a website that is not that of, or associated with, the Complainant").
Accordingly, the Panel finds that Complainant has proven 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.
Douglas M. Isenberg
Sole Panelist
Date: July 25, 2017
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