The Complainant is D, LLC of Brentwood, Tennesse, United States of America (“United States”), represented by Furr Law Firm, United States.
The Respondent is Sapphire Brands, Sapphire Brands Limited of Burnley, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”). 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Network Solutions, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 21, 2018. On August 21, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 22, 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 August 28, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 10, 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 September 12, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 2, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 3, 2018.
The Center appointed John Swinson as the sole panelist in this matter on October 19, 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 D LLC, a company incorporated in the United States. According to the Complaint, the Complainant is one of the world leaders in stock photography and a supplier of high quality digital images. The Complainant operates its business at .
The Complainant owns a number of registered trade marks for DREAMSTIME, the earliest of which is United States Registration No. 3176620, filed on November 7, 2005 and registered on November 28, 2006 (the “Trade Mark”).
The Respondent is Sapphire Brands Limited. The Respondent did not file a Response, and consequently little information is known about the Respondent. The Respondent registered the Disputed Domain Name on November 4, 1999. At the time of the Complaint, the Disputed Domain Name resolved to a website with pay-per-click (“PPC”) links. 5. Parties’ Contentions A. Complainant
The Complainant makes the following submissions:
Identical or confusingly similar
The Disputed Domain Name incorporates the Trade Mark in its entirety, with the only difference being altering the position of the letter “s” from after “dream” to the end of the word “time”. It is therefore confusingly similar to the Trade Mark.
Rights or legitimate interests
The Respondent does not have any legitimate rights in the Disputed Domain Name because the Respondent:
- is not known by the Disputed Domain Name;
- has not been authorized by the Complainant to use the Disputed Domain Name;
- has no connection or affiliation with the Disputed Domain Name; and
- has never made any bona fide use of the Disputed Domain Name.
Registered and used in bad faith
The Trade Mark is so famous that it is impossible the Respondent was unaware of the Complainant’s rights. The Respondent is looking to drive traffic from the Complainant’s customers who misspell the Disputed Domain Name. The Respondent is passively holding the Disputed Domain Name, and aside from using it for PPC links at various points in time, has not hosted an active website at the Disputed Domain Name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(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.
The onus of proving these elements remains on the Complainant even though the Respondent has not filed a Response. A. Procedural Issues
The Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyP,WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondent’s default. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
Generally, the test for identity or confusing similarity involves a side-by-side comparison of the domain name and the trade mark to assess whether the trade mark is recognizable within the domain name (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
In this case the Respondent has moved the “s” from the end of “dream” to the end of the word “time”. The Respondent has not added any other terms to the Disputed Domain Name. A domain name which consists of a common, obvious, or intentional misspelling of a trade mark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element.
The Panel considers that the Disputed Domain Name is confusingly similar to the Trade Mark. The Complainant succeeds on the first element of the Policy. C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel considers that the Complainant has made out a prima face case. This finding is based on the following:
- The Respondent has not used, or made demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services. The Complainant has provided evidence that the Disputed Domain Name has resolved to parking pages with PPC links from time to time, and otherwise does not resolve to any active website.
- There is no evidence that the Respondent has been commonly known by the Disputed Domain Name, or has registered or common law trade mark rights in relation to this name.
- The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Name, as the Complainant has provided evidence that the Respondent has, at some points, used the Disputed Domain Name for PPC advertising, which presumably generates revenue.
In this case, the Respondent registered a Disputed Domain Name with a dictionary meaning. The term “Dreamtime” refers at least to an Australian Aboriginal religious belief and is also comprised of two other dictionary words. Panels have recognized that merely registering a domain name comprised of a dictionary word or phrase does not by itself automatically confer rights or legitimate interests on the respondent (see section 2.10.1 of the WIPO Overview 3.0).
In order to find rights or legitimate interests in a domain name based on a dictionary meaning, the domain name should be genuinely used, or at least demonstrably intended for such use, in connection with the relied-upon dictionary meaning and not to trade off third-party trademark rights. In this case there is no evidence that the Respondent is using the Disputed Domain Name in connection with any genuine use of the dictionary meaning of the word “dreamtimes”.
The Respondent has not provided evidence of his rights or legitimate interests in the Disputed Domain Name. As such, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
To succeed in a complaint under the Policy, it is well established that under the third element of the Policy, the first thing that a complainant must prove on the preponderance of the evidence is that the domain name in issue was registered in bad faith, i.e., was registered with the complainant and/or its trade mark in mind.
Where a respondent registers a domain name before the complainant’s trade mark rights accrue, a panel will not normally find bad faith on the part of the respondent (see WIPO Overview 3.0, section 3.8.1). No amount of subsequent bad faith use can convert a good faith registration into a bad faith registration (Green Tyre Company Plc. v. Shannon Group,WIPO Case No. D2005-0877).
In this instance the Disputed Domain Name was registered in November 1999. The Complainant registered the domain name from which it operates its business, , on June 11, 2000, 6 months after the Respondent registered the Disputed Domain Name, and the Complainant’s Trade Mark was filed on November 7, 2005, 6 years after the Respondent registered the Disputed Domain Name.
The Complainant has not provided any evidence that it was operating or conducting a business using the Trade Mark prior to June 2000. The Panel has no evidence on which to infer that, in November 1999, when the Disputed Domain Name was registered, the “strength and fame” of the Trade Mark was such that it is inconceivable that the Respondent could not have registered the Disputed Domain Name other than with the Trade Mark in mind. Conversely, on the evidence available to the Panel, neither the Complainant nor the Trade Mark existed at that time.
As stated by the panel in Coolside Limited v. Get On The Web Limited,WIPO Case No. D2016-0335:
“In those circumstances, it hardly needs stating that the Respondent cannot conceivably have been aware of the existence, or even potential existence, of the Complainant or of any rights it might subsequently acquire in the [trade mark] at the time of registration. In this Panel’s view, therefore, the Domain Name cannot conceivably have been registered in bad faith”.
The same reasoning applies here. The Complainant has not provided any evidence, nor has it even attempted to make any argument, as to why the Respondent knew or should have known of the Complainant or its future business operations at the time it registered the Disputed Domain Name. See Mister Auto SAS v Wharton Lyon & Lyon, WIPO Case No. D2018-1330.
In light of the above, the Panel finds that the Complainant has not established the third element of the Policy. 7. Decision
For the foregoing reasons, the Complaint is denied.
John Swinson
Sole Panelist
Date: November 5, 2018
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