The Complainants are Joanna Gaines (the "First Complainant") and Magnolia IP Holdings, LLC (the "Second Complainant") (together the "Complainants") both of Waco, Texas, United States of America ("United States"), represented by Adams and Reese LLP, United States.
The Respondent is WhoisGuard, Inc., WhoisGuard Protected of Panama, Panama / Raja Ali of Faisalabad, Punjab, Pakistan. 2. The Domain Name and Registrar
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 December 18, 2017. On December 18, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 18, 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 the Complainants on December 27, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on December 30, 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 January 3, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 23, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 24, 2018.
The Center appointed Steven A. Maier as the sole panelist in this matter on February 7, 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 First Complainant is a television personality who is best known for presenting a United States television show "Fixer Upper" together with her husband Chip Gaines. The Second Complainant is a company owned and controlled by the First Complainant.
The Second Complainant is the owner of various trademark registrations which incorporate the name of the First Complainant, including for example:
- United States trademark number 5291612 for a standard character mark MAGNOLIA HOME BY JOANNA GAINES, registered in Class 20 on September 19, 2017 with a filing date of September 28, 2015;
- European Union Trade Mark number 015291156 for a word mark MAGNOLIA HOME BY JOANNA GAINES, registered in Class 2 on July 20, 2016 with a filing date of March 29, 2016.
The disputed domain name was registered on May 12, 2017.
According to evidence submitted by the Complainants, on July 19, 2017 the disputed domain name resolved to a website at "www." which was headed "Joanna Gaines SkinCare" and appeared to offer products including skin care cream for sale by reference to that name. 5. Parties' Contentions A. Complainants
The Complainants submit that the First Complainant is famous as a result of her television show and other activities, with millions of followers on social media. They state that, in parallel with her television career, she operates a number of business including a lifestyle brand MAGNOLIA HOMES BY JOANNA GAINES encompassing paint, wallpapers and textiles. The Complainants provide evidence of publicity associating the First Complainant with these business activities over a period of several years. The Complainants submit that, in consequence of these matters, the First Complainant enjoys unregistered trademark rights in the name JOANNA GAINES.
The Complainants contend that the disputed domain name is identical or confusingly similar to trademarks in which they have rights. They rely on both the marks JOANNA GAINES and MAGNOLIA HOME BY JOANNA GAINES and also refer to the domain name which resolves to the Complainant's commercial website. The Complainants say that the disputed domain name wholly incorporates the Complainants' mark JOANNA GAINES and that the addition of the generic term "skincare" does not remove the likelihood of confusion. Indeed, the Complainants say that the addition of that term aggravates the likelihood of confusion given the involvement of the First Complainant with lifestyle products. The Complainants also exhibit evidence of press rumours that the First Complainant was intending to give up her television show in order to launch a skincare brand, although they state that these rumours were false.
The Complainants contend that the Respondent has no rights or legitimate interests in respect of the disputed domain name. They say that they have no affiliation with the Respondent and have never licensed or authorized the Respondent to use the mark JOANNA GAINES. They deny that the Respondent has any independent trademark rights in the name JOANNA GAINES or has ever commonly been known by that name. They also dispute that the Respondent is using the disputed domain name for the purpose of any bona fide website. First, they say that the Respondent has deliberately used the disputed domain name to confuse Internet users into believing that the Respondent's website offers skincare products emanating from the First Complainant. Secondly, they allege that the Respondent's website represents a fraudulent enterprise: they exhibit a transcript of a customer service call from an individual who claimed to have been defrauded of USD 170 in the belief that any website operating under the disputed domain name must be that of the First Complainant.
The Complainants contend that the disputed domain name was registered and has been used in bad faith. They rely on the same facts as set out above and submit that, given the widespread public knowledge of the First Complainant and her businesses, and the (albeit false) publicity that she was launching a skincare range, it is inconceivable that the Respondent registered the disputed domain name otherwise than to confuse Internet users and trade off the Complainants' goodwill. The Complainants submit that the Respondent is using the disputed domain name to divert the Complainants' fans and potential customers to other websites offering products that do not emanate from the Complainants, thereby disrupting the Complainants' business. They also exhibit a "cease-and-desist" letter to the Respondent dated July 31, 2017. They say that the Respondent did not respond to this letter, and indeed offered additional products under the First Complainant's name after it was sent.
The Complainants request the transfer of the disputed domain name to the Second Complainant. B. Respondent
The Respondent did not reply to the Complainants' contentions. 6. Discussion and Findings
In order to succeed in the Complaint, the Complainants are required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Even in a case such as this where the Respondent has failed to participate, the Complainants must nevertheless demonstrate that each of the above elements is present. A. Identical or Confusingly Similar
The Panel finds that the Complainants have unregistered rights in the name and mark JOANNA GAINES for the purposes of the Policy. While this is the personal name of the First Complainant, the Panel finds that the Complainants have made significant use of that name in business to the extent that it has been used as a trademark-like identifier in trade or commerce (see section 1.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the "WIPO Overview 3.0")). The Complainants have also demonstrated registered trademark rights in the name MAGNOLIA HOME BY JOANNA GAINES and the Panel finds that the name JOANNA GAINES comprises a significant element of that mark. The disputed domain name comprises the Complainant's mark JOANNA GAINES together with the dictionary term "skincare", which is insufficient in the view of the Panel to distinguish the disputed domain name from the Complainants' trademarks. In the circumstances the Panel finds that the disputed domain name is identical to the Complainants' unregistered trademark JOANNA GAINES and confusingly similar to their registered trademark MAGNOLIA HOME BY JOANNA GAINES. B. Rights or Legitimate Interests
In the view of the Panel, the Complainants' submissions set out above give rise to a prima facie case for the Respondent to answer that it has no rights or legitimate interests in respect of the disputed domain name. However, the Respondent has not participated in this proceeding and has not, therefore, submitted any explanation for its registration and use of the disputed domain name, or evidence of any rights or legitimate interests in the disputed domain name, whether in the circumstances contemplated by paragraph 4(c) of the Policy or otherwise. The Panel also accepts the Complainants' contention that the term "skincare" (added to the Complainant's mark JOANNA GAINES in the disputed domain name) is within the range of goods or services that might reasonably be associated with the First Complainant, owing not least to the (albeit false) report that she was launching a skincare range. Accordingly, the Panel is satisfied on the evidence that the Respondent registered and has used the disputed domain name for the purposes of a website which seeks to take unfair advantage of the Complainants' trademarks by falsely suggesting that it offers skincare products emanating from, or otherwise associated with, the Complainants. A misrepresentation of this kind cannot amount to bona fide use and the Panel therefore concludes that the Respondent has no rights or legitimate interest in respect of the disputed domain name. C. Registered and Used in Bad Faith
By reference to similar findings of fact, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Respondent has provided no explanation for the choice of the disputed domain name and the Panel finds it overwhelmingly unlikely that the Respondent was unaware of the Complainants and their business when registering the disputed domain name. The Panel finds that the disputed domain name of itself represents an impersonation of the First Complainant and that the Respondent's website has misled consumers by offering skincare and other products by reference to the First Complainant's name and mark. In the circumstances, by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainants' trademarks as to the source, sponsorship, affiliation, or endorsement of that website or of products or services on that website (paragraph 4(b)(iv) 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 Second Complainant, Magnolia IP Holdings, LLC.
Steven A. Maier
Sole Panelist
Date: February 9, 2018
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