The Complainant is Columbia Sportswear Company of Portland, Oregon, United States of America (“United States”), represented by Strategic IP Information Pte Ltd., Singapore.
The Respondent is PrivacyG of Phoenix, Arizona, United States / Dorota Borowska of Chicopee, Massachusetts, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with NameSilo, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 11, 2019. On February 11, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 11, 2019, 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 February 13, 2019, 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 February 18, 2019.
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 February 19, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 11, 2019. The Respondent did not submit any substantive response. Accordingly, the Center notified the Parties of the commencement of the Panel appointment Process on March 15, 2019.
A third party identifying himself as J. Wooden wrote email messages to the Center on March 8 and March 15, 2019, stating that he was trying to assist an employee of his who claimed to deny any involvement in this matter. Neither of these communications addressed the substance of the allegations of the Complaint or amended Complaint.
The Center appointed Evan D. Brown as the sole panelist in this matter on March 25, 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 is one of the world’s most renowned outerwear and sportswear companies and has used the trademark COLUMBIA in connection with its goods for many years. It owns a number of registrations for the COLUMBIA mark, including United States Reg. No. 2,047,397, issued on March 25, 1997, having a date of first use in commerce as early as 1954.
The Respondent registered the disputed domain name on November 22, 2018. The website to which the disputed domain name redirects purports to offer the Complainant’s products at heavily discounted prices, and has used the Complainant’s brand imagery and copyright-protected images without the Complainant’s authorization. The Complainant also believes that the website features counterfeit products. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s trademarks; that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith. B. Respondent
The Respondent did not provide any substantive reply to the Complainant’s contentions. A third party purporting to act on behalf of Dorota Borowska sent two email messages to the Center. (Neither of these communications addressed the substance of the matter, that is, neither speaks to any of the three elements of the UDRP). 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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 Panel finds that all three of these elements have been met in this case. A. Identical or Confusingly Similar
The incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark. See Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505. In this case, the disputed domain name contains the Complainant’s trademark COLUMBIA in its entirety, as a dominant element. The disputed domain name also contains the term “e” (presumably to designate an “electronic” or “online” presence) and the word “store”. These additional elements in this context do not avoid the confusing similarity.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen,WIPO Case No. D2014-0657. The Complainant has demonstrated its rights because it has shown that it is the owner of multiple valid and subsisting trademark registrations for the mark COLUMBIA.
Accordingly, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that showing, the burden of production shifts to the Respondent.
The Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. By failing to substantively respond to the Complaint, the Respondent did not discharge its burden to demonstrate rights or legitimate interests. And no other facts in the record tip the balance in the Respondent’s favor.
Paragraph 4(c) of the Policy instructs respondents on a number of ways they could demonstrate rights or legitimate interests (“you” and “your” in the following refers to the particular respondent):
(i) before any notice to you of the dispute, your use of, or 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.
In this case, the purported offering for sale of unauthorized products cuts against a finding that the Respondent is engaged in a bona fide offering of goods or services. The Panel notes that the goods offered for sale at the disputed domain name are discounted up to 90%, which supports the Complainant’s claim. Absent any such evidence to the contrary, the Panel credits the Complainant’s assertions that the products on the Respondent’s website are counterfeit.
Further, it does not appear that the Respondent is commonly known by the disputed domain name. Nor does it appear that use of the disputed domain name is noncommercial or otherwise a fair use – the website to which the disputed domain name resolves offers to sell counterfeit products.
The Complainant has established that the Respondent lacks any rights or legitimate interests in the disputed domain name and accordingly has established this second element under the Policy. C. Registered and Used in Bad Faith
The Policy requires a complainant to establish that the disputed domain name was registered and is being used in bad faith. The Policy describes several non-exhaustive circumstances demonstrating a respondent’s bad faith use and registration. Under paragraph 4(b)(iv) of the Policy, a panel may find bad faith when a respondent “[uses] the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent’s] website or other online location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or a product or service on [the respondent’s] website or location”.
The Respondent registered and is using the disputed domain name in bad faith. Establishing a website to sell counterfeit products, using a disputed domain name that incorporates the Complainant’s mark, is a clear example of bad faith registration and use under 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.
Evan D. Brown
Sole Panelist
Date: April 8, 2019
Full & Egal Universal Law Academy