The Complainant is Michael Hill Franchise Pty Limited of Murarrie, Queensland, Australia, represented by Lowe Graham Jones, PLLC, United States of America (“United States”).
The Respondent is Anonymize, INC. of Bellevue, Washington, United States / A Firman Zakki Rosyadi of Surbaya, Indonesia. 2. The Domain Name and Registrar
The disputed domain name is registered with Epik, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 16, 2018. On July 17, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 18, 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, which is a privacy service, and contact information in the Complaint in that it disclosed that the underlying Registrant was an individual named A Firman Zakki Rosyadi of Jawa Timur, Indonesia. The Center sent an email communication to the Complainant on July 23, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant did not file an amendment to the Complaint.
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 August 2, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 22, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 24, 2018.
The Center appointed Antony Gold as the sole panelist in this matter on September 4, 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 was founded in 1979 and is a manufacturer, importer and seller of jewelry. Its head office is in Queensland, Australia and it now has over 300 stores in New Zealand, Australia, Canada and the United States as well as an extensive e-commerce trading operation.
The Complainant’s principal trading style is MICHAEL HILL. Together with a related entity, Michael Hill Jeweller (Australia) Pty Ltd, it has registered a large number of trade marks in several jurisdictions, for MICHAEL HILL as well as a number of variants. These include, by way of example only:
- Australian trade mark registration no. 869687, for MICHAEL HILL, dated March 19, 2001, in classes 14, 20, 35 and 37;
- United States trade mark registration no. 3141257, for MICHAEL HILL, dated September 12, 2006, in classes 14, 20, 35 and 37.
The disputed domain name was first registered on November 12, 2002. For several years following the date of registration, the disputed domain name resolved to a website which promoted the professional activities of a musician called Michael Hill, who appears to have been based in Texas, United States. Between 2013 and 2018 the disputed domain name did not resolve to an active website.
On February 23, 2018, the WhoIs record was updated and Anonymize, Inc., which provides privacy protection services, has thereafter been shown as the registrant. After the record was updated, the disputed domain name has resolved to a website which promotes jewelry. The home page of the website contains, in large bold font, the words “Michael Hill” with the words “New Jewelry” in slightly smaller font beneath. The home page also contains photographs of rings, as well as what appear to be links to “Jewelry Manufacturing” and “Jewelry resources” and an article dated June 25, 2018 entitled “Suggestions For Buying The Excellent Special Occasion Jewelry”. At the end of this article are links to a competitor of the Complainant from which, it is said, the Internet user can buy “the best quality stainless steel ear studs” and the “finest body jewelry canada” at “great prices”. The remainder of the website comprises other articles on jewelry-related topics. 5. Parties’ Contentions A. Complainant
The Complainant says that the disputed domain name is identical or confusingly similar to a trade mark in which it has rights. The disputed domain name incorporates the entirety of its MICHAEL HILL trade mark and previous UDRP panels have found that a domain name which incorporates the whole of a complainant’s trade mark is prime facie confusingly similar to it. Moreover, given the reputation of the Complainant’s family of trade marks, most Internet users who see the disputed domain name are likely to assume, wrongly, that any website to which it resolves is owned, controlled or approved by the Complainant.
The Complainant also asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has never been known by consumers to operate under the MICHAEL HILL brand and therefore has no legitimate right to use the Complainant’s trade mark. In fact, the Respondent is using the Complainant’s mark to promote directly competing goods in the jewelry industry via third party advertisers, thereby improperly passing off those advertisers as associated with the Complainant. The position is similar to that in, for example, Valtra Oy Ab v. Narcis Somesfalean,WIPO Case No. DRO2013-0001, in which the panel found that registering a domain name identical to the complainant’s trade mark, in the absence of any authorization from the complainant, did not create any rights or legitimate interests for the respondent.
Lastly, the Complainant says that the disputed domain name was registered and is being used in bad faith. The Respondent, who only became the registrant of the disputed domain name in February 2018, evidently registered the disputed domain name for the purpose of resolving it to a website containing links to goods and services which compete directly with those of the Complainant, thereby disrupting the Complainant’s business. Use of the disputed domain name for these purposes is in bad faith.
As at that time the Respondent became the registrant of the disputed domain name, it knew or should have known of the MICHAEL HILL brand, as it had been in use in the United States for almost a decade. It was only following the Respondent’s acquisition of the disputed domain name in February 2018, that it began to resolve to a website which unfairly traded on the Complainant’s long-established trade mark rights by containing links to goods and services which were directly competing with those of the Complainant. The Registrant has accordingly intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website or products on it.
