The Complainant is Show Pony Group Pty Ltd of Sydney, New South Wales, Australia, represented by Mills Oakley Lawyers, Australia.
The Respondent is Jan Everno, The Management Group II of Grandville, Michigan, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with D LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 31, 2018. On February 1, 2018, the Center transmitted by email to the Registrar a request for Registrar verification in connection with the Domain Name. On February 1, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent was 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 February 14, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 6, 2018. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on March 7, 2018.
The Center appointed Jane Seager as the sole panelist in this matter on March 27, 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 online fashion retailer that promotes and sells clothing online throughout Australia as well as internationally. It has been active since 2010.
The Complainant has supplied evidence that it owns a registered trade mark in the term SHOWPO (Australian trade mark registration no 1570100 registered on July 25, 2013), which predates the registration of the Domain Name.
The Domain Name was registered on April 8, 2015. At the time that the Complaint was filed it was pointing to a website containing sponsored links. 5. Parties’ Contentions A. Complainant
In response to each of the requirements under the Policy, the Complainant asserts as follows:
(i) The Domain Name is confusingly similar to the Complainant’s trade mark
The Complainant asserts that the Domain Name without the “.com” is confusingly similar or identical to its trade mark SHOWPO, its pending SHOW PONY FASHION trade mark, and the Show Pony corporate name.
(ii) The Respondent has no rights or legitimate interests in the Domain Name
According to the Complainant, the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant states that the Respondent is not affiliated with the Complainant in any way and it was not authorized by the Complainant to register or use the Domain Name or to seek registration of any domain name incorporating the “Show Pony” trade mark or a trade mark similar to this term. Furthermore, the Complainant argues that there is no evidence that the Respondent has been commonly known by the Domain Name, notwithstanding its lack of trade mark or service rights. The Complainant supports its assertions by stating that the Domain Name provides sponsored links. Moreover, the Complainant underlines that it is unclear what kind of services the Respondent offers and that between the registration of the Domain Name in April 2015 and January 2018 the Respondent showed no apparent interest in making legitimate non-commercial or fair use of the Domain Name as it was inactive.
(iii) The Domain Name was registered and is being used in bad faith
The Complainant submits that it is difficult to draw any conclusion that the registration and holding of the Domain Name is consistent with the Respondent’s core business as it is unclear what this is.
The Complainant states that the Domain Name belonged to it before the Respondent’s registration in 2015. According to the Complainant, the Respondent capitalized on the Complainant’s inadvertence in allowing the Domain Name to lapse. As a consequence, the Complainant claims that it has lost potential clients and revenue.
The Complainant states that the Domain Name was inactive prior to its letter of demand to the Respondent on January 11, 2018 requesting transfer of the Domain Name. The Complainant argues that several days after the letter was sent a series of links appeared on the website to which the Domain Name was pointing.
In the Complainant’s view, by using the Domain Name the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s trade mark.
According to the Complainant, the Respondent is not making fair use of the Domain Name because it is being used to provide links to other websites.
The Complainant submits that the Respondent would have been aware of the Complainant’s trade marks if it had conducted a search prior to the registration of the Domain Name.
Moreover, the Complainant argues that the Respondent did not respond to the letter of demand sent by the Complainant.
Finally, the Complainant underlines that the Respondent’s email address is associated with 30 other domains and the Respondent’s name is associated with 3,514 other domains. The Complainant notes that the Respondent has been the subject of several prior transfer decisions under the Policy (namely Carrefour v. Jan Everno, The Management Group II,WIPO Case No. D2017-0586 and Groupon, Inc. v. Jan Everno, The Management Group II,WIPO Case No. D2016-0307) and argues that the Respondent is engaged in a cybersquatting pattern of conduct. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that to obtain the transfer of the Domain Name, the Complainant must prove each of the following three elements:
(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.
The standard of proof is on the balance of probabilities (see Nintendo of America Inc. v. Fernando Sascha Gutierrez,WIPO Case No. D2009-0434).
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Furthermore, paragraphs 10(b) and 10(d) of the Rules provide that the Panel shall ensure that the parties are treated with equality and shall determine the admissibility, relevance, materiality and weight of the evidence.
In addition, paragraph 14(b) of the Rules further provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, the Rules, the Panel shall draw such inferences therefrom as it considers appropriate.
The Panel notes that the Respondent has failed to respond to the Complaint. The Respondent’s failure to respond, however, does not automatically result in a decision in favor of the Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0).
Taking the aforementioned provisions into consideration, the Panel finds as follows: A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Panel to first consider whether the Complainant has established relevant trade mark rights. The Complainant, Show Pony Group Pty Ltd, has provided evidence of a registered trade mark in the term SHOWPO (Australian trade mark registration no 1570100 registered on July 25, 2013). It should be noted that, as referred to at section 1.1.4 of the WIPO Overview 3.0, pending trade mark applications do not by themselves establish trade mark rights within the meaning of paragraph 4(a)(i) of the Policy.
