The Complainant is All Saints Retail Limited, United Kingdom, represented by Stobbs IP Limited, United Kingdom.
The Respondent is Peter Wood, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 24, 2019. On June 24, 2019, 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 July 2, 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 July 5, 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 July 12, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 1, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 2, 2019.
The Center appointed WiIliam A. Van Caenegem as the sole panelist in this matter on August 20, 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 says that it started as a wholesale menswear brand but now sells menswear, womenswear apparel, footwear, and accessories in 232 retail stores. It has approximately 3,200 employees across 27 countries including France, Canada, Republic of Korea, the Russian Federation, the United Kingdom and the United States. The Complainant acquired the domain name in 2009 and started to market its products later that year. It now owns and maintains 326 domain names expressly incorporating the term “Allsaints”. It delivers to over 200 countries. A schedule of trade mark registration attached to the Complaint indicates the very extensive rights owned by the Complainant in ALLSAINTS and ALL SAINTS, including United States Trade Mark No. 78703591, registered on September 11, 2007.
The disputed domain name was registered on February 18, 2019. The disputed domain name does not resolve to an active website. The disputed domain name has apparently only been used to create webmail records for the purpose of impersonating an officer of the Complainant and committing a fraud upon the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant contends that upon removal of the generic Top-Level Domain (“gTLD”) suffix from the disputed domain name, what remains for the Panel’s consideration is the phrase “allsaintsltd”. The disputed domain name therefore incorporates the Complainant’s ALLSAINTS and ALL SAINTS marks in their entirety. The Complainant points out that section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that: “While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trade mark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”.
Further the Complainant says that the mere addition of ‘ltd’ does nothing to distinguish the disputed domain name from the Complainant’s trade marks, all the more so since the Complainant has maintained an identical domain name since 2009 – all bar the three letters: “ltd”, and AllSaints is a registered limited/ltd company.
The Complainant asserts that the Respondent is not, to the best of the Complainant’s knowledge, known by the names “AllSaints” and/or “All Saints”, and has no trade mark registrations or rights in these names. Nor has the Complainant authorized any use of its ALLSAINTS and ALL SAINTS trade marks by the Respondent.
The Complainant points out that given the considerable reputation of the ALLSAINTS and ALL SAINTS marks and the Complainant’s operations in a wide range of goods and services since 2000, there is no believable or realistic reason for registration or use of the disputed domain name other than to take advantage of the Complainant’s rights and reputational standing. By the time the disputed domain name was registered, the Complainant already had extensive rights in the ALLSAINTS and ALL SAINTS brands dating back almost twenty years. Further, according to the Complainant it is evident that the Respondent was aware of the Complainant at the time the disputed domain name was registered, as the Respondent has relied upon trust in the Complainant’s brand to commit fraud. Consequently, the Complainant asserts that the Respondent could have no legitimate interest in the disputed domain name.
The Complainant further contends that the Respondent’s intention in registering the disputed domain name was to commit fraud by creating a mail record and pretending to be a key employee of the Complainant. Such activity cannot constitute a bona fide offering of goods or services. The Complainant also asserts that in view of its substantial rights in the ALLSAINTS and ALL SAINTS trade marks, its significant online presence, physical retail presence, and the Complainant’s reputation, there can be no good faith reason for the registration of a domain name that wholly contains the ALLSAINTS and ALL SAINTS trade marks.
Further, the Complainant says that the Respondent has registered the disputed domain name with the intention to deceive established AllSaints suppliers by registering a similar domain name to that of the Complainant and creating the webmail record “[...]@”. The mail record wholly incorporates the name of the Chief Operating Officer of the Complainant. The Complainant says that on March 19, 2019, emails were sent to an established AllSaints supplier in which the Respondent impersonated the Complainant’s Chief Operating Officer. The likeness in the disputed domain name and webmail record caused the suppliers to believe that this was a genuine purchase order from a genuine AllSaints company. Any use of a domain name for the purposes of illegal activity amounts to both bad faith registration and use under paragraph 4(b)(iii) and paragraph 4(b)(iv) of the Policy, the Complainant asserts. According to the Complainant, there are several existing mail records for the disputed domain name, which suggests that the disputed domain name may currently be or will continue to be used for similar criminal activity. It is therefore imperative that the Respondent no longer maintain ownership of this domain name, according to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The disputed domain name is not identical to the Complainant’s ALL SAINTS or ALLSAINTS trade marks. However, the disputed domain name incorporates the entirety of those trade marks, as its first, immediately recognizable and most dominant feature. The addition of “ltd” does not detract from the confusing similarity between the disputed domain name and the Complainant’s ALL SAINTS and ALLSAINTS trade marks. See section 1.8 of the WIPO Overview 3.0.
Therefore the Panel holds that the disputed domain name is confusingly similar to the Complainant’s trade marks. B. Rights or Legitimate Interests
The Respondent is not known by the disputed domain name or anything resembling it. The Respondent has not filed a Response indicating the existence of any rights or legitimate interests. It has not been authorized by the Complainant to use its distinctive ALL SAINTS and ALLSAINTS trade marks in any way. Material put before the Panel by the Complainant indicates that the disputed domain name was registered for the purpose of acquiring apparently legitimate email addresses so as to impersonate the Complainant and committing fraud upon unsuspecting third parties. None of this is consistent with any rights or legitimate interests vesting in the Respondent.
Therefore the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
At the time the Respondent registered the disputed domain name, the Complainant already benefited from the very extensive consumer recognition of, and goodwill in its ALL SAINTS and ALLSAINTS trade marks. It carries on a very extensive international business including retail, by reference to those marks. It is inconceivable that at the time of registration the Respondent was unaware of the rights of the Complainant in its distinctive trade marks, a fact supported further by the Respondent’s careful composition of the disputed domain name. The addition of “ltd” made the disputed domain name very suitable for the dishonest practice the Respondent has engaged in by creating an email address that is particularly apt to mislead. The Respondent used this address to attempt a fraud upon the commercial connections of the Complainant. This is clearly demonstrative of a dishonest intent in creating the disputed domain name, an intent then put into practice by the Respondent.
Therefore the Panel holds that the disputed domain name was registered and used in bad faith. 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 A. Van Caenegem
Sole Panelist
Date: September 2, 2019
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