Complainant is CWI, Inc. (“CWI”) of Lincolnshire, Illinois, United States of America (“United States” or “U.S.”), represented by Neal & McDevitt, LLC, Northfield, Illinois, United States.
Respondent is Craig Goldrich, Tulsa RV of Tulsa, Oklahoma, United States. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with FastDomain, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 20, 2017. On July 21, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 23, 2017, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing Respondent’s 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 July 24, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 13, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 14, 2017.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on August 21, 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 “operates the United States’ largest network of recreational vehicle (‘RV’) sales, RV equipment and accessories, and RV service centers under the trademark CAMPING WORLD.”
Complainant states, and provides evidence to support, that it “has used the CAMPING WORLD trademark in the United States since at least 1968, and owns numerous United States Trademark Registrations for CAMPING WORLD and CAMPING WORLD and design,” including the following:
- U.S. Reg. No. 4,536,313 for CAMPING WORLD (first used in commerce on May 28, 1968; registered on May 27, 2014) for use in connection with, inter alia, “Retail store services, mail order services, electronic and mail order catalog services, and computerized on-line ordering services, all in the field of recreational vehicles, recreational vehicle equipment, recreational vehicle accessories, recreational vehicle parts, recreational vehicle supplies, camping equipment, camping accessories and camping supplies.”
- U.S. Reg. No. 930,179 for CAMPING WORLD (first used in commerce on May 28, 1968; registered on February 29, 1972) for use in connection with “Retail and mail-order sale of camping equipment, recreational vehicles and supplies.”
These trademarks are referred to collectively herein as the “CAMPING WORLD Trademark.”
Complainant further states that it “operates nationally under the CAMPING WORLD brand, and local … operators and licensees often use the CAMPING WORLD mark plus a geographic designator, such as CAMPING WORLD of St. Louis ... and CAMPING WORLD of Tulsa.”
The Disputed Domain Name was registered on January 4, 2016, and redirects to a website using the domain name , which Complainant describes as “a website for a competitor of [Complainant] offering products and services identical and highly related to those offered by [Complainant] under the CAMPING WORLD marks, including RV sales and services.” 5. Parties’ Contentions A. Complainant
Complainant contends, in relevant part, as follows:
- The Disputed Domain Name is confusingly similar to the CAMPING WORLD Trademark because, inter alia, “[the Disputed Domain Name] contains the entirety of Complainant’s mark, merely adding a geographic indicator ‘oftulsa,’ which is where Respondent’s Tulsa RV is located”; and “Respondent’s simple addition of the generic ‘oftulsa’ geographic designator to Complainant’s distinctive mark is insufficient to avoid a finding of confusing similarity.”
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Complainant has never given Respondent permission, in any form whatsoever, to register and/or use the [Disputed Domain Name] and trademark”; Respondent is using the Disputed Domain Name to “direct consumer traffic to a competing company’s website”; and Respondent has not “become, or attempted to become, a licensee of Complainant.”
- The Disputed Domain Name was registered and is being used in bad faith because, inter alia, “Complainant’s CAMPING WORLD mark is well-known in the United States in connection with Complainant’s products and services”; “[b]y registering and using the [Disputed Domain Name], Respondent has unequivocally acted with ‘opportunistic bad faith’ by intentionally attempting to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with Complainant’s well-established CAMPING WORLD mark as to the source, sponsorship, affiliation, and/or endorsement of Respondent’s web site or location or of a product or service on its website or location”; “[r]egistration of a domain name that is confusingly similar to a well-known trademark by an entity that has no relationship with the mark itself is evidence of bad faith registration and use”; and “Complainant believes there to be active and ongoing acts of deceptive trade practices, trademark infringement, unfair competition, and trademark dilution, among others, by Respondent in connection with the unauthorized use of the [Disputed Domain Name].” B. Respondent
Respondent did not reply to 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 CAMPING WORLD Trademark.
As to whether the Disputed Domain Name is identical or confusingly similar to the CAMPING WORLD Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “.com”) 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 CAMPING WORLD Trademark in its entirety plus the geographic identifier “oftulsa” – a reference to the city of Tulsa, Oklahoma. The Panel agrees with the decision cited by Complainant that “[t]he addition of a place name to a trademark … is a common method for indicating the location of a business enterprise identified by the trademark or service mark” and does not alleviate any confusing similarity. Six Continents Hotels, Inc. v. Dkal,WIPO Case No. D2003-0244. See also, e.g., Dr. Ing. h.c. F. Porsche AG v. Porsche Cyprus,WIPO Case No. D2016-0024 (finding confusingly similar to the trademark PORSCHE).
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, “Complainant has never given Respondent permission, in any form whatsoever, to register and/or use the domain name and trademark”; Respondent is using the Disputed Domain Name to “direct consumer traffic to a competing company’s website”; and Respondent has not “become, or attempted to become, a licensee of Complainant.”
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).
Here, the Panel finds that, by using the Disputed Domain Name to redirect Internet users to a website that offers goods and services in competition with Complainant, Respondent knew about Complainant’s trademark and Respondent has created a likelihood of confusion establishing bad faith registration and use pursuant to paragraph 4(b)(iv) of the Policy. See, e.g., Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Liu Xindong,WIPO Case No. D2003-0408 (using a disputed domain name “to sell directly competing products” constitutes bad faith); and Ho Hoi Ming Michael, VGH Solutions (“Dr Ho”) v. EHM All Things Healthy, LLC,WIPO Case No. D2014-1753 (finding bad faith where disputed domain name “wholly incorporates the Trade Mark, and … is almost identical to the Complainant’s own registered domain name and was used to sell similar goods”).
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 Complainant.
Douglas M. Isenberg
Sole Panelist
Date: September 1, 2017
Full & Egal Universal Law Academy