The Complainant is Rothy’s, Inc., United States of America (the “United States”), represented by Arent Fox LLP, United States.
The Respondent is Domain Administrator, See PrivacyG, United States / Chen Li, China. 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 July 22, 2019. On July 23, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 23, 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 July 24, 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 25, 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 26, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 15, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 16, 2019.
The Center appointed George R. F. Souter as the sole panelist in this matter on August 22, 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 United States-based corporation, founded in 2012, which manufactures shoes from recycled bottles, using a 3D knitting process, and markets them under its ROTHY’S trademark. It is the proprietor of two United States Federal registrations of its ROTHY’S trademark, No. 4941653, with a first use in commerce on December 12, 2015, and No. 5717976, with a first use in commerce on May 1, 2018.
The fact that the shoes have been well-received by the buying public is evidenced by the statistic that over 32 million recycled bottles have been used in their manufacture to date, and evidence of considerable expenditure by the Complainant in advertising its ROTHY’S mark has been supplied to the Panel.
The disputed domain name was registered on June 6, 2019, and has been used in connection with a website offering shoes (which might be counterfeit) for sale. 5. Parties’ Contentions A. Complainant
The Complainant alleges that the disputed domain is confusingly similar to its ROTHY’S trademark, consisting of a substantial part of the Complainant’s trademark, together with the descriptive or non-distinctive element “store”.
The Complainant alleges that the Respondent lacks rights or legitimate interests in the disputed domain name and, in particular, that so far as the Complainant is aware, the Respondent is not generally known by the disputed domain name, and the Complainant has never consented to use by the Respondent of any domain name confusingly similar to its ROTHY’S trademark.
The Complainant alleges that the disputed domain name was registered in bad faith, and is being used in bad faith in connection with a website offering competing products for sale (which might be counterfeit) to those retailed by the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant:
(i) the disputed 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 in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
It is well-established in prior decisions under the UDRP, with which the Panel agrees, that a gTLD indicator is irrelevant when comparing a trademark with a disputed domain name. Accordingly, the Panel considers the “.com” indicator to be legally irrelevant in the circumstances of the present case.
The Panel recognises that the Complainant has sufficient rights in its ROTHY’S trademark for the purposes of these proceedings.
The Panel is aware that the addition of a terminal “y” to a monosyllabic surname is common in the English language usage, the addition generally being “affectionate” or “possessive”; “Smithy” and “Jonesy” being examples. It would, in the Panel’s opinion, be common for an average consumer of footwear, at least in an English‑speaking country, to commonly associate the informal name “Rothy’s” with the formal surname “Roth”. The word “shop”, in the circumstances of the present case, is, in the Panel’s opinion, clearly a descriptive or non-distinctive element. The overall impression of the disputed domain name is, in the Panel’s opinion, likely to bring to mind the well-known trademark of the Complainant in the circumstances of the present case, and the Panel, accordingly, finds that this disputed domain name is confusingly similar to the Complainant’s trademark, and that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
It is the consensus view of UDRP panels, with which the Panel agrees, that a prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy, provided the respondent does not come forward with evidence demonstrating rights or legitimate interests in the domain name and the complainant has presented a sufficient prima facie case to succeed under paragraph 4(a)(ii) of the Policy.
The Panel considers the submissions put forward by the Complainant as sufficient to be regarded as a prima facie case, and the Respondent did not take the opportunity to advance any claim of rights or legitimate interests in the disputed domain name to rebut this prima facie case.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel is of the view that the finding that a respondent has no rights or legitimate interests in a disputed domain name can lead, in appropriate circumstances, to a finding of registration of a disputed domain name in bad faith. In the circumstance of the present case, in which the Panel believes that the Respondent clearly had the Complainant’s trademark in mind when registering the disputed domain name, the Panel regards it as appropriate to find that the disputed domain name was registered in bad faith, and so finds.
It is well-established in prior decisions under the Policy that the use of a disputed domain name found to be similar to a complainant’s trademark in connection with a website offering similar goods to those traded in by the complainant under its trademark, constitutes use of the disputed domain name in bad faith. The Panel agrees with these decisions and, accordingly, finds that the disputed domain name in this case is being used in bad faith. Accordingly, the Panel finds that the Complainant has satisfied the dual 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.
George R. F. Souter
Sole Panelist
Date: September 5, 2019
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