The Complainant is COFRA Holding (C&A) of Zug, Switzerland, represented by Ports Group AB, Sweden.
The Respondent is Contact Privacy Inc., Customer 0149788187 of Toronto, Canada / Wenyan Hu, zigzagzong of Jingan, Shanghai, China. 2. The Domain Name and Registrar
The disputed domain name (“disputed domain name”) is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 18, 2018. On October 18, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 October 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 filed an amended Complaint on November 1, 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 November 2, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 22, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Parties about the commencement of the panel appointment process.
The Center appointed William R. Towns as the sole panelist in this matter on November 29, 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 holding company for a privately owned group companies with locations in Europe, North America, Latin America, and Asia. C&A, a fashion retailer, is part of the company group with stores in Europe, Brazil, Mexico and China, in addition to online retail shops, and operates some 2000 stores across three continents, with more than 55,000 employees.
The Complainant is the holder of trademark registrations for its C&A mark in numerous countries and jurisdictions, including:
Germany: German Reg. No. 613122, applied on December 1, 1942 and registered on October 24, 1951; German Reg. No. 1051924, applied for 05-04-1983 and registered 08-02-1993.
European Union: EUTM Reg. No. 000790329, applied on April 3, 1998 and registered on June 29, 1999.
International Trademark Reg. No. 718588, applied for and registered June 17, 1999.
United States: U.S. Reg. No. 4270566, applied on May 10, 2011 and registered on June 17, 1999.
The Complainant also is the holder of a German trademark registration for its CA mark, Reg. No. 39502404, applied on January 20, 1995 and registered on January 8, 2013.
The Complainant’s online C&A shop in Europe is C&A Mode GmbH & Co. KG. The Complainant registered the domain name on January 23, 1996, and uses the domain name with the Complainant C&A website. “Mode” is a German word for fashion.
The Respondent registered the disputed domain name on November 16, 2017. The disputed domain name resolves to a website displaying the legend “Ca Mode”. The Respondent’s website offers for sale women’s clothing and apparel. The “About Us” page of the Respondent’s website identifies the owner of the company as Zhu Qiuyue, with a company address in Jinshan, Shanghai, China.
Upon becoming aware of the Respondent’s registration and use of the disputed domain name, the Complainant’s dispatched to the Respondent a cease and desist letter dated August 23, 2018, to which the Respondent did not offer a reply. Thereafter the Complainant commenced this proceeding under the Policy. 5. Parties’ Contentions A. Complainant
The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s registered C&A and CA marks. The Complainant asserts that the addition of the word “mode”, which is a German word for “fashion”, does not distinguish the disputed domain name from the Complainant’s marks. The Complaint argues that the inclusion of the German word “mode” in the disputed domain name exacerbates the confusing similarity with the Complainant’s marks. The Complainant reports registering over 250 domain names with different spellings related to the Complainant’s marks.
The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant avers that it has not authorized or licensed the Respondent to register domain names incorporating the Complainant’s marks. According to the Complainant, the Respondent is not commonly known by the disputed domain name, and is seeking to take advantage of the Complainant’s reputation and well-known trademarks to attract consumers to the Respondent’s website. The Complainant contends that Internet users likely will think there is a commercial connection between the disputed domain name and the Complainant because the Respondent’s website offers the same products as does the Complainant in its stores and online shops. The Complainant asserts that this will damage the reputation of the Complainant and potentially jeopardize consumer safety regarding delivery and customer service.
Given the foregoing, the Complainant submits that the Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. The Complainant maintains the Respondent’s intent is to deceive consumers looking for the Complainant’s website into purchasing similar products offered on the Respondent’s website. The Complainant explains that it first became aware of the Respondent when a customer, after placing an order with the Respondent’s website that had not been delivered, contacted the Complainant under the mistaken belief that the order had been placed with the Complainant.
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The Complainant emphasizes that its trademarks were registered well before the Respondent registered the disputed domain name, and opines that the Respondent was well aware of the Complainant’s marks when registering the disputed domain name. The Complainant asserts that the Respondent is targeting the Complainant, and further explains that the Respondent has registered the disputed domain name in a further effort to exploit the Complainant’s rights in its C&A and CA marks. The Complainant further contends that the Respondent’s use of privacy protection service and failure to respond to the Complainant’s cease and desist letter are evidence of the Respondent’s bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name are deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s C&A and CA marks, in which the Complainant has demonstrated rights through registration and use. In considering this issue, the first element of the Policy serves essentially as a standing requirement.1 The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the Complainant’s trademark and the disputed domain name.
