The Complainant is PVH CORP. of New York, New York, United States of America (“PVH Corp.” or “Complainant”), represented by Kestenberg Siegal Lipkus LLP, Toronto, Ontario, Canada.
The Respondent is Super Privacy Service LTD c/o Dynadot of San Mateo, California, United States (“Respondent”). 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 May 8, 2018. On May 8, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 9, 2018, 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 Complainant on May 14, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 14, 2018.
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 May 15, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 4, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 5, 2018.
The Center appointed A. Justin Ourso III as the sole panelist in this matter on June 12, 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 international apparel company whose well-known brands include the VAN HEUSEN trademark, at issue in this proceeding. The Complainant owns United States Trademark Registration No. 728,039 for VAN HEUSEN, registered on the principal register on February 27, 1962, for “dress shirts, [ Negligee Shirts, ] and work skirts and parts thereof-namely, neckbands, cuffs and shirt fronts,” claiming first use in 1921, and United States Trademark Registration No. 1,580,850 for VAN HEUSEN, registered on the supplemental register on January 30, 1990, for “eyeglasses.”
The Complainant owns a domain name for a web site that it launched in 1997 comprising its VAN HEUSEN mark, namely, . The web site accessed via this domain name provides information about the Complainant’s products. The Complainant sells its VAN HEUSEN products through authorized dealers that are well-known brick-and-mortar and on-line stores.
The Complainant alleged in its Complaint, supported with a declaration from an officer, that it has spent millions of dollars in advertising and promoting its products under its VAN HEUSEN trademark in a variety of media, including print and on-line; it has sold hundreds of millions of dollars of products under its trademark; and millions of visitors have visited its “www.” web site.
The Respondent, which has not submitted a response to the Complaint, owns a registration for the Domain Name, , which was registered on August 23, 2000, and is currently registered through a privacy service. 5. Parties’ Contentions A. Complainant
Regarding the first element of a claim, set forth in the Policy, paragraph 4(a)(i), the Complainant contends:
1. Its trademark registrations and widespread use, advertising, and promotion of its VAN HEUSEN mark since 1921 establish its trademark rights.
2. The Respondent’s use of the Domain Name is a clear case of “typosquatting,” because this domain name differs from the Complainant’s trademark VAN HEUSEN only by inverting the adjacent letters “u” and “e” and results in the Domain Name being confusingly similar to its trademark.
Regarding the second element, set forth in the Policy, paragraph 4(a)(ii), the Complainant contends:
3. It first used and first registered its VAN HEUSEN trademark before the Respondent registered the Domain Name in 2000, or used it as a name or mark.
4. It registered its domain name several years before the Respondent registered the Domain Name.
5. The Respondent was aware of the Complainant’s domain name and web site before the Respondent registered the Domain Name, because the Complainant’s web site was operational and accessible to the Respondent when the Respondent registered the Domain Name.
6. The Respondent had constructive knowledge of the Complainant’s VAN HEUSEN trademark registrations before it registered the Domain Name.
7. The Respondent’s registration of a domain name wholly incorporating a famous mark is incapable of supporting a legitimate interest.
8. The Respondent is not using the Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
9. The Respondent is using the Domain Name to “browser hijack,” i.e., to place unwanted software on a web browser’s settings without a user’s permission and inject unwanted advertising into the user’s browser.
10. The Complainant has not licensed or otherwise authorized the Respondent to use the VAN HEUSEN trademark or to use or register a domain name that incorporates this mark.
11. The Respondent is not commonly known by the name .
12. The Respondent has no proprietary rights or legitimate interest in a “Van Huesen” mark or the Domain Name.
Regarding the third element, set forth in the Policy, paragraph 4(a)(iii), the Complainant contends:
13. The Respondent registered and is using the Domain Name in bad faith.
14. The Respondent is using the Domain Name to “browser hijack,” i.e., to place unwanted software on a web browser’s setting without a user’s permission to place unwanted advertising into the user’s browser.
15. Many Internet users rely on a web browser’s URL to seek information about authorized sources of information and merchandise.
16. The Complainant has no control over the use of the domain name using its trademark VAN HEUSEN.
17. The use of the Domain Name will divert Internet users to an unauthorized web site having no affiliation with the Complainant.
18. No plausible actual or contemplated use of the Domain Name exists that would not be illegitimate and constitute an infringement of the Complainant’s rights.
