The Complainant is John Patrick Davies d/b/a Jigletoes of Oxford, United Kingdom, represented by Maier Blackburn, United Kingdom.
The Respondent is Sajima Tan of Fukushima, Japan. 2. The Domain Name and Registrar
The disputed domain name is registered with TurnCommerce, Inc. DBA NameB (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 28, 2019. On January 28, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 31, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 February 1, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 21, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 25, 2019.
The Center appointed Alistair Payne as the sole panelist in this matter on March 4, 2019. 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, based in the United Kingdom, is a designer of children’s décor items and has traded under the name or mark JIGLETOES since 2004. The Complainant owns a United Kingdom trade mark registration no. 3265154 for its JIGLETOES mark that was filed on October 20, 2017 and registered on January 12, 2018.
The disputed domain name was registered by the Respondent on October 23, 2017, three days after the Complainant filed its United Kingdom trade mark application. The disputed domain name resolves to a holding page that features the words “ is coming soon”. 5. Parties’ Contentions A. Complainant
The Complainant submits that he owns registered trade mark rights as noted above for his JIGLETOES mark. He says that this mark is a coined term invented by him and having no meaning other than to refer to his business. As a consequence of use since 2004, the Complainant also asserts that he owns unregistered common law rights to this mark for which he has provided examples of trade invoices and correspondence and notes also that he was the owner of prior United Kingdom mark 2411546 for JIGLETOES between July 7, 2006 and its expiry on January 20, 2016. He submits that the disputed domain name is identical to his JIGLETOES mark but for the “.com” element which can be disregarded. As a result, he says that the disputed domain name is identical or confusingly similar to a trade mark in which he has rights.
The Complainant submits that the Respondent has no affiliation with the Complainant and has at no time licensed or permitted the Respondent to use the JIGLETOES mark for any purpose. He submits that the Respondent has not been commonly known by the name or mark JIGLETOES and says that the Respondent has not made preparations to use the disputed domain name in connection with any bona fide offering of goods or services and has not made a legitimate noncommercial or fair use of the name without intent to misleadingly divert consumers. The Complainant notes that the Respondent has made no use of the disputed domain name other than to resolve to a holding page stating “ is coming soon”. In all the circumstances, the Complainant says that the Respondent can only have registered the disputed domain name in response to the Complainant’s trade mark application and in order to target the Complainant’s anticipated trade mark rights in the name and mark JIGLETOES and that this cannot give rise to rights or legitimate interests on the part of the Respondent.
As far as bad faith is concerned, the Complainant submits that it is easily inferred based on the timing of the registration of the disputed domain name shortly after the Complainant’s filing of his JIGLETOES mark that the Respondent registered the disputed domain name with knowledge of the Complainant’s application and with the intention of taking advantage of the Complainant’s anticipated trade mark rights. In the alternative, the Complainant asserts that the Respondent registered the disputed domain name with the intention of selling it to the Complainant at some time in the future for valuable consideration in excess of the Respondent’s documented costs under paragraph 4(b)(i) of the Policy, or with the intention of misleading Internet users to its own website for commercial gain under paragraph 4(b)(iv) of the Policy.
The Complainant notes that the Respondent has made no active use of the disputed domain name for 15 months since registration and says that this supports the inference that the Respondent registered the disputed domain name for the purpose of preventing the Complainant himself from registering the disputed domain name once the renewed United Kingdom trade mark registration for JIGLETOES had been granted.
The Complainant also submits that the Respondent has provided false contact details in connection with its registration of the disputed domain name, noting in particular that there is no street named “982” in the city or province of Fukushima, that the postal code “232344” does not exist as postal codes are in a seven digit format, and that the Respondent’s purported telephone number does not connect to any active line. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns a United Kingdom trade mark registration for its JIGLETOES mark that was filed on October 20, 2017 and registered on January 12, 2018. The disputed domain name wholly contains this mark and excepting the “.com” element is identical to it. Accordingly, the Panel finds that the Complaint succeeds under the first element of the Policy. B. Rights or Legitimate Interests
The Complainant has submitted that the Respondent has no affiliation with the Complainant and has at no time licensed or permitted the Respondent to use its JIGLETOES mark for any purpose. The Complainant has submitted that the Respondent has not been commonly known by the mark JIGLETOES and that the Respondent has not made preparations to use the disputed domain name in connection with any bona fide offering of goods or services and also has not made a legitimate noncommercial or fair use of the name without intent to misleadingly divert consumers. The Complainant has also submitted that the Respondent has made no use of the disputed domain name other than to resolve to a holding page that states, “ is coming soon”. The nub of the Complainant’s case is that the Respondent registered the disputed domain name three days after the Complainant made its trade mark application and in all the circumstances has done so in order to target the Complainant’s anticipated trade mark rights in the name and mark JIGLETOES.
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 failed to rebut this case and in addition, for the reasons set out under section C below, the Panel finds that the Complainant has made out its case that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complaint also succeeds under this element of the Policy. C. Registered and Used in Bad Faith
The Complainant has submitted that its JIGLETOES mark is a term that it coined itself and that it has no meaning in English. Certainly, the term is not a common English word and differs by the omission of one letter “g” even from the combination of the two English words “jiggle” and “toes”.
In these circumstances, the fact that the disputed domain name was registered by the Respondent, based in Japan, on 23 October 2017, three days after the Complainant filed its United Kingdom trade mark application leads to the inference, as asserted by the Complainant, that the registration of the disputed domain name was not made by mere coincidence. The Respondent has not sought to rebut this inference and accordingly the Panel finds it more likely than not that the Respondent registered the disputed domain name with knowledge of the Complainant’s United Kingdom trade mark application.
The Respondent has not subsequently used the disputed domain name except to make it resolve to a blank holding page featuring the phrase ““ is coming soon”. The Complainant submits that in the circumstances this amounts to a passive holding in bad faith. As noted at section 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), panel’s in applying this doctrine have generally considered the following factors: (i) the degree of distinctiveness or reputation of the complainant’s mark; (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use; (iii) the respondent’s concealment of its identity or use of false contact details; and (iv) the implausibility of any good faith use to which the disputed domain name may be put.
In this case the Complainant’s mark, as a coined term for use in relation to children’s décor items is highly distinctive, even if there is insufficient evidence of reputation and use before the Panel for it to make any judgement as to the likely extent of such goodwill. The Respondent in this case has failed to submit a response or to provide any evidence of actual or contemplated good-faith use. In addition, the Respondent appears to have provided false address and contact details upon registration of the disputed domain name. Finally, the fact that the Respondent, ostensibly based in Japan, registered the very distinctive disputed domain name only three days after the Complainant made its United Kingdom trade mark application suggests, as noted above, that registration was undertaken with knowledge of the Complainant’s trade mark application and if so, then is more likely than not to have been made with a view to somehow profiting from the disputed domain name in bad faith. In all of these circumstances the Panel is prepared to accept the Complainant’s submission that this amounts to a passive holding in bad faith.
Accordingly, the Panel finds that the disputed domain name has been registered and used 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: March 18, 2019
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