The Complainant is Thinx, Inc. of New York, New York, United States of America (“United States”), represented by Sills Cummis & Gross P.C., United States.
The Respondent is Weldon Love of Many Farms, Arizona, United States. 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 March 7, 2019. On March 8, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 8, 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. In response to a Request for Amendment by the Center, the Complainant filed an amended Complaint on March 14, 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 amended Complaint, and the proceedings commenced on March 20, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 9, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 10, 2019.
The Center appointed William R. Towns as the sole panelist in this matter on April 24, 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 a Delaware corporation with its principal place of business in New York. The Complainant operates an online retail store offering women’s undergarments, lingerie, underwear and sanitary products, and providing online forums and related services under the THINX mark. The Complainant is the owner of the following United States trademark registrations for THINX: United States trademark registration No. 4,946,535, applied for March 14, 2013, and registered April 26, 2016; United States trademark registration No. 5,099,075, applied for March 3, 2016, and registered December 13, 2016; and United States trademark registration No. 5,144,899, applied for April 3, 2016, and registered February 21, 2017. The Complainant promotes its goods and services through its official website at “.”
The Respondent registered the disputed domain name on February 8, 2019. The disputed domain name resolves to a website headed “THINXDISCOUNTCODE” at “www..” The Respondent’s website offers discount codes for THINX products that may be purchased on the Complainant’s website. Visitors to the Respondent’s website obtain a “discount code” in order to click through to the Complainant’s online store, and are encouraged to provide their email addresses before leaving the Respondent’s website. If the visitor purchases an eligible product from the Complainant’s online store, the discount code obtained from the Respondent is applied at checkout. The Respondent’s website also displays the THINX mark with a “Visit Website” link that resolves to the Complainant’s website. 5. Parties’ Contentions A. Complainant
The Complainant submits that the disputed domain name is confusingly similar to its well-known and distinctive THINX mark. The Complainant maintains that the incorporation of the Complainant’s THINX mark in the disputed domain name is sufficient to establish the confusing similarity of the disputed domain name with the Complainant’s mark. The Complainant asserts that the addition of the descriptive term “discount code” does not dispel confusing similarity, but rather is calculated to mislead consumers to believe that the Respondent’s website is operated by, sponsored, endorsed, or affiliated with the Complainant. The Complainant further explains that the generic Top-Level Domain (“gTLD”) “.com” is disregarded when assessing confusing similarity.
The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant avers that the Respondent has not been licensed or otherwise authorized to use the Complainant’s THINX mark, has not been commonly known by the disputed domain name, and is neither using the disputed domain name in connection with a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the disputed domain name. According to the Complainant, the Respondent instead is using the disputed domain name to attract Internet users to the Respondent’s website, infringing on the Complainant’s mark in order to create a false association with the Complainant for the Respondent’s own commercial gain. The Complainant contends that the Respondent is using the disputed domain name to raise the Respondent’s website’s search engine ranking while lowering and damaging the ranking of the Complainant’s genuine website.
The Complainant maintains that the Respondent registered and is using the disputed domain name in bad faith. The Complainant asserts that the THINX mark is distinctive, well-known, and strongly associated with the Complainant, and further submits that the Respondent clearly was aware of the Complainant and its rights in the THINX mark when registering the disputed domain name. According to the Complainant, the Respondent is seeking to divert Internet visitors to the Respondent’s website though the creation of Internet user confusion, in order to capitalize on the good will of the Complainant’s mark for the Respondent’s personal gain, and to obtain visitors’ email addresses and personal information, possibly to resell them to third parties. 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, and WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1. B. Identical or Confusingly Similar
The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain name is confusingly similar to the Complainant’s THINX mark. 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 THINX mark is clearly recognizable in the disputed domain name.2 The addition of the descriptive term “discount code” does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy. The Panel further notes that gTLDs are generally 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 gTLD.3
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 register or use the Complainant’s THINX mark. The Respondent notwithstanding has registered the disputed domain name, which appropriates the Complainant’s THINX mark and is confusingly similar to the Complainant’s mark. The Respondent’s website also displays the Complainant’s mark and contains a link to the Complainant’s website.
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 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 it 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 come forward with any evidence of rights or legitimate interests in the disputed domain name. It is undisputed that the Respondent has not been authorized to use the Complainant’s mark, 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 the absence of any explanation from the Respondent, 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. The Respondent beyond cavil was aware of the Complainant’s mark when registering the disputed domain name. The Respondent appropriated the Complainant’s mark in its entirety and has used the disputed domain name to divert Internet users to the Respondent’s website through the creation of Internet user confusion. Internet visitors arriving at the Respondent’s website are likely to believe they have arrived at the Complainant’s website, or else a website that is affiliated with, sponsored or endorsed by the Complainant. The Respondent cannot credibly claim to be making a bona fide offering of goods or services when the disputed domain name has been registered and used to falsely suggest affiliation with the Complainant.
The Panel further finds that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name for purposes of paragraph 4(c)(iii) of the Policy. An assessment of a claim of fair use under paragraph 4(c)(iii) of the Policy entails consideration of the nature of the disputed domain name, as well as circumstances beyond the disputed domain name itself, and in some cases issues of commercial activity. The correlation between a disputed domain name and the complainant’s mark often is a central inquiry; the respondent’s use of a domain name is not “fair” in circumstances where the domain name falsely suggests affiliation with the trademark owner; nor can a use be “fair” if it is pretextual. 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. There is a notable absence of any disclaimer on the Respondent’s website, and, as previously observed, the THINX mark displayed on the Respondent’s website provides a link to the Complainant’s website.
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. The Panel considers that the Respondent was aware of and had the Complainant’s mark in mind when registering the disputed domain name. The Respondent in all likelihood has sought to exploit and profit from the Complainant’s mark, using the disputed domain name to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. The Respondent’s registration and use of the disputed domain name in the circumstances of this case constitutes bad faith.
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: May 8, 2019
1 See WIPO Overview 3.0 , section 1.7 .
2 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, see also, WIPO Overview 3.0, section 1.8.
3 The meaning of a particular gTLD, 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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