The Panel is also required under paragraph 4(a)(i) of the Policy to examine whether the Domain Name is identical or confusingly similar to the Complainant’s trade mark. In this regard, the Panel notes that the Domain Name incorporates the Complainant’s distinctive SHOWPO trade mark in its entirety with the addition of the letters “NY” and the descriptive term “fashion”. The Panel agrees with the Complainant that this addition is insufficient to avoid confusion with the Complainant’s trade mark rights. Indeed in the Panel’s opinion it only serves to increase the confusing similarity, given that the term “pony” is closely associated with the Complainant and the term “fashion” with its field of activity.
Furthermore, it is widely accepted that the “.com” generic Top-Level Domain (“gTLD”) is generally irrelevant for the purpose of assessing identity or confusing similarity between a trade mark and a domain name.
The Panel therefore finds that the Domain Name is confusingly similar to the Complainant’s trade mark. Accordingly, the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a list of non-exhaustive circumstances that may suggest that a respondent has rights or legitimate interests in a domain name, including:
(i) before any notice to the respondent of the dispute, the respondent’s use of, or 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 services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trade mark or service mark rights; or
(iii) the respondent 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 trade mark or service mark at issue.
Based on the statements and evidence put forward by the Complainant, the Panel finds that the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in the Domain Name and that, as a result of its default, the Respondent has failed to rebut such a showing.
The Respondent cannot be considered to be making a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy referred to above, given that the Domain Name is pointing to a website containing sponsored links to goods and services related to the Complainant’s activity, and therefore the Respondent (or a third party) is unduly profiting from the Complainant’s rights by using the Domain Name, which contains the Complainant’s trade mark in its entirety and is closely associated with it, to mislead Internet users searching for the Complainant and divert them to its website instead (see section 2.9 of the WIPO Overview 3.0). Neither can such use be said to be a legitimate noncommercial or fair use of the Domain Name within the meaning of paragraph 4(c)(iii).
Furthermore, the Complainant has stated that it has not authorized the Respondent to make any use of its trade mark and it is highly unlikely that the Respondent would be “commonly known” by the Domain Name, as referred to at paragraph 4(c)(ii). In this regard, the Panel agrees with the Complainant that it is unclear what kind of services the Respondent offers.
The Panel is also of the view that the Respondent’s failure to submit a response is, in the circumstances of this case, also evidence of the Respondent’s lack of rights or legitimate interests in the Domain Name. See Pomellato S.p.A v. Richard Tonetti,WIPO Case No. D2000-0493 (“non-response is indicative of a lack of interest inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights”).
The Panel therefore finds that the Respondent has no rights or legitimate interests in the Domain Name. As such, the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, including:
(i) circumstances indicating that the respondent has registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the respondent has registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trade mark or service mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’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 respondent’s website or location or of a product or service on the respondent’s website or location.
The Complainant’s registration of the trade mark SHOWPO predates the Respondent’s registration of the Domain Name by two years. As such, the Panel finds that the Respondent would have been alerted to the Complainant and its rights if it had conducted a search prior to the Domain Name registration, particularly as the Domain Name is distinctive (being three descriptive words combined in a very unusual way). The Respondent’s failure to do this implies willful blindness, given that the Complainant has evidenced that the Respondent owns a large number of domain names and has previously been the subject of prior decisions under the Policy (see section 3.2.3 of the WIPO Overview 3.0). As pointed out by the panel in mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141, “[a]lthough there may be no obligation that a domain name registrant conduct trademark or search engine searches to determine whether a domain name may infringe trademark rights, a sophisticated domainer who regularly registers domain names for use as PPC [pay-per-click] landing pages cannot be willfully blind to whether a particular domain name may violate trademark rights. In this context, a failure to conduct adequate searching may give rise to an inference of knowledge”.
As evidenced by the Complainant, the Respondent is engaged in a cybersquatting pattern of conduct. In the first case invoked by the Complainant (Carrefour v. Jan Everno, The Management Group II,WIPO Case No. D2017-0586), the disputed domain name registered by the Respondent resolved to different websites, including to a website with sponsored links to third-party websites. In the second case (Groupon, Inc. v. Jan Everno, The Management Group II,WIPO Case No. D2016-0307), the website associated with the disputed domain name, registered by the Respondent, contained sponsored advertisements including links to competitors of the complainant in question. Given this evidence, the Panel is satisfied that the Respondent has registered the Domain Name in order to prevent the Complainant from reflecting the Complainant’s trade mark or service mark in a corresponding domain name, and has engaged in a pattern of such conduct, in accordance with paragraph 4(b)(ii) of the Policy.
The Panel further finds that the Respondent’s use of the Domain Name, which incorporates the Complainant’s trade mark in its entirety, for a parking page containing sponsored links, including links related to the Complainant’s field of business, is, under the circumstances, evidence of bad faith. Whether the links are automatically generated or not is irrelevant as a domain name registrant is generally responsible for the content appearing on the associated website (see section 3.5 of the WIPO Overview 3.0). The Panel thus finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, in accordance with paragraph 4(b)(iv) of the Policy.
Finally, the Respondent’s lack of response to the cease and desist letter sent by the Complainant together with the Respondent’s use of a privacy service to mask its details in the WhoIs, which was clearly intended to frustrate the enforcement of the Policy, further underlines the Respondent’s bad faith.
The Panel therefore finds that the Domain Name has been registered and is being used in bad faith and that paragraph 4(a)(iii) of the Policy is satisfied. 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.
Jane Seager
Sole Panelist
Date: April 10, 2018
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