The Complainant is Trau & Loevner of Braddock, Pennsylvania, United States of America (“United States”), represented by Reed Smith LLP, United States.
The Respondent is Domain Administrator, Private Registry Authority of Sydney, New South Wales, Australia. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Crazy Domains FZ-LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 30, 2017. On December 1, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 4, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the 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 the Respondent of the Complaint, and the proceedings commenced on December 5, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 25, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 26, 2017.
The Center appointed Jon Lang as the sole panelist in this matter on January 16, 2018. 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 was founded in 1897 and specializes in the production, design, customization and sale of a wide range of clothing products and accessories. Over its 120-year history, the Complainant has become a well-recognized source of customized clothing products and has developed a broad portfolio of licensing rights, design and production services, and wholesale and retail capabilities which has resulted in the Complainant becoming a leader in the clothing design and production fields.
The Complainant is the owner of the right, title and interest in and to the TEE LUV trademark which has been in use by the Complainant for clothing products since at least early March 1, 2013. The Complainant owns the following application and registration for its TEE LUV trademark: Country Trademark Status Number Date Goods
United States
TEE LUV
Registration
4,344,170
July 18, 2012
(application);
May 28, 2013
(registration)
Clothing, namely,T-shirts
Canada
TEE LUV
Application
1857466
August 31, 2017
(application)
Clothing, namely, T-shirts
The Complainant’s trading name was registered in 1940 and it has continually promoted its products and/or services using its distinctive trademarks, such as TEE LUV, as well as marks such as TRAU & LOEVNER, TNT, SAVVY, and 1ST STRING. These unique trademarks have become well-recognized and have acquired substantial notoriety and goodwill. The Complainant has established a substantial reputation within its industry and amongst consumers.
The Complainant’s products, including its TEE LUV branded products, are marketed and made available for purchase around the world including in Australia, the Respondent’s country of residence.
The Domain Name was created on February 1, 2014, and registered through a privacy service.
It currently resolves to a registrar holding page.
In August 2017, the Complainant contacted the Respondent with an offer to purchase the Domain Name. The Complainant’s communications to the email address of record for the Domain Name were answered by a Mr. Merory, a resident of Australia, using the email address merory@[...].com. It is not known if Mr. Merory is the actual registrant behind the privacy service. Communications continued by email until early November 2017. Some of these emails will be referred to below. 5. Parties’ Contentions A. Complainant
The following is a summary of the main contentions of the Complainant.
Negotiations
The Respondent initially claimed that he had acquired the Domain Name to set up a legitimate website but later admitted that he had been soliciting offers to purchase it from third parties. In response to the Complainant’s offer to purchase the Domain Name, the Respondent asked for USD 13,500. The Complainant’s offers to compensate the Respondent for reasonable out-of-pocket costs were not accepted. Offers of USD 500 and USD 1,000 were declined, despite the Respondent being advised of the Complainant’s prior rights in its coined and fanciful TEE LUV trademark.
Common law rights
The Complainant’s advertising and sales, targeted to the Australian market, have provided the Complainant with valuable common law rights in Australia. Hence, the Complainant’s rights in its TEE LUV mark, which precede registration of the Domain Name, include common law as well as registered rights.
The Domain Name is identical or confusingly similar to the Complainant’s trademark
The Domain Name is identical to the Complainant’s TEE LUV trademark, a trademark which is based on rights which precede registration of the Domain Name and which is a coined, fanciful term, neither generic nor associated with any dictionary definitions, and which is used exclusively by the Complainant as a trademark to identify its innovative clothing products.
A suffix such as “.com” does not ameliorate any confusing similarity between a trademark and a domain name.
The Respondent has no rights or legitimate interests in respect of the Domain Name
The Respondent registered the Domain Name well after the Complainant had established its rights in its TEE LUV trademark, a trademark which has been used for the Complainant’s products since at least as early as March 2013, including for products available for sale in the Respondent’s own country of residence.
The Domain Name does not resolve to an active website and there is no evidence that it has ever been used for the bona fide offering of goods or services or for a legitimate or noncommercial fair use. The failure to sell or provide any goods or services under a domain name or make legitimate noncommercial use of it has been held to be evidence of a lack or rights or legitimate interests in that domain name. The Respondent is not commonly known by the Domain Name and there is no evidence that the Respondent has ever traded using the “Tee Luv” name, or conducted legitimate business operations under it. The Respondent has been granted no license or other rights to use the Complainant’s TEE LUV trademark as part of any domain name or otherwise. The Respondent is not and has never been associated with or affiliated with the Complainant.
In an email of September 11, 2017, the Respondent informed the Complainant that he is working on an “online store” for the Domain Name. In his email of September 17, 2017, he informed the Complainant that he is planning to sell clothing, specifically “streetwear brands”. In view of the Complainant’s prior rights in its TEE LUV trademark, the Respondent’s intent to use the Domain Name for clothing cannot be deemed a legitimate interest because such use could only cause consumers to confuse content posted to any website to which the Domain Name resolved, with the Complainant’s branded TEE LUV goods, and thus lead to a diversion of Internet traffic.
