Complainant is The Procter & Gamble Company (“P&G”) of Cincinnati, Ohio, United States of America (“US”), internally represented.
Respondent is Andrew Schydlowsky of Las Vegas, Nevada, US. 2. The Domain Name and Registrar
The disputed domain name (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 August 29, 2017. On August 30, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 31, 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 September 8, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 28, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 29, 2017.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on October 12, 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 “one of the largest and most highly regarded manufacturers and sellers of consumer goods worldwide, marketing close to 300 high quality products to more than five billion consumers in 140 countries”; that its “community consists of more than 130,000 employees working in almost 80 countries worldwide”; and that “New Chapter, Inc. is a wholly owned subsidiary of” Complainant. Given this legal relationship, references in this decision to “Complainant” refer to either The Procter & Gamble Company and/or New Chapter, Inc., as appropriate.1
Complainant states, and provides evidence to support, that “New Chapter currently owns 24 trademark registrations globally for the NEW CHAPTER trademark” (the “NEW CHAPTER Trademark”), including the following:
- US Reg. No. 1828013 for NEW CHAPTER (registered March 29, 1994) for use in connection with “food supplements”
Complainant further states that the NEW CHAPTER trademark “has been in use in the U.S. since at least June 1988” and is currently used in connection with “a full lineup of 59 different wellness products that are categorized into the following categories: whole food vitamins, herbal supplements, fish oil, mushrooms, calcium and booster powders.”
The Disputed Domain Name was registered on June 1, 2007, and is being used in connection with a website that advertises “whole food organic vitamins” for sale. Complainant says this website “uses NEW CHAPTER trade dress and contains information that was likely copied from a much earlier version of New Chapter’s website.”
Complainant states that it sent a cease and desist letter to Respondent on June 2, 2017. A copy of the letter provided by Complainant states that Respondent’s website “provides a click‐thru option for visitors that redirects them to where New Chapter products can be purchased.” Complainant states that Respondent has never replied to this letter. 5. Parties’ Contentions A. Complainant
Complainant contends, in relevant part, as follows:
- Paragraph 4(a)(i): “Respondent’s top level domain name creates confusion because it incorporates New Chapter’s NEW CHAPTER trademark in its entirety.”
- Paragraph 4(a)(ii): “P&G believes Respondent’s misuse of the domain name is grossly misleading to consumers, who may mistake the content contained therein as content generated by P&G or the NEW CHAPTER brand team”; “Complainant has no ongoing or existing relationship with Respondent and has not given Respondent permission to use its NEW CHAPTER trademark. Respondent’s name does not include the words “New Chapter.” Respondent owns no trademark applications or registrations containing the words NEW or CHAPTER”; and “there is no legitimate reason for Respondent to use or maintain the domain name.”
- Paragraph 4(a)(iii): “Complainant believes Respondent maintains the domain name in an effort to divert consumer traffic from New Chapter’s actual home page and benefit from affiliate sales placed through the GotBody website”; and “Because Respondent knew of Complainant’s rights and because Respondent is making no legitimate use of the domain name and refuses to transfer the site back to Complainant free of charge, Complainant has established Respondent’s bad faith, the third element of its claim.” 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
The NEW CHAPTER Trademark is owned by New Chapter, Inc., not by The Procter & Gamble Company. However, paragraph 4(a)(i) of the Policy requires only that “the complainant has rights” in a trademark, not that a complainant actually own a trademark registration. As stated in section 1.4.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”): “A trademark owner’s affiliate such as a subsidiary of a parent or of a holding company, or an exclusive trademark licensee, is considered to have rights in a trademark under the UDRP for purposes of standing to file a complaint.” Therefore, the Panel considers that The Procter & Gamble Company “has rights” in the
NEW CHAPTER Trademark for purposes of the Policy.
As to whether the Disputed Domain Name is identical or confusingly similar to the NEW CHAPTER Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “newchpter”) 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 3.0, section 1.11.1.
Complainant’s reference to “Respondent’s top level domain name ” conflates the meaning of a top-level domain (in this case, “.com”) with a second-level domain name (in this case, “newchpter”). Further, Complainant’s argument that the Disputed Domain Name “creates confusion” is misplaced under paragraph 4(a)(i) of the Policy, which “typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name” (WIPO Overview 3.0, paragraph 1.7), not whether the domain name creates confusion. Finally, despite Complainant’s statement that the Disputed Domain Name “incorporates New Chapter’s NEW CHAPTER trademark in its entirety,” this is obviously inaccurate, given that the Disputed Domain Name is missing the letter “a” that appears in the NEW CHAPTER Trademark.
Despite these missteps by Complainant, it is obvious that the Disputed Domain Name contains the NEW CHAPTER Trademark in its entirety other than the missing letter “a” and that “a missing letter… in the middle, a mistake easily made by web users quickly typing in a domain name… [is a] deliberate and obvious misspelling of a mark [that] constitutes ‘typosquatting’, and does not make a domain name any less ‘identical or confusingly similar’ for purposes of satisfying this first prong of paragraph 4(a)(i) of the Policy.” Allstate Insurance Company v. Acme mail,WIPO Case No. D2010-2162.
Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to a trademark in which Complainant has rights. B. Rights or Legitimate Interests
Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because “P&G believes Respondent’s misuse of the domain name is grossly misleading to consumers, who may mistake the content contained therein as content generated by P&G or the NEW CHAPTER brand team”; “Complainant has no ongoing or existing relationship with Respondent and has not given Respondent permission to use its NEW CHAPTER trademark. Respondent’s name does not include the words “New Chapter.” Respondent owns no trademark applications or registrations containing the words NEW or CHAPTER”; and “there is no legitimate reason for Respondent to use or maintain the domain name.”
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.”
Although Complainant’s arguments with respect to paragraph 4(a)(ii) are minimalistic and fail to cite a single previous decision as precedent, 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 Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. 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 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 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).
Complainant does not specify which, if any, of the above factors exists here. Although “the scenarios described in UDRP paragraph 4(b) are non-exclusive and merely illustrative.” WIPO Overview 3.0, paragraph 3.1, Complainant also does not describe in any detail – or provide citation to even a single precedential decision – the reason(s) why Respondent has acted in bad faith. Instead, Complainant merely states that the Disputed Domain Name “divert[s] consumer traffic from New Chapter’s actual home page and benefit from affiliate sales placed through the GotBody website.”
Fortunately for Complainant, the Panel is aware that numerous previous decisions under the Policy have found bad faith where, as here, a domain name under similar circumstances has been used to direct visitors to a website selling a competing product or service. See, e.g., CWI, Inc. (“CWI”) v. Craig Goldrich, Tulsa RV,WIPO Case No. D2017-1406 (finding bad faith where disputed domain name “redirects to a website… which Complainant describes as ‘a website for a competitor of [Complainant] offering products and services identical and highly related to those offered by [Complainant]”); 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 the Disputed Domain Name has been 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.
Douglas M. Isenberg
Sole Panelist
Date: October 25, 2017
1 Although The Procter & Gamble Company did not include New Chapter, Inc. as a Complainant, doing so would have been appropriate, given that they are “related companies.” Pro Dive Pty Ltd and Pro Dive International Pty Ltd v. Tony Lennartsson,WIPO Case No. D2004-0097.
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