The Complainant is All Saints Retail Limited of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom" or "UK"), represented by SafeNames Ltd., United Kingdom.
The Respondent is Name Redacted.1 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the "Registrar") (the "Domain Name"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 28, 2018. On March 29, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 29, 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 April 16, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 6, 2018.
On April 22, 2018, the Center received an email from an individual indicating that the Domain Name had been registered using Respondent's contact details without authorization. The Center emailed the Parties on April 25, 2018, notifying them of the Respondent identity issue. On May 7, 2018, the Center notified the Parties of the commencement of the panel appointment process.
The Center appointed Gareth Dickson as the sole panelist in this matter on May 17, 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 the registered proprietor of several trade mark registrations around the world for ALL SAINTS. These trade marks cover clothing (amongst other goods and services) and include UK trade mark registration number 2307473, registered on March 21, 2003 (the "Mark").
The Domain Name was registered on March 13, 2018. At material times it directed users to a website featuring prominent use of the ALL SAINTS sign and offering clothing for sale by reference to that sign. The photographs used on that website are identical to those owned by the Complainant and the names given to the products made available for sale there match the names the Complainant has given to its own identical products. 5. Parties' Contentions A. Complainant
The Complaint contends that the Domain Name is confusingly similar to the Mark in that it reproduces the Mark in its entirety and the elements "outlet" and "uk" and the generic top-level domain ("gTLD") ".com" do not render the Mark unrecognizable in the Domain Name.
The Complainant further argues that the Domain Name is being used to offer "alleged" ALL SAINTS clothing, but that such offering is not bona fide, in part because the offer does not appear to be an offering of genuine ALL SAINTS clothing, nor has the Respondent been authorised or licensed to use the Mark or the Complainant's images, nor is the lack of any relationship between the Respondent and the Complainant made clear on the website accessed via the Domain Name. The Respondent has not been commonly known by the Domain Name nor are they making a legitimate noncommercial or fair use of the Domain Name.
Furthermore, the Complainant has provided correspondence with an Internet Service Provider ("ISP") in which it described how, in its view, the Domain Name was being used to unlawfully obtain financial and other details from Internet users. According to the evidence supplied by the Complaint, the ISP removed the content from the website, but the registrant of the Domain Name moved ISPs the same day so that the material very quickly reappeared online.
Finally, the Complainant contends that for the reasons identified above and because the Domain Name was used to offer (or to purport to offer) clothing for sale under the ALL SAINTS sign immediately after the Domain Name was registered, the Domain Name was registered and is being used in bad faith. The Complaint notes that a similarly operated website involving its ALL SAINTS mark has been the subject of a successful UDRP Complaint. B. Respondent
As noted in section 3 above, the individual identified as the registrant of the Domain Name has written to the Center to state that they are not the registrant of the Domain Name and that their information has appeared on the WhoIs without their consent. They asserted that they attempted to purchase goods from the website accessed via the Domain Name in mid-March 2018 but that the transaction was unsuccessful. They surmise that the website was set up to obtain their contact details.
Other than these submissions, the Respondent does not contest any aspect of the Complaint nor does the Respondent argue that they are entitled to retain (nor that they are interested in retaining) the Domain Name. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant bears the burden of proving that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(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.
These criteria are cumulative. The failure of the Complainant to prove any one of them means the Complaint must be denied. A. Identical or Confusingly Similar
The Panel accepts that the Complainant is the owner of, and therefore has rights in, the Mark.
The Panel also accepts that the Domain Name is confusingly similar to the Mark. In particular, "allsaints" is the dominant and distinctive part of the Domain Name and the addition of the descriptive term "outlet", the geographical designation "uk" and the gTLD suffix ".com", does not alter that conclusion in any way. Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") permits a finding of confusing similarity in circumstances such as this, stating that: "Where the relevant trade mark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element."
Accordingly, the Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights. B. Rights or Legitimate Interests
Although a complainant is required to demonstrate that a respondent has no rights or legitimate interests in respect of the domain name, this does not mean that it has to prove a negative to succeed in its complaint.
As explained in section 2.1 of the WIPO Overview 3.0, the consensus view is that where a complainant establishes a prima facie case that the respondent lacks rights or legitimate interests the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
In the current proceeding, the Complainant has established their prima facie case, having alleged that the Respondent has not been licensed or authorized by them to use their ALL SAINTS mark, whether in the Domain Name or otherwise. Furthermore, there is no evidence that the Respondent has acquired any common law rights to use ALL SAINTS and it is not making a noncommercial or fair use of the Domain Name.
Furthermore, the Respondent makes no effort to rebut the Complainant's arguments or to assert that they have any rights or legitimate interests in respect of the Domain Name. Assuming the Respondent's contention that they have been a victim of identity theft is true (the Panel does not need to make any finding on this but has been presented with no reason to doubt that it is true), that is enough for a finding under this limb. But even if the Respondent had asserted a right or legitimate interest in relation to the Domain Name on the basis that it was offering genuine ALL SAINTS goods for sale, that argument would have been insufficient to prove a right or legitimate interest in respect of the Domain Name under the principles set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 ("Oki Data"), as discussed in section 2.8.1 of the WIPO Overview 3.0. These requirements may be stated briefly as follows:
- The Respondent must actually be offering the goods or services at issue; and
- The Respondent must use the site to sell only the trade marked goods; and
- The site must accurately disclose the registrant's relationship with the trade mark owner; and
- The Respondent must not try to corner the market in all domain names, thus depriving the trade mark owner of reflecting its own mark in a domain name.
Even assuming that the goods offered via the Domain Name are genuine goods first put on the market by the Complainant or with its consent, the lack of any relationship between the registrant of the Domain Name and the Complainant has not been accurately disclosed, notwithstanding that a commercial relationship will be inferred by the prominent use of the Mark in the Domain Name and on the website to which it provides access.
Since the Respondent has not met the burden of production to rebut the prima facie case made out by the Complainant, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. C. Registered and Used in Bad Faith
The Panel accepts the Complainant's contention that the Domain Name was registered, whether by the Respondent or by an as-yet-unidentified registrant, because of its similarity to the Mark and without the Complainant's authorization. The Panel also accepts that the use of the Domain Name, by whomever, to exploit the Complainant's Mark and copyright protected images without the Complainant's authorization or any other lawful basis to do so, amounts to use of the Domain Name in bad faith.
The Complainant makes serious allegations about the purposes for which the Domain Name exists, which would certainly constitute bad faith use of the Domain Name. However, in light of the findings in the immediately preceding paragraph the Panel does not need to address those allegations in detail but does note that they appear to have been accepted by the ISP identified in the evidence filed with the Complaint.
The Panel finds that the Domain Name has been registered and used 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.
Gareth Dickson
Sole Panelist
Date: May 31, 2018
1 In light of potential identity theft, the Panel has decided to redact the Respondent's name from the caption and body of this Decision. However, the Panel has attached as Annex 1 to this Decision an instruction to the Registrar which includes the name of the Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar, and has indicated that Annex 1 is not to be published due to the circumstances of this case. See Banco Bradesco S.A. v. FAST-12785241 Attn. B / Name Redacted,WIPO Case No. D2009-1788.
Full & Egal Universal Law Academy