Moreover, the Respondent’s alleged interest in using the Domain Name for a clothing store is inconsistent with the Respondent’s email dated November 8, 2017, wherein he confirms that he may sell the Domain Name to a third party.
The Domain Name was registered or is being used in bad faith
In view of the recognition and notoriety of the Complainant and its TEE LUV trademark, and the coined and fanciful nature of that mark, it is implausible that the Respondent was not aware of the Complainant when registering the Domain Name.
The Respondent has registered or acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring it to the Complainant (or a competitor of the Complainant), for valuable consideration in excess of documented out-of-pocket costs directly related to the Domain Name. The Respondent has been attempting to secure a purchase price of USD 13,500 from the Complainant, a sum far in excess of the registration costs of AUD 6.60 (USD 4.99 – USD 5.00) charged by the Registrar of the Domain Name. The Respondent has also been attempting to sell the Domain Name to third parties and has cited such to further his attempts to secure USD 13,500 from the Complainant. The Respondent has demonstrated no other purpose for his registration of the Domain Name outside of his attempts to sell it for an amount grossly in excess of any out-of-pocket registration costs. The Complainant, having informed the Respondent of its rights in the TEE LUV mark, offered USD 500 and then USD 1,000, amounts which would reimburse any reasonable out-of-pocket fees. The Respondent refused these offers, insisting on a sale price of USD 13,500.
The Complainant refers to Internet search results for the TEE LUV trademark, which direct Internet users to sites pertaining exclusively to the Complainant’s TEE LUV products. The Respondent knew or should have known of the Complainant’s TEE LUV mark.
Good faith efforts should be made to avoid registration of domain names using trademarks of third parties, particularly when trademarks are distinctive, as the TEE LUV mark is. ICANN-approved registration agreements incorporate representations and warranties by registrants that they are not registering a domain name which infringes third party rights, and that they are responsible for determining whether their registration infringes or violates such rights.
Even if the Respondent claimed that it was not familiar with the Complainant’s mark, such an assertion would not be sufficient to avoid a finding of bad faith registration. In cases involving registration of a domain name featuring a distinctive mark, it has been well recognized that a minimal degree of due diligence is required by registrants because the term used in the domain name is “not a dictionary word”, and that “even a cursory search on search engines” would disclose the trademark rights of a third party. The Respondent here is a sophisticated domain name registrant. In emails sent to the Complainant on September 11, 2017, September 17, 2017, and November 8, 2017, the Respondent alleged that he had substantial plans for an online business involving numerous domain names, that he was working on the launch of an online store, that he had negotiated dropship agreements to accompany his proposed businesses, and that he had solicited his domain name registrations for sale to other third parties.
Sophisticated registrants have a heightened obligation to “make some level” of “good faith efforts to avoid registering and using domain names that are identical or confusingly similar to marks held by others”, and such obligation is especially relevant when the domain name at issue is not a dictionary word. The Respondent is clearly a sophisticated domain name registrant who has adopted a domain name using “tee luv”, a term which is exclusively tied to the Complainant and is not a dictionary word.
The presence of a distinctive trademark in a disputed domain name has been held to be prima facie evidence that a respondent registered or acquired the domain name in bad faith and the Respondent’s attempts to secure a price of USD 13,500 from the Complainant, an amount substantially above any out-of-pocket registration costs, is further evidence of bad faith.
The Domain Name is highly suggestive of the Complainant and is therefore misleading as to source, sponsorship, affiliation or endorsement of, or by, the Complainant. Any use of the Domain Name, and particularly use in connection with a clothing store (as suggested by the Respondent), would create a high risk of consumers mistakenly believing that the content of any site to which the Domain Name resolved was offered, sponsored, endorsed, or otherwise approved by the Complainant, thereby diverting web traffic from the Complainant. As such, the Respondent’s registration of the Domain Name, and any use thereof, amounts to “opportunistic bad faith”. Not only is there a significant risk that members of the public would believe that such content is maintained or authorized by the Complainant, there is also a danger of initial interest confusion.
It is inconceivable that the Respondent’s registration and use of the Domain Name could be associated with good faith. Registration and any use of the Domain Name by the Respondent can only constitute intentional bad faith efforts to capitalize on the goodwill associated with the Complainant’s TEE LUV trademark. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is: (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; and (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements to succeed. A. Identical or Confusingly Similar
The Complainant clearly has rights in the TEE LUV trademark for the purposes of the Policy by virtue of not just its trademark registration, but also common law as a result of its use of the mark.
Application of the confusing similarity test under the UDRP typically involves a comparison, on a visual or aural level, between the trademark and the domain name.
