Complainant is Hannah’s Boutique, Inc. of Palos Park, Illinois, United States of America (“United States”), represented by James A. Stark, United States.
Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States / John Smith of Rockford, Illinois, United States. 2. The Domain Name and Registrar
The disputed domain name (the “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 February 28, 2018. On February 28, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 1, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on March 1, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. The Center received an email communication from Respondent on March 1, 2018. Complainant filed an amended Complaint on March 6, 2018. In response to a request for clarification by the Center on March 19, 2018, Complainant submitted a clarification to the Complaint on March 20, 2018.
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 March 23, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 12, 2018. No Response was received.
The Center appointed Robert A. Badgley as the sole panelist in this matter on April 24, 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
Complainant is a retailer of prom dresses, bridal party dresses, formal dresses, pageant dresses, and related accessories. Complainant operates a physical store in suburban Chicago, Illinois, and also conducts its retail business via an Internet website. Since October 2009, Complainant has used HANNAH’S BOUTIQUE in commerce to identify and distinguish its retail business in the field of formal dresses and related items.
According to the Complaint, three individuals (known herein as “BAS”, “AS”, and “RS”) are “the principals of a prom retail store chain doing business as “Peaches Boutique” (“Peaches”). Peaches is described by Complainant as “a primary competitor of Complainant”. According to Complainant, it and Peaches have “a well-documented and publicized rivalry”, including a lawsuit Complainant filed against Peaches for alleged antitrust and other claims. The Domain Name is currently registered under the Registrant name “John Smith”, but Complainant alleges that “evidence strongly indicates that JS is either the true registrant or an agent acting on behalf of the true registrant”.
The Domain Name was originally registered on October 15, 2010. The record is not entirely clear, but it appears that for several years the Domain Name resolved to a website featuring Complainant’s business.
According to the Complaint, an individual (“BF”) worked “as a trusted agent of Complainant” for approximately four years. As part of his duties to Complainant, BF performed certain technology support functions for the business. Before November 23, 2015, Complainant used the services of an independent third-party contractor (“CS”), who held and administered the Domain Name for the benefit of Complainant. On or about November 23, 2015, Complainant alleges, BF agreed to help Complainant transfer the Domain Name from CS’s GoDaddy account to a new GoDaddy account in the name of or for the benefit of Complainant.
The business relationship between BF and Complainant deteriorated in mid-2017, and ultimately ended in late 2017. At that time, Complainant learned that BF had not completed the Domain Name transfer to a GoDaddy account under Complainant’s name. Instead, BF had transferred and continued to hold and renew the Domain Name under his own GoDaddy account. In December 2017, BF threatened to shut down the website to which the Domain Name resolved unless Complainant paid him money not to do so. When Complainant refused, it is alleged, BF retaliated by removing Complainant’s website and transferring the Domain Name to Respondent, Complainant’s competitor.
The Domain Name currently resolves to a website featuring the banner “Chicago Prom Dress Shopping”. There are various hyperlinks below the banner, including “Prom Dresses”, “Hair and Makeup”, “Top Chicago Hotels”, “Limousine”, and “Tuxedos”. The sole link under the “Prom Dresses” header is Peaches Boutique. 5. Parties’ Contentions A. Complainant
Complainant asserts that it has established the three elements required under the Policy for a transfer of the Domain Name. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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. A. Identical or Confusingly Similar
The Panel concludes that Complainant has common law trademark rights in HANNAH’S BOUTIQUE through proven use as established in the record of this case, and further notes that Respondent registered a domain name it believed had sufficient source-identifying capacity due to its relation to Complainant’s products. See sections 1.7 and 1.15 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Panel finds that the Domain Name is confusingly similar to the HANNAH’S BOUTIQUE mark, as it is identical to the mark except for the absence of an apostrophe, a character not available in domain names.
Complainant has established Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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.
The Panel concludes that Respondent has no rights or legitimate interests in respect of the Domain Name. Respondent has not come forward to articulate or defend its motives in registering the Domain Name. The allegations in the Complaint and the evidence in support thereof are not disputed by Respondent. It appears from this uncontested record that Respondent is using the Domain Name to lure Internet users who are looking for Complainant’s business to Respondent’s competing business. This is manifestly not a bona fide use of the Domain Name, and the Panel perceives no other legitimate interest that Respondent could have in the Domain Name.
Complainant has established Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or 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 its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’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 Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used the Domain Name in bad faith. On the undisputed record of this case, it appears that Respondent has registered and is using the Domain Name in bad faith, within the meaning of the above-quoted Policy paragraphs 4(b)(iii) and 4(b)(iv). It appears that Respondent is illegitimately seeking to lure consumers from Complainant’s website to Respondent’s website by means of the confusion engendered by the Domain Name.
Complainant has established Policy paragraph 4(a)(iii). 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 Complainant.
Robert A. Badgley
Sole Panelist
Date: April 26, 2018
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