19. The Respondent’s passive use amounts to bad faith.
20. Bad faith can be inferred from the Respondent having made no legitimate active use of the Domain Name.
21. The Respondent is able to use the domain name in emails to potential customers asserting an alleged affiliation with the VAN HEUSEN trademark that does not exist, presenting a danger to the Complainant and its brand.
The Complainant requested transfer of the Domain Name. B. Respondent
The Respondent did not submit a response to the Complaint. 6. Discussion and Findings
The Effect of the Respondent’s Default
The Respondent has not responded to the Complaint. If a Respondent does not submit a response, the Panel decides the dispute based upon the complaint. Rules, paragraphs 5(f) and 14(a). The Panel decides a complaint on the basis of the statements and documents submitted. Rules, paragraph 15(a).
Because the Complainant has the burden of proof, Rules, paragraph 4(a), the Respondent’s default, i.e., the Respondent’s failure to submit a response to the Complaint, does not mean that the Complainant automatically prevails. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0”), section 4.3. Accordingly, notwithstanding the Respondent’s default, the Complainant must prove the following three elements to obtain the requested relief: (i) the Domain Name is identical or confusingly similar to a trademark 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. Policy, paragraph 4(a).
However, in the absence of exceptional circumstances, the Respondent’s failure to respond to the Complaint requires that the Panel draw the inferences from this failure that it considers appropriate. Rules, paragraph 14(b). The Panel finds that no exceptional circumstances exist for the failure of the Respondent to submit a response. Accordingly, the Panel infers that the Respondent does not deny the facts alleged and the contentions urged by the Complainant based upon these facts, and will draw all reasonable inferences that are appropriate from the evidence and the facts found by the Panel. Id.; RX America, L.L.C. v. Tony Rodolakis,WIPO Case No. D2005-1190.
Although the Panel may draw negative inferences from the Respondent’s default, the Complainant may not rely on conclusory allegations and must support its allegations with evidence to prove the three elements and prevail. WIPO Overview 3.0, section 4.3. A. Identical or Confusingly Similar
The Complainant’s United States Trademark Registration, No. 728,039, registered on the principal register on February 27, 1962, establishes the Complainant’s trademark rights.1 WIPO Overview 3.0, section 1.2.1.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark VAN HEUSEN. Indeed, it is identical, with the exception of two letters being transposed. A domain name that consists of a common, obvious, or intentional misspelling of a trademark is considered by the jurisprudence under the Policy to be confusingly similar to the relevant mark. WIPO Overview 3.0, section 1.9; Schneider Electric S. A. v. Domain Whois Protect Service / Cyber Domain Services Pvt. Ltd.,WIPO Case No. D2015-2333, (inversion of the letters “e” and “i” not sufficient to avoid the disputed domain name being found confusingly similar to the trademark at issue); Dr. Ing. h.c. F. Porsche AG v. Laksh Internet Solutions Private Limited / Privacy Protection,WIPO Case No. D2008-0691, (reversal of the letters “o” and “r” represents typosquatting rendering domain name confusingly similar to trademark).
Accordingly, the Complainant has proven the first element, namely, that the Domain Name is confusingly similar to a trademark in which it has rights. B. Rights or Legitimate Interests
The Policy provides a non-exhaustive list of circumstances that, if a Panel finds proved, demonstrates that a Respondent has rights to, or legitimate interests in, a domain name for purposes of Paragraph 4(a)(ii) of the Policy:
(i) before any notice to the Respondent of the dispute, its 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 has been commonly known by the domain name, even if it has acquired no trademark 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 trademark or service mark at issue.
The Complainant’s trademark rights precede the registration of the Domain Name. The Panel finds, on the basis of the Complaint and the Declaration, Annex C, that the Complainant has not licensed or otherwise authorized the Respondent to use the trademark VAN HEUSEN or to register or use the mark in a domain name. For these reasons, the Complainant has shown, prima facie, the second element – that the Respondent lacks rights or legitimate interests in the Domain Name.
Where a complainant shows prima facie that a respondent lacks rights or legitimate interests, the burden of production on this second element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. WIPO Overview 3.0, section 2.1.
The Respondent here has not even submitted a response to the Complaint, much less submitted evidence to rebut the prima facie showing.
If a respondent fails to come forward with relevant evidence to rebut the prima facie showing, a complainant is deemed to have proven that the respondent has no rights or legitimate interest in the domain name, satisfying the second element. WIPO Overview 3.0, section 2.1.