The registration of a domain name obviously connected with a well-known product by someone with no connection to it suggests opportunistic bad faith; see PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS),WIPO Case No. D2003-0696. Further evidence of bad faith can be found from the fact that the underlying registrant has sought to hide its true identity behind the privacy service which is shown on the WhoIs record as the registrant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Dealing, first, with the Respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.
Paragraph 4(a) of the Policy provides that the Complainant proves each of the following three elements in order to succeed in its Complaint:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has produced evidence of many trade marks for MICHAEL HILL which have been registered by it, or by its associated entity and in which it has rights. For the purposes of considering whether the disputed domain name is identical or confusingly similar to the Complainant’s trade mark, it is established practice to exclude the generic Top-Level Domain (“gTLD”), that is “.net”, from the comparison. The hyphen between “Michael” and “Hill” in the disputed domain name is of no significance. On this basis, the Panel finds that the disputed domain name is identical, or at least confusingly similar, to a trade mark in which the Complainant has rights. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out, without limitation, circumstances by which a respondent might show that it has rights or legitimate interests in a domain name, namely;
(i) before any notice to it of the dispute, it had used or made 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) it had been commonly known by the domain name, even if it had acquired no trade mark or service mark rights; or
(iii) it was 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.
Paragraph 4(c)(ii) is inapplicable: there is no evidence that the Respondent is commonly known by the disputed domain name. So far as paragraphs 4(c)(i) and 4(c)(iii) are concerned, the website to which the disputed domain name resolves contains two links to competitor websites, described above. These links are sufficient to render the Respondent’s website commercial in character. But the Panel also considers whether the Respondent’s website overall is bona fide.
In making this assessment, the Panel has regard to the following. First, the likelihood of the Respondent having used the name “Michael Hill” in connection with a website containing articles on jewelry purely by chance, rather than because it was aware of the Complainant and its brand, is so low as to be discounted. It is therefore reasonable to assume, in the absence of any explanation from the Respondent, that this branding has been chosen in order to encourage Internet users into believing that there is a connection between the Respondent’s website and the Complainant’s MICHAEL HILL trade mark. Second, the website has none of the indicia that tend to be associated with bona fide websites, such as an “About” section or contact details and some indication as to its underlying purpose. Third, the use of a privacy service, whilst not determinative, would not generally be considered necessary or usual for a party simply wishing to publish a number of articles on the selection and care of jewelry. Finally, the fact that the Respondent has chosen not to reply to the Complaint, whilst also not determinative, is inconsistent with the behaviour of a registrant which is both willing and able to demonstrate that its use of a domain name is bona fide.
Taking all these factors into account, the use of the disputed domain name does not comprise use in connection with a bona fide offering of goods and services nor a legitimate noncommercial or fair use of it.
The Panel accordingly finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
Section 3.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) explains that: “….the transfer of a domain name registration from a third party to the respondent is not a renewal and the date on which the current registrant acquired the domain name is the date a panel will consider in assessing bad faith”. As explained above, the disputed domain name was used by a professional musician until approximately 2013, and then after some years of inactivity, the WhoIs record was updated in February 2018. The Registrar has confirmed in an email to the Center that the disputed domain name was transferred to it on February 22, 2018. Shortly thereafter, the disputed domain name resolved, once again, to a website. This prima facie points to the updating of the record as comprising a change of ownership. The Respondent has not sought to challenge the Complainant’s assertion that a change of ownership occurred in February 2018. The Panel therefore accepts the Complainant’s case in this respect.
Irrespective of the precise means by which the Respondent became aware of the Complainant’s business, its registration and use of the disputed domain name points to an awareness by the Respondent of the Complainant and its jewelry business and an intention on the part of the Respondent to take advantage in some way of the Complainant’s repute in its MICHAEL HILL trade marks.
Paragraph 4(b) of the Policy sets out, without limitation, circumstances which, if found by a panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The circumstance at paragraph 4(b)(iv), in summary, is that, by using the domain name, 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 mark as to the source, sponsorship, affiliation, or endorsement of its website. The Respondent’s conduct falls broadly within paragraph 4(b)(iv), in that its website is evidently intended to lead Internet users to believe that it is connected in some way with the Complainant and the inclusion of links to competitors of the Complainant is presumed to result in some financial advantage to the Respondent.
Furthermore, section 3.6 of the WIPO Overview 3.0 explains that “Panels have also viewed a respondent’s use of a privacy or proxy service which is known to block or intentionally delay disclosure of the identity of the actual underlying registrant as an indication of bad faith”. In the light of the other circumstances discussed above, the Panel considers the use of a privacy service as a further indication of bad faith.
The Panel accordingly finds that the disputed domain name was registered and has been 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 disputed domain name, be transferred to the Complainant.
Antony Gold
Sole Panelist
Date: September 18, 2018
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