The Complainant is Ashworth and Parker Limited of Newcastle upon Tyne, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Urquhart-Dykes & Lord, LLP. United Kingdom.
The Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States of America (“United States”) / Omar Maya of Houston, Texas, United States. 2. The Domain Name and Registrar
The disputed 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 May 30, 2018. On May 30, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 31, 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 June 1, 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 June 5, 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 June 6, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 26, 2018. An email was received from the Respondent on June 1, 2018, however no formal Response was filed with the Center.
The Center appointed Alistair Payne as the sole panelist in this matter on July 13, 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 global retailer of contemporary menswear. It was formed in 2005 and has operated from a website at the domain name since 2006 and also operates 2 retail stores in the United Kingdom. The Complainant’s business trades under the name or mark “End Clothing” and it owns European Union (“EU”) trade mark registration 12130051 for the mark END filed on September 11, 2013 and registered on April 12, 2015 and United States trade mark registration number 4906953 filed on March 10, 2014 and registered on March 1, 2016.
The disputed domain name was registered on April 6, 2018 and resolves to a website selling clothing under the trade mark END. 5. Parties’ Contentions A. Complainant
The Complainant submits that the disputed domain name consists of the trade mark END in its entirety in addition to the suffix “clothing” and the abbreviation “co” for company. The Complainant says that the addition of the word “clothing” is entirely descriptive of the goods sold on both the Complainant’s website and the website at the disputed domain name and that these suffixes are not sufficient to exclude a finding that the disputed domain name is confusingly similar to the Complainant’s END mark.
The Complainant submits that the Respondent has no business or other relationship with it and that the Complainant has not consented to the registration of the disputed domain name. It says further that the disputed domain name was registered four years after the priority date of the Complainant’s United States trade mark registration and over 12 years after the Complainant commenced selling clothing under its domain names containing the expression “end clothing”.
As far as bad faith is concerned, the Complainant notes that the Respondent must have been aware of its business and use of the trade mark END as the Respondent includes a note at the end of the FAQ section of its website as follows:
“Endclothingco and END Clothing are NOT the same company. We are not affiliated or the same entity. We are two different companies as END Clothing is a clothing retailer and we are a clothing brand. Most of the products in our store are all custom we are not partnered or sell anything affiliated with any clothing/designer company.”
Accordingly, the Complainant says that the Respondent was well aware of its business yet is retailing clothing under an identical mark in these circumstances and considering that the acknowledgement is buried at the end of the FAQ section and is not presented immediately to a consumer who searches the website, then such an acknowledgement is insufficient to indicate the Respondent’s good faith.
The Complainant also submits that considering it’s reputation in the END trade mark and in its website “www.” it is even more difficult to see that the Respondent registered the disputed domain name in good faith and notes that although the Respondent’s website states “Est. 1995” there is no further evidence to support this date. As a consequence, submits the Complainant, the Respondent is intentionally attempting to attract for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source of retail services on the Respondent’s website. B. Respondent
The Respondent sent an email on June 1, 2018 to the Center stating that the disputed domain name had been cancelled through GoDaddy together with the email associated with it. The Respondent did not file any other response by the due date. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns EU trade mark registration 12130051 for the mark END filed on September 11, 2013 and United States trade mark registration number 4906953 for END filed on March 10, 2014. The disputed domain name wholly contains the END mark together with the common English word “clothing” and the abbreviation “co”. Under section 1.7 of the WIPO Overview of WIPO Panel Views On Selected UDRP Questions Third Edition, the inclusion of the Complainant’s whole mark in the disputed domain name is normally enough for UDRP panels to consider the disputed domain name to be confusingly similar to the Complainant’s mark. The Panel finds that the addition of the word “clothing” is entirely descriptive of the goods sold on both the Complainant’s website and the website at the disputed domain name and that the letters “co” that is short for company is descriptive and does not distinguish the disputed domain name.
Accordingly, the Panel finds that the Complaint succeeds under this element of the Policy. B. Rights or Legitimate Interests
The Complainant has submitted that the Respondent has no business or other relationship with it and that the Complainant has not consented to the registration of the disputed domain name. It says further that the disputed domain name was registered four years after the priority date of the Complainant’s United States trade mark registration and over 12 years after the Complainant commenced selling clothing under its domain names containing the expression “end clothing”. As noted under Part C below, the Complainant asserts that the Respondent did not register and has not used the disputed domain name in good faith. The Respondent has not replied to these assertions except to confirm in its email of June 1, 2018 to the Center that the disputed domain name had been cancelled through the Registrar.
In these circumstances the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the case made out by the Complainant. Additionally, the Panel finds the Respondent’s communication notifying its attempt to cancel the domain name to be an admission from the Respondent that it has no rights in the disputed domain name. Therefore the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
As far as bad faith is concerned, the Complainant has submitted that the Respondent must have been aware of its business and use of the trade mark END as the Respondent includes a note at the end of the FAQ section of its website as follows:
“Endclothingco and END Clothing are NOT the same company. We are not affiliated or the same entity. We are two different companies as END Clothing is a clothing retailer and we ae a clothing brand. Most of the products in our store are all custom we are not partnered or sell anything affiliated with any clothing/designer company.”
Accordingly, the Complainant says that the Respondent was well aware of its business yet is retailing clothing under an identical mark in these circumstances and considering that the acknowledgement is buried at the end of the FAQ section and is not presented immediately to a consumer who searches the website, then such an acknowledgement is insufficient to indicate the Respondent’s good faith.
The Complainant’s use of its END trade mark substantially pre-dates the disputed domain name and the Respondent’s use. The disputed domain name was only registered in April 2018 and there is no evidence to support the assertion made on the Respondent’s website that it was “Est 1995”. It seems to the Panel that based on the Respondent’s acknowledgement, it is more likely than not that the Respondent was aware of the Complainant’s use of the END mark when it registered the disputed domain name. In these circumstances the Panel agrees with the Complainant that the Respondent’s inclusion of its acknowledgement in a somewhat hidden location at the end of its “FAQ” section is not sufficient to function as an indicator of good faith.
With knowledge of the Complainant’s use of the END name and mark the Respondent has used the disputed domain name to resolve to a website selling its own END clothing. Such use amounts to intentionally attempting to attract for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source of retail services on the Respondent’s website under paragraph 4(b)(iv) of the Policy and amounts to evidence of registration and use of the disputed domain name in bad faith.
As a result, the Panel finds that the Respondent has both registered and used the disputed domain name in bad faith and that the Complaint also succeeds under this element 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 disputed domain name be transferred to the Complainant.
Alistair Payne
Sole Panelist
Date: July 27, 2018
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