Moreover, panels have consistently held that typosquatting is not a legitimate noncommercial or fair use of a domain name. Schneider Electric S. A. v. Domain Whois Protect Service/Cyber Domain Services Pvt. Ltd.,WIPO Case No. D2015-2333, ; Dr. Ing. h.c. F. Porsche AG v. Laksh Internet Solutions Private Limited / Privacy Protection,WIPO Case No. D2008-0691; E, Inc. v. Digi Real Estate Foundation,WIPO Case No. Case No. D2006-1043.
Accordingly, the Complainant has proven the second element, namely, that the Respondent lacks rights or legitimate interests in the Domain Name. C. Registered and Used in Bad Faith
The Complainant has alleged that the Respondent registered and is using the Domain Name in bad faith. Specifically, the Complainant has alleged that the Respondent is using the Domain Name to “browser hijack,” i.e., to place unwanted software on the web browser settings of visitors to the Respondent’s web site, without the permission of visitors, that will place unwanted advertising into the browser of visitors.
In support of this allegation, the Complainant has offered Annex A to the Complaint, which the Complainant has represented is a copy of the home page of the Respondent’s web site for the Domain Name. Annex A is two printed pages of what appear to be screen prints of web pages. These pages do not bear a legend at the top or bottom of the page showing the URL of the page and the date that the page was printed.2
The Panel has the authority to determine the admissibility, relevance, materiality, and weight of evidence. Rules, paragraph 10(d); WIPO Overview 3.0, section 4.7. Because the evidence offered in support of the “browser hijacking” allegation does not show the web site from which it was printed and the date on which the pages were printed, the Panel finds that this evidence is not competent to associate the pages with the Respondent and, therefore, that this documentation is not evidence of browser hijacking by the Respondent.
This failure of proof by the Complainant does not end the inquiry, however.
Because the Domain Name consists of an obvious misspelling of a mark that was originally a surname, it is more likely than not that the Respondent was aware of the Complainant’s trademark when it registered or acquired the Domain Name. Clear typosquatting is sufficient to support an inference of bad faith, shifting the burden to the Respondent to offer evidence rebutting the inference. Dr. Ing. H.c. F. Porsche AG v. Laksh Internet Solutions Private Limited / Privacy Protection,WIPO Case No. D2008-0691, (reversal of the letters “o” and “r” represents typosquatting supporting inference of bad faith and shifting the burden to Respondent); see easyGroup IP Licensing Limited v. Domain Admin, Privacy Protection Service Inc., Private Registrations Aktien Gesellschaft / Privacy Protection Service Inc.,WIPO Case No. D2014-0387. The Respondent, having failed to file a response, has made no attempt to rebut the allegation of typosquatting. Additionally, the Panel cannot conceive of any other plausible use of this typosquatting Domain Name, lending support to an inference of bad faith. WIPO Overview 3.0, section 4.3. Because the Respondent has not offered an explanation for the obvious misspelling of the Complainant’s trademark, and the Panel cannot conceive of one, the Panel finds that the typosquatting alone demonstrates bad faith use and that this bad faith existed at the time of the registration of the Domain Name.
It is common knowledge, as the Complainant asserts, that many Internet users rely on a web browser’s URL to seek information about authorized sources of information and merchandise. The Complainant has alleged that it has no control over the use of the Domain Name and that its use will divert Internet users to an unauthorized web site having no affiliation with the Complainant. The Respondent, having failed to file a response, has made no attempt to rebut these allegations. Accordingly, the Panel accepts as a reasonable inference that the Respondent’s diversion of Internet users to an unauthorized site is evidence of use in bad faith and that this bad faith existed at the time of the registration of the Domain Name. WIPO Overview 3.0, section 3.1.4(iii).
The Complainant has alleged that no plausible actual or contemplated use of the Domain Name exists that would not be illegitimate. A visit to the site of the Domain Name on May 15, 2018, redirected the visitor to an apparel site that was not a site of the Complainant, i.e., it redirected the visitor to a site selling competitive goods. This conduct is expressly addressed by the Policy, which states that using the domain name to intentionally attempt to attract, for commercial gain, Internet users to the Respondent’s web site, “or other on-line location,” by creating a likelihood of confusion with the complainant’s mark as to the source of a product on the Respondent’s “web site or location” is “evidence of the registration and use of a domain name in bad faith.” Policy, paragraph 4(b)(iv); WIPO Overview 3.0, sections 3.1.4(iv) and 3.1.4(v); LFP IP, LLC v. DomReg,WIPO Case No. D2012-0601; E, Inc. v. Digi Real Estate Foundation,WIPO Case No. Case No. D2006-1043 (“registration and use of a domain name to redirect Internet users to websites of competing organizations constitutes bad faith registration and use under the Policy”).
