The Complainant is Michael Hill Franchise Pty Limited of Murarrie, Australia, represented by Lowe Graham Jones, PLLC, United States of America (“United States”).
The Respondent is Super Privacy Service c/o Dynadot of San Mateo, California, United States. 2. The Domain Name and Registrar
The disputed domain name, (the “Domain Name”), is registered with Dynadot, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 28, 2017. On January 2, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 3, 2018, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on January 8, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 28, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 29, 2018.
The Center appointed Tony Willoughby 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 Complainant is an Australian corporation founded in 1979 and is engaged in the production and sale of jewelry under the brand name MICHAEL HILL. The Complainant operates a website connected to its domain name, which it registered in 1998.
The Complainant is the registered proprietor of numerous MICHAEL HILL trade mark registrations around the world including by way of example, United States Trade Mark Registration No. 3983236, dated June 28, 2011, for MICHAEL HILL (standard characters) for a variety of goods in classes 16.
The Respondent is based in the United States. The Domain Name was registered on November 24, 2017, and is connected to a parking page featuring advertising links relating to jewelry. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is confusingly similar to a trade mark in which it has rights. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. Finally, the Complainant contends that the Domain Name has been registered and is being used in bad faith. Its primary contention is that the Respondent registered and is using the Domain Name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. Secondarily it contends that the Respondent registered the Domain Name in an attempt to prevent Complainant from reflecting its mark in a corresponding domain name and for the purpose of disrupting the business of the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith. B. Identical or Confusingly Similar
The Domain Name comprises the Complainant’s trade mark (absent the space between “Michael” and “Hill”) and the “.global” generic Top-Level Domain identifier. The differences between the Domain Name and the Complainant’s MICHAEL HILL trade mark are immaterial for the purposes of this assessment under paragraph 4(a)(i) of the Policy.
The Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights. C. Rights or Legitimate Interests
The Respondent has adopted for the Domain Name a name, which is substantially identical to the Complainant’s Michael Hill trade mark, and has connected the Domain Name to a parking page featuring advertising links to websites offering jewelry, the very area of business in which the Complainant is and has for many years been engaged.
There is nothing in the evidence before the Panel to indicate on what basis the Respondent could sensibly be said to have any right or legitimate interest in respect of the Domain Name. The Respondent clearly has a case to answer, but the Respondent has provided no answer.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. D. Registered and Used in Bad Faith
For present purposes it is only necessary for the Panel to address the Complainant’s primary basis for attacking the Respondent’s registration of the Domain Name, namely that it constitutes registration and use in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
Paragraph 4(b)(iv) of the Policy reads:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Panel agrees with the Complainant that Internet users are likely to see the Domain Name, which is the “.global” equivalent of the Complainant’s “.com” domain name, and which is substantially identical to the Complainant’s MICHAEL HILL trade mark, as a domain name of or authorised by the Complainant. They are likely to visit the Respondent’s website anticipating that they will be arriving at a website of or authorised by the Complainant. On arriving at the website it will immediately be apparent that they have arrived at a Pay-Per-Click parking page not associated with the Complainant, but offering nonetheless links to a variety of jewelry websites, most of them being websites of the Complainant’s competitors.
While the Respondent’s website features at the bottom of the page a disclaimer stating that the “Sponsored Listings displayed here are automatically generated by third parties and have no relationship whatsoever with either the domain owner or the service provider”, the Respondent’s website is clearly a commercial website from which somebody is deriving commercial gain. As indicated, many of the visitors to the website will be doing so having been deceived as to the nature of the website by the Domain Name.
Even if it were the case that the Respondent is not deriving a direct personal benefit from the revenue that the website is generating, the Respondent cannot sensibly avoid responsibility for the content of the website. Moreover, the Panel finds it impossible to believe that the Respondent is not deriving a commercial benefit of some kind from the use to which the Domain Name is being put.
The matter is addressed in section 3.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition reading:
“Can third-party generated material “automatically” appearing on the website associated with a domain name form a basis for finding bad faith?
Particularly with respect to “automatically” generated pay-per-click links, panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name (nor would such links ipso facto vest the respondent with rights or legitimate interests).
Neither the fact that such links are generated by a third party such as a registrar or auction platform (or their affiliate), nor the fact that the respondent itself may not have directly profited, would by itself prevent a finding of bad faith.
While a respondent cannot disclaim responsibility for links appearing on the website associated with its domain name, panels have found positive efforts by the respondent to avoid links which target the complainant’s mark (e.g., through “negative keywords”) to be a mitigating factor in assessing bad faith.”
The Panel finds that the Domain Name has been registered and is being used in bad faith within the meaning of paragraphs 4(b)(iv) and 4(a)(iii) 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 Domain Name, , be transferred to the Complainant.
Tony Willoughby
Sole Panelist
Date: February 19, 2018
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