Ignoring the generic Top-Level Domain “.com” (as the Panel may do for comparison purposes), the Domain Name comprises the Complainant’s TEE LUV trademark and nothing else. The gap between “TEE” and “LUV” that is not reproduced in the Domain Name is, in the view of the Panel, insignificant. Technical requirements preclude a gap in a Domain Name. It could, nevertheless, be suggested that it would take a hyphen (-) or underscore (_) between the “TEE” and “LUV” to make the Domain Name and trademark truly identical for the purposes of the Policy (because the separation of the “TEE” and “LUV” would thereby be represented, as far as it could be). However, the Panel is of the view that the Complainant’s trademark is just as readily recognizable without any separation between “TEE” and “LUV”. In any event, at an aural level, the Domain Name is clearly identical to the TEE LUV trademark.
Accordingly, the Panel finds that the Domain Name is identical to the TEE LUV trademark for the purposes of the Policy and that the requirements of paragraph 4(a)(i) has been established. B. Rights or Legitimate Interests
By its allegations, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name and, as such, the burden of production shifts to the Respondent to come forward in these proceedings with arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so and accordingly, the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent indeed lacks rights or legitimate interests in the Domain Name. Despite the lack of any answer to the Complaint, however, the Panel is entitled to consider whether there would be anything inappropriate in such a finding. In doing so, the Panel shall have regard to the email exchange between Mr. Merory and the Complainant. Although the precise connection between Mr. Merory and the Domain Name is unknown, given his apparent control over the Domain Name it will be assumed arguendo that he is the beneficial owner or that he has authority to speak on the beneficial owner’s behalf.
A respondent can show it has rights to or legitimate interests in a domain name in various ways even where, as is the case here, it is not licensed by or affiliated with a complainant. For instance, it can show that it has been commonly known by the domain name or that it is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. If a respondent can demonstrate that before notice of a dispute, it used or made demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or service, rights or legitimate interests in a domain name might be demonstrated.
The Respondent is not known by the Domain Name. Given the use to which it was said the Domain Name might be put, i.e., an online clothing store, coupled with the suggestion that such store might sell a variety of brands (“I have purchase agreements with several leading Australian streetwear brands”), the Panel would not accept that there is either legitimate noncommercial or fair use, or that use of the Domain Name in the manner suggested could amount to a bona fide offering of goods. It would be difficult to accept that a (non-authorized) website to which a domain name resolves, which takes advantage of the renown of the trademark of another (such that Internet users may well be misled), could amount to a bona fide offering. It should also be noted that any noncommercial or fair use must be without intent to mislead, but it is likely (in the absence of any alternative explanation) that the very purpose in the Respondent choosing the Domain Name it did was (in the event of setting up an online clothing store), to deliberately create a false impression of association with the Complainant.
There is no evidence before this Panel that the Respondent has rights or legitimate interests in the Domain Name. The Respondent has not come forward with a Response and the contentions of the Complainant by which it has made out a prima facie case that the Respondent has no rights or legitimate interests have not been contradicted, challenged, or cast into doubt by the brief analysis set out above. Accordingly, the Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy and is satisfied that there is nothing inappropriate in such a finding. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances indicative of bad faith registration and use. Paragraph 4(b)(i) provides that where there are circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring it to the complainant or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name, such shall be evidence of the registration and use of a domain name in bad faith. Whilst it is clear that the Respondent sought to sell the Domain Name to the Complainant for an amount in excess out-of-pocket costs, the Panel cannot be sure that it was its primary intention to do so. It appears that the Complainant approached the Respondent (even though the Respondent thereafter appeared very keen to sell).
Another way a complainant may demonstrate bad faith registration and use is to show that a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or of products or services on it (paragraph 4(b)(iv) of the Policy). The Respondent was clearly aware of the Complainant’s TEE LUV trademark given the use to which it was said the Domain Name might be put, i.e., an online clothing store. If the Respondent had in fact set up an online clothing store (in the manner described) to which the Domain Name resolved, it seems inevitable that confusion could arise. Thus, whilst the Respondent had not yet (it is assumed) put words into action and actually set up an online store, the suggestion of doing so in the Panel’s view, given all the circumstances of this Complaint, is sufficient to establish bad faith registration and use.
Even if Mr. Merory has no connection to the Domain Name or its beneficial owner, such that all that was said by Mr. Merory should be ignored, the Panel would still find for the Complainant. A mere passive holding of a domain name can still amount to bad faith registration and use where a respondent has incorporated another’s well-known and distinctive trademark into a domain name without explanation or participation in UDRP proceedings, where there is no suggestion of actual or contemplated good faith use, where such good faith use would seem nothing other than implausible and where the respondent has sought to conceal its identity.
Accordingly, the Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name 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 Domain Name be transferred to the Complainant.
Jon Lang
Sole Panelist
Date: January 29, 2018
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