Complainant is Aspassia Tagliente, Belgium, represented by Kety Tsochas, attorney at Squire Patton Boggs (UK) LLP, Belgium.
Respondent is Super Privacy Service LTD c/o Dynadot, United States of America (United States”). 2. The Domain Name and Registrar
The disputed domain name is registered with Dynadot, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 22, 2019. On May 23, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 26, 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 Complainant on May 29, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May 30, 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 Respondent of the Complaint, and the proceedings commenced on June 3, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 23, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 24, 2019.
The Center appointed Brian Winterfeldt as the sole panelist in this matter on June 28, 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
Complainant Aspassia Tagliente is a natural person of Italian nationality residing in Belgium. Complainant operates “Aspassia Tagliente BVBA,” a private limited liability company incorporated in Belgium. On March 24, 2019, Complainant filed a trademark application for ASPASSIA TAGLIENTE & Design in the European Union (Filing Number 018039652) for clothing and bags.
Respondent is “Super Privacy Service LTD c/o Dynadot.” Respondent registered the disputed domain name, on March 24, 2019. At the time of Complainant’s filing, the disputed domain name resolved to a parked page. 5. Parties’ Contentions A. Complainant
Complainant contends the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. Complainant asserts on February 15, 2019, Complainant incorporated a limited liability company under “Aspassia Tagliente BVBA.” Complainant further asserts Complainant filed a trademark application for ASPASSIA TAGLIENTE & Design (Filing Number 018039652) for clothing, bags, and other carriers. Complainant asserted the registration process was ongoing. Complainant contends that one hour and three minutes after Complainant filed for the trademark application, Respondent registered the disputed domain name. Complainant asserts that where a personal name is used as a trademark-like identifier in trade or commerce, the presence of an unregistered or common law trademark right can be established. Complainant contends that her company uses her individual name when conducting trade and commercial activities. Complainant further contends that her name, used to incorporate a company, is sufficient to assert that Complainant has an unregistered or common law trademark rights in the name. Complainant asserts that if the Panel does not consider a personal name to establish an existence of a right, Complainant has filed a trademark application encompassing Complainant’s name. Complainant further asserts her personal name falls within the definition of a trademark or service mark based on unregistered or common law rights. Complainant further asserts that Respondent is not known by the name, nor does it have any rights in the disputed domain name.
Complainant asserts Respondent has no rights or legitimate interests in respect of the disputed domain name. Complainant asserts that after researching Respondent’s prior use or preparation to use the disputed domain name, Complainant did not find any evidence of business formation-related due diligence or legal advice; credible investment in website development or promotional materials such as advertising, letterhead, or business cards; business plans utilizing the disputed domain name and credible signs of pursuit of the business plan; bona fide registration and use of related disputed domain name; or lack of indicia of cybersquatting intent. Complainant further asserts that online search results for her name only generated information pertaining to Complainant. Complainant asserts that these factors, and the lack of a bona fide offering of goods or services suggests that Respondent has no legitimate rights or interest in the disputed domain name. Complainant further asserts Respondent is selling the disputed domain name through the reseller Undeveloped, which further suggests that Respondent does not have rights or legitimate interests in the disputed domain name. Complainant asserts Respondent placed the disputed domain name on sale on April 14, 2019, with no intent to legitimately use the disputed domain name, but only for the malicious intent of unjust enrichment at the expense of Complainant.
Complainant finally asserts the disputed domain name was registered and is being used in bad faith. Complainant asserts when Complainant filed for a trademark registration on March 24, 2019 at 9:01pm, Respondent purchased the disputed domain name at 10:04pm the same day. Complainant further asserts Respondent has not used the disputed domain name but rather, placed the disputed domain name on sale for USD 988. Complainant asserts Respondent registered the disputed domain name solely for the purposes of selling or otherwise transferring the disputed domain name to Complainant, who is the legitimate owner. Complainant asserts Complainant is in the process of opening its own fashion brand and envisions selling its products starting in fall 2019. Complainant asserts Respondent is hindering Complainant’s pursuit of a business activity as a fashion brand.
Accordingly, Complainant has requested the disputed domain name be transferred to Complainant. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iv) the disputed domain name was registered and is being used in bad faith.
Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states:
“Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed: a respondent’s default is not necessarily an admission that the complainant’s claims are true.”
Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. A. Identical or Confusingly Similar
Ownership of a trademark registration is sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See WIPO Overview 3.0, section 1.2.1. This Panel notes that at the time of Complainant’s filing, Complainant’s trademark application was still pending before the EUIPO. The Panel notes, however, that on July 3, 2019, Complainant’s trademark ASPASSIA TAGLIENTE was registered by the European Union Intellectual Property Office (“EUIPO”). While Complainant’s trademark registration post-dates registration of the disputed domain name, the date of Complainant’s registration is only one factor in determining whether Complainant had trademark rights at the time the disputed domain name was registered. In this case, it is clear that Complainant has been in the process of developing a legitimate business and brand in connection with the name and designation ASPASSIA TAGLIENTE, as evidenced by Complainant’s LLC formation, marketing efforts on social media and other platforms, trademark application and recent registration. The Panel also notes in contexts like this, panels have found that the overall facts and circumstances of a case (including relevant website content) may support a finding of sufficient rights, particularly where it appears that the respondent registered the domain name precisely because it believed that the domain name was confusingly similar to an identifier associated with the complainant. See WIPO Overview 3.0, Section 1.7. Further, “The fact that a respondent is shown to have been targeting the complainant’s mark (e.g., based on the [proximity of the domain name registration with the appearance of the complainant’s public trademark application]) may support the complainant’s assertion that its mark has [sufficient recognition to support a claim that the registrant was targeting the complainant’s rights, such as they are at present].” See WIPO Overview, Section 1.3. Thus, in this case, Complainant has met its burden in demonstrating sufficient rights in the ASPASSIA TAGLIENTE designation to meet the initial threshold standing requirement of the UDRP.
With Complainant’s rights in the ASPASSIA TAGLIENTE trademark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain (“gTLD”) in which it is registered, in this case, “.com”) is identical or confusingly similar to Complainant’s mark. See, e.g., B&H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2019-0842.
Here, the disputed domain name is identical to Complainant’s ASPASSIA TAGLIENTE trademark.
The Panel therefore finds that Complainant has met the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, Complainant must make at least a prima facie showing that Respondent possesses no rights or legitimate interests in the disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once Complainant makes such a prima facie showing, the burden of production shifts to Respondent, though the burden of proof always remains on Complainant. If Respondent fails to come forward with evidence showing rights or legitimate interests, Complainant will have sustained its burden under the second element of the UDRP.
Paragraph 4(c) of the Policy further provides that the following circumstances can be situations in which the respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [Respondent] has acquired no trademark or service mark rights; or
(iii) [Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name. See WIPO Overview 3.0, sections 2.1, 2.2, 2.3, 2.4, and 2.5
From the record in this case, there is no evidence that Respondent has any rights or legitimate interests in the disputed domain name. There is no evidence that Respondent is affiliated with, authorized, licensed to, or otherwise permitted to use the ASPASSIA TAGLIENTE designation. Respondent has failed to submit any evidence demonstrating any rights or legitimate interests in the disputed domain name. In fact, Complainant undertook various research to show that Respondent has not made any bona fide use of the disputed domain name. The disputed domain name continues to resolve to a parked page offering the disputed domain name for sale. This type of use in the circumstances of this case does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See, e.g., Playboy Enterprises International, Inc. v. Tom Baert,WIPO Case No. D2007-0968 (finding a site that is “under construction” does not constitute noncommercial fair use).
Therefore, the Panel finds Complainant has met its burden of establishing that Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Panel finds that Respondent registered and used the disputed domain name in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Panel notes that the timing of Respondent’s registration of the disputed domain name is highly suspect. Complainant filed its trademark application for the ASPASSIA TAGLIENTE designation on March 24, 2019 at 9:01pm, and, as evidenced by Complainant, one hour and three minutes later, Respondent registered the disputed domain name (on March 24, 2019 at 10:04pm). The Panel finds Respondent likely had knowledge of Complainant’s public trademark application and its claim in legal rights to the ASPASSIA TAGLIENTE designation, and sought to capitalize on the opportunity to register the disputed domain name corresponding to that designation. See, e.g., Statoil ASA (“Statoil”) v. Cameron Jackson,WIPO Case No. D2015-2226. Such opportunistic action has consistently been found by prior panels to indicate bad faith. See, e.g., Gilead Sciences Ireland UC / Gilead Sciences, Inc. v. Domain Maybe For Sale c/o Dynadot,WIPO Case No. D2019-0980.
Further, the disputed domain name is available for purchase for USD 988, far exceeding the average cost of an ordinary domain name. This suggests Respondent registered the disputed domain name primarily for the purpose of selling the domain name registration to Complainant, owner of the ASPASSIA TAGLIENTE trademark, for valuable consideration in excess to any out of pocket costs expended by Respondent. See Arla Foods Amba and Mejeriforeningen Danish Dairy Board v. Mohammad Alkurdi,WIPO Case No. D2017-0391.The timing of the disputed domain name’s registration, coupled with such use, are indicative of bad faith pursuant to paragraphs 4(b)(i) of the Policy.
Accordingly, the Panel finds that Respondent registered and used the disputed domain name in bad faith and Complainant succeeds under the third element of paragraph 4(b) 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 Complainant.
Brian Winterfeldt
Sole Panelist
Date: August 8, 2019
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