Additionally, visits to the site of the Domain Name during the preparation of this decision, including on June 25, 2018, redirected the visitor to a different web site, a department store web site that is a dealer of the Complainant’s. This change in the content of the site – with no explanation showing a legitimate reason, indeed, with no explanation at all of the Respondent’s use of the Domain Name or the Respondent’s web site – gives rise to a presumption that the Respondent’s purpose is to deceive. WIPO Overview 3.0, section 3.2.1; seePhilip Morris Products S.A. v. Whois Agent, Doman Protection Services, Inc. / P. Poon, Enc Electronics,WIPO Case No. D2018-1823; Iseo Serrature Spa v. Intercam di Magia Preziosi srl,WIPO Case No. D2009-0745; Comweld Group Pty. Limited. v. Comco Industries Co. Ltd.,WIPO Case No. D2001-0290 (“There appears to be no good reason to register as a domain name and link it to the web site except to use the mark CIGWELD to direct the consumers to Respondent’s web site for commercial gain.”).
The Respondent having failed to rebut this presumption, the Panel finds that the Respondent’s use is in bad faith and that this bad faith existed at the time of the registration of the Domain Name. Also, the use of a disputed domain name that linked visitors to a complainant’s dealers and to competitors of the complainant has been found evidence of bad faith. Dr. Ing. H.c. F. Porsche AG v. Laksh Internet Solutions Private Limited / Privacy Protection,WIPO Case No. D2008-0691.
The Complainant has alleged that the Respondent is able to use the domain name in emails to potential customers that will convey an affiliation with the VAN HEUSEN trademark that does not exist, presenting a danger to the Complainant and its brand. The Panel accepts as common knowledge that owners of web sites customarily use email addresses containing the domain name of the web site in electronic communications. The use of a confusingly similar domain name in emails that do not originate with the Complainant certainly presents a risk to the reputation of the Complainant’s trademark and the Complainant. See, e.g., Caliber Home Loans, Inc. v. Domains By Proxy, LLC / Patrick Scott,WIPO Case No. D2018-0524; The Coca-Cola Company v. Marcus Steiner,WIPO Case No. D2012-1804. Additionally, the use of a domain name to send deceptive emails has been held to constitute bad faith. WIPO Overview 3.0, section 3.4. The Complainant has not provided any evidence of such use. However, the Respondent has not rebutted that it engages in this practice, and, moreover, the risk is substantial given the finding that the Respondent has already engaged in the deceptive conduct of typosquatting. Accordingly, the Panel finds the substantial risk of deceptive emails associated with the domain name another reasonable basis, in the circumstances of obvious typosquatting and an unexplained change in the content of the web site, from which to infer bad faith use and that this bad faith existed at the time of the registration of the Domain Name.
The Complainant has also alleged, inconsistently with the allegation of browser hijacking, that the Respondent’s passive use amounts to bad faith and that bad faith can be inferred from the Respondent having made no active use of the Domain Name. It is possible that these allegations result from the Complainant having failed to remove them from a template when preparing its Complaint. See PVH Corp., Calvin Klein, Inc., Calvin Klein Trademark Trust, Tommy Hilfiger Licensing, LLC v. Zhao Zhong Xian, nashan, Liu Hong Bao,WIPO Case No. D2017-0465. In any event, bad faith having been found for other reasons, the Panel finds it unnecessary to address these allegations.
The Complainant has proven the third element, namely, that the Domain Name was registered and is being used in bad faith. 7. Decision
For the foregoing reasons, in accordance with the Policy, paragraph 4(i), and the Rules, paragraph 15, the Panel orders that the Domain Name be transferred to the Complainant.
A. Justin Ourso III
Sole Panelist
Date: June 25, 2018
1 The Complainant also owns United States Trademark Registration No. 1,580,850, registered on the supplemental register on January 30, 1990. A registration on the supplemental register alone, without proof that a mark has acquired distinctiveness, is not sufficient to prove trademark rights. WIPO Overview 3.0, section 1.2.2. Because the Complainant has demonstrated trademark rights based on Registration No. 728,039, the Panel finds it unnecessary to consider the supplemental registration and to evaluate acquired distinctiveness in connection with the first element.
2 Additionally, the declaration of an officer of the Complainant, provided as Annex C, does not state that the pages that constitute Annex A are from the home page and a subsequent landing page of the Respondent’s web site.
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