In this case, the Complainant’s CA and C&A marks are recognizable in the disputed domain name. The inclusion in the disputed domain name of “mode” – a descriptive German word for fashion – does not dispel the confusing similarity of the disputed domain name to the Complainant’s CA and C&A marks.2 The Panel further notes that the presence of an ampersand in the Complainant’s C&A mark does not dispel the confusing similarity of the mark with the disputed domain name. The ampersand is not a dominant element of the C&A mark and in any event is incapable of being used in a domain name. Given that the Respondent’s website sells clothing and fashion apparel similar to those of the Complainant, the Respondent’s registration and use of the disputed domain name in the attendant circumstances reflects targeting of the Complainant.3
Top Level Domains (“TLDs”) generally are disregarded when evaluating the identity or confusing similarity of the complainant’s mark to the disputed domain name under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the TLD.4
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant’s marks. The Respondent notwithstanding has registered and used the disputed domain name, which is confusingly similar to the Complainant’s marks, to divert Internet traffic to a website selling clothing and apparel similar to those of the Complainant. Internet visitors easily could expect the website at which they have arrived to be affiliated with or have the endorsement or sponsorship of the Complainant.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the disputed 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 he 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 Respondent has not submitted a formal response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
It is evident from the record that the Respondent was aware of the Complainant and had the Complainant’s marks in mind when registering the disputed domain name. The Panel finds that the Respondent registered the disputed domain name in order to exploit and profit from the Complainant’s rights in the CA and C&A marks through the creation of Internet user confusion. Internet users upon arriving at the Respondent’s website easily could be confused whether the site is affiliated with or has the endorsement or sponsorship of the Complainant, or whether the goods being offered on this website are genuine CA or C&A-branded goods. See Levantur, S.A. v. Media Insight,WIPO Case No. D2008-0774.
Paragraph 4(c)(iii) of the Policy provides that a respondent may demonstrate rights or legitimate interests in a domain name by providing evidence of “legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the [complainant’s] trademark or service mark”. However, even were the Panel to assume arguendo that the Respondent’s website is offering the Complainant’s genuine products as opposed to similar products, the Respondent’s use of a domain name is not “fair” in circumstances where the domain name falsely suggests affiliation with the trademark owner. Eli Lilly and Company and Novartis Tiergesundheit AG v. Manny Ghumman / Mr. NYOB / Jesse Padilla,WIPO Case No. D2016-1698. See WIPO Overview 3.0, section 2.5 and cases cited therein.
The Respondent’s use of the disputed domain name in the Panel’s view reflects an intent to trade on the reputation of the Complainant’s marks. Thus, even were the goods offered on the Respondent’s website authentic C&A or CA products – which the Panel deems highly unlikely – the disputed domain name and the Respondent’s website could falsely suggest to Internet users that the website they have arrived at is affiliated with, sponsored, or endorsed by the Complainant. Such use is not fair, is not legitimate, and does not give rise to rights or legitimate interests.
Having regard to the relevant circumstances in this case, the Panel concludes that the Respondent has not used or demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy, and is not making a legitimate noncommercial or fair use of the disputed domain name for purposes of paragraph 4(c)(iii) of the Policy. The Respondent has not been authorized to use the Complainant’s marks, and there is no indication that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a claim by the Respondent of rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. It is clear from the relevant circumstances that the Respondent was aware of the Complainant and had the Complainant’s marks in mind when registering the disputed domain name. The record convincingly demonstrates that the Respondent’s primary motive in relation to the registration and use of the disputed domain name has been to capitalize on or otherwise take advantage of the Complainant’s trademark rights, through the creation of Internet user confusion. In light of all of the foregoing, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith under paragraph 4(b)(iv) of the Policy, to intentionally attract Internet users to the Respondent’s website for commercial gain, by creating a likelihood of confusion with the Complainant’s marks as to source, sponsorship or affiliation. See E, Inc. v. Ult. Search Inc.,WIPO Case No. D2001-1319.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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.
William R. Towns
Sole Panelist
Date: December 9, 2018
1 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.
2 See WIPO Overview 3.0, section 1.8 and cases cited therein. When the relevant trademark is recognizable in the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy.
3 See WIPO Overview 3.0, section 1.15.
4 The meaning of a particular TLD, however, may in some cases be relevant to assessments under paragraphs 4(a)(ii) and 4(a)(iii) of the Policy. See WIPO Overview 3.0, section 1.11 and cases cited therein. See also WIPO Overview 3.0, section 1.8.
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