The Complainant is Sugarfina, Inc. of Atlanta, Georgia, United States of America (“United States”), represented by Troutman Sanders, LLP, United States.
The Respondent is William S of Mumbai, Maharashtra, India. 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 July 25, 2018. On July 26, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 27, 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 July 31, 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 July 31, 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 August 7, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 27, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 28, 2018.
The Center appointed Antony Gold as the sole panelist in this matter on September 10, 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 a corporation based in Delaware, United States. It has traded since 2012 as a luxury candy boutique. The company and its products have been widely advertised, primarily in the United States, including on social media and on the Internet. It presently has physical outlets for its products, either standalone or in-store shops, in the United States, Canada and the United Kingdom of Great Britain and Northern Ireland.
The Complainant has registered a number of trade marks for its trading style, SUGARFINA, both in the United States and in other countries. These registrations include, by way of example only, United States trademark registration no. 4,677,276, registered January 27, 2015 for SUGARFINA (word only) in International Class 30.
The disputed domain name was registered on June 6, 2018. As at July 19, 2018 it pointed to a parked page, the material part of which stated “Welcome to . Learn how you can get this domain”. 5. Parties’ Contentions A. Complainant
The Complainant refers to its trade mark registrations for SUGARFINA, details of one of these registrations having been set out above. The Complainant says the disputed domain name is identical or confusingly similar to its trade mark.
The Complainant says that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not a licensee of the Complainant nor is it authorized to use its trade marks for any purpose. The Respondent does not own any trade mark registrations for SUGARFINA, nor is there any evidence that it has ever used this trade mark prior to its registration of the disputed domain name nor is it commonly known as “Sugarfina”. The disputed domain name does not resolve to an active website. Moreover, the Respondent has not made preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
In the light of the Complainant having made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name.
Lastly, the Complainant says that the disputed domain name was registered and is being used in bad faith. The disputed domain name corresponds exactly to the Complainant’s distinctive trade mark. The Respondent is unlikely to have thought of the term “Sugarfina” on its own and it knew, (or alternatively, should have known) of the Complainant’s rights in its SUGARFINA mark as at the date of registration of the disputed domain name. The Respondent can have no intent for the disputed domain name other than for commercial use and to compete with the Complainant. There is no plausible circumstance under which the Respondent could legitimately register or use the disputed domain name and it was therefore registered and is being used by the Respondent in bad faith. 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’s trade mark registrations for SUGARFINA establish that it has rights in this name. When considering whether a domain name is identical or confusingly similar to a complainant’s trade mark, it is established practice to exclude the generic Top-Level Domain (“gTLD” – this being “.biz” in the case of the disputed domain name) from the comparison as it is a technical requirement of registration. Once the gTLD is excluded from consideration, the disputed domain name is identical to the Complainant’s trade mark. The Panel accordingly finds that the disputed domain name is identical 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, three circumstances by which a respondent might show that it has rights or legitimate interests in a domain name, namely;
(1) 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
(2) it had been commonly known by the domain name, even if it had acquired no trade mark or service mark rights; or
(3) 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.
Dealing with these circumstances in turn, offering a domain name for sale does not, in itself, amount to use in connection with a bona fide offering of goods or services. See, by way of example, Educational Testing Service v. TOEFL,WIPOCase No. D2000-0044. Second, there is no evidence to suggest that the Respondent has been commonly known by the disputed domain name. Finally, registration of a domain name in order to offer it for sale, as is evidently the case with the Respondent’s registration, does not comprise a legitimate, noncommercial or fair use of it.
As explained at section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “where a complainant makes out 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”.
The Complainant has made out a prima facie case in relation to this aspect of the Policy and the burden of production therefore shifts to the Respondent. In the absence of any response from the Respondent, it has failed to satisfy that burden.
The Panel accordingly finds that the Respondent does not have any rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out circumstances, without limitation, 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 set out at 4(b)(i) of the Policy is, in summary, if a respondent has registered or acquired a domain name primarily for the purpose of selling, or renting it to the complainant, or a competitor of it, for valuable consideration in excess of the respondent’s costs directly related to the domain name.
Given that the SUGARFINA mark has no known meaning and is only used in respect of the Complainant’s SUGAFINA trade mark, it is highly improbable that the Respondent registered the disputed domain name without an awareness of the Complainant and its trade mark. The website to which the disputed domain name resolves offers the disputed domain name for sale; the disputed domain name being identical to the SUGARFINA trade mark, realistically, the only potential interested purchasers are the Complainant or one of its competitors. The Respondent has not invited a fixed offer for the sale of the disputed domain name, but, it is reasonable to infer that the Respondent is seeking to benefit from the sale of a domain name consisting of the Complainant’s trade mark. As explained at section 3.1.1 of the WIPO Overview 3.0: “If on the other hand circumstances indicate that the respondent’s intent in registering the disputed domain name was in fact to profit in some fashion from or otherwise exploit the complainant’s trademark, panels will find bad faith on the part of the respondent”. See also ThyssenKrupp USA, Inc. v. Richard Giardini,WIPO Case No. D2001-1425, in which the panel concluded that “[i]n the absence of contrary evidence, awareness of the Complainant’s mark coupled with an offer made to the general public to sell the domain name is evidence of registration and use in bad faith”.
Having regard to the above, the appropriate inference to draw from the known facts is that the disputed domain name was registered by the Respondent for the purpose of selling it at a profit to the Complainant or one of its competitors. The Panel accordingly finds the disputed domain name was registered and is being used by the Respondent 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 24, 2018
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