The Complainant is MJC Acquisition, LLC d/b/a Matilda Jane Clothing, United States of America (“United States”), represented by Bingham Greenebaum Doll LLP, United States.
The Respondent is Privacy Protect, LLC, United States / Domain Privacy Guard Sociedad Anónima Ltd, Panama. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 25, 2019. On September 26, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 27, 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 September 30, 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 October 1, 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 October 2, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 22, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 29, 2019. The Center appointed John Swinson as the sole panelist in this matter on November 8, 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 MJC Acquisition, LLC d/b/a Matilda Jane Clothing, a company incorporated in the United States. The Complainant sells branded clothing and apparel to kids and women through the Internet as well as through Trunk Shows. The Complainant is the registered owner of a number of trade marks for MATILDA JANE, including United States registered trade mark no. 5774739, registered on June 11, 2019 (the “Trade Mark”). The Respondent is Privacy Protect, LLC, United States / Domain Privacy Guard Sociedad Anónima Ltd, Panama. No Response was received, therefore little is known about the Respondent, except that it is a privacy service. The Disputed Domain Name was registered on February 8, 2006. The Disputed Domain Name currently resolves to a parking page containing pay-per-click (“PPC”) links and a statement that the Disputed Domain Name may be available for sale, which includes a link that resolves to a website inviting offers to purchase the Disputed Domain Name. 5. Parties’ Contentions A. Complainant The Complainant makes the following submissions. Identical or Confusingly Similar The Complainant was founded and first started using the trade mark MATILDA JANE with clothing in 2004. The Complainant sells MATILDA JANE branded clothing and apparel to kids and women through the Internet and through in-home “Trunk Shows”, and has sold millions of dollars of this clothing. The Complainant has also raised more than USD 180,000 for charitable organisations. The Disputed Domain Name is identical to the Trade Mark. The absence of a space between “matilda” and “jane” is of no legal significance. The generic Top-Level Domain is to be disregarded. Rights or Legitimate Interests The Complainant has not licensed or authorised the Respondent to use the Trade Mark. The Complainant has conducted searches and has found no evidence that the Respondent has been known as, or makes a bona fide offering of goods or services under, the name “Matilda Jane”. The website at the Disputed Domain Name is a parking page with PPC links to other clothing websites and also contains a link to another website inviting offers to purchase the Disputed Domain Name. When not using the Disputed Domain Name to solicit purchase offers, the Respondent is using the Disputed Domain Name to redirect visitors to other third party sites offering clothing and fashion for sale and to the Complainant’s website. The Respondent knows the association the Complainant has created between the Trade Mark and clothing, and this is why the PPC links relate to clothing. The Respondent has taken wrongful advantage of this association to create consumer initial interest confusion. Registered and Used in Bad Faith The Complainant has not authorised the Respondent to register the Disputed Domain Name. The Respondent registered the Disputed Domain Name on February 8, 2006, in reaction to and to profit from the Complainant’s founding and first use of the Trade Mark in 2004. This is bad faith registration. The Respondent is using the Disputed Domain Name in bad faith. The Respondent uses the Disputed Domain Name for a website parking page with a link to another website inviting offers to purchase the Disputed Domain Name, and also for PPC links purporting to offer clothing, which is the same category of goods the Complainant offers. When not using the Disputed Domain Name to solicit purchase offers, the Respondent is using the Disputed Domain Name to redirect visitors to the Complainant’s website. The Respondent has concealed itself and its activities through the use of at least two privacy services. This constitutes further evidence of bad faith registration and use. These actions create a likelihood of confusion with the Trade Mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website, or location, or of a product or service on the Respondent’s website or location located at the Disputed Domain Name. The equitable defence of laches does not properly apply in a Policy proceeding. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely: (i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and The onus of proving these elements remains on the Complainant even though the Respondent has not filed a Response. A. Procedural Issues - Laches The Disputed Domain Name was registered on February 8, 2006. The Complainant has waited more than 10 years to bring this Complaint. The Panel notes that the prevailing view among UDRP panelists is that mere delay does not bar a complainant from filing a complaint or from prevailing on the merits (see section 4.17 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). In this case, the Panel finds that the Complainant is not barred from bringing the Complaint by reason of its delay. B. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark. The Complainant owns a registered trade mark and has satisfied the threshold requirement of having trade mark rights for the purposes of standing to file a UDRP case (see section 1.2 of WIPO Overview 3.0). The Trade Mark was registered on June 11, 2019. The Disputed Domain Name was registered on February 8, 2006. The fact that the Disputed Domain Name was registered before the Trade Mark does not by itself preclude the Complainant’s standing to file this case, nor this Panel’s finding of identity or confusing similarity under the first element (see section 1.1 of WIPO Overview 3.0 and MADRID 2012, S.A. v. Scott Martin-MadridMan Websites,WIPO Case No. D2003-0598). As discussed in element three below, the Complainant has also established common law rights in the Trade Mark from 2004. The Disputed Domain Name incorporates the entirety of the Trade Mark, with no additional elements. The Disputed Domain Name is identical to the Trade Mark. The Complainant succeeds on the first element of the Policy. C. Rights or Legitimate Interests Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests. The Panel considers the Complainant has made out a prima facie case. This finding is based on the following: - The Respondent has not used, or made demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services. The website at the Disputed Domain Name features a PPC link page. These links relate to clothing sites, including the Complainant’s competitors. In the circumstances, this is not a bona fide use of the Disputed Domain Name under the Policy (see section 2.9 of WIPO Overview 3.0 and Lardi Ltd v. Belize Domain WHOIS Service Lt,WIPO Case No. D2010-1437). - The Panel accepts the Complainant’s submission that the Complainant has not authorised or otherwise given the Respondent permission to use the Disputed Domain Name. - There is no evidence that the Respondent has been commonly known by the Disputed Domain Name, or has registered or common law trade mark rights in relation to this name. - The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain. It is likely that the Respondent is receiving click-through revenue from the PPC links on the website at the Disputed Domain Name. The Respondent had the opportunity to demonstrate its rights or legitimate interests, but did not do so. As such, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy. D. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith. The Respondent registered the Disputed Domain Name more than 10 years prior to the Complainant registering the Trade Mark. Where a respondent registers a domain name before the complainant’s trade mark rights accrue, UDRP panels will not normally find bad faith on the part of the respondent. However, in certain limited circumstances, where the facts of the case establish that the respondent’s intent in registering the domain name was to unfairly capitalize on the complainant’s nascent (typically as yet unregistered) trade mark rights, panels have been prepared to find that the respondent has acted in bad faith (see section 3.8 of WIPO Overview 3.0). Alternatively, a complainant may be able to establish common law rights accruing before registration of the relevant domain name. The question for this Panel is whether the Complainant has established either: (1) that it had common law rights in the Trade Mark existing at the date of registration of the Disputed Domain Name, or (2) that the Respondent’s intent in registering the disputed domain name was to unfairly capitalise on the Complainant’s nascent (typically as yet unregistered) trade mark rights. Common law rights The Complainant states that it first started using the Trade Mark in 2004, when the company was founded. This is consistent with the Trade Mark registration, which records January 1, 2004, as the date of first use, as well as the Complainant’s Facebook page. The Complainant states that it has sold “millions of dollars” of clothing under the MATILDA JANE brand over the years, and raised USD 180,000 for charities. However, the Complainant has not provided any specific evidence of its activities before registration of the Disputed Domain Name to prove it was well known internationally at the time of registration of the Disputed Domain Name. Generally speaking, conclusory allegations of unregistered or common law rights (even when undisputed) would not normally suffice (see section 1.3 of WIPO Overview 3.0). Here, the Complainant does not appear to specifically assert that it had common law rights when the Disputed Domain Name was registered. However, the Panel acknowledges that the onus on the Complainant to present evidence of acquired distinctiveness/secondary meaning is not as high as it would be if the Trade Mark was descriptive of the Complainant’s services (see section 1.3 of WIPO Overview 3.0). The Panel also considers that the Trade Mark, comprising a combination of the names “Matilda” and “Jane” is not a common name and that the evidence establishes that the Respondent has been targeting the Trade Mark. In the absence of a Response and based on the evidence before the Panel, the Panel accepts that the Complainant has established sufficient rights in MATILDA JANE prior to registration of the Disputed Domain Name (see section 1.3 of WIPO Overview 3.0). Intent to unfairly capitalise on unregistered rights The Complainant contends that the Respondent registered the Disputed Domain Name in reaction to and in contemplation of profiting off the Complainant’s founding as Matilda Jane Company and first use of the Trade Mark in commerce in 2004, and that this proves registration in bad faith. This does not fall within the scenarios listed in section 3.8.2 of WIPO Overview 3.0, but these are not exhaustive (see Glasgow 2014 Limited v. Tommy Butler,WIPO Case No. D2012-2341). The Respondent registered the Disputed Domain Name approximately two years after the Complainant was founded and first used the Trade Mark. In the absence of a Response and in light of the Panel’s view that combination of the names “Matilda” and “Jane” is not common, the Panel accepts that in the present case the Complainant had used MATILDA JANE as a trade mark prior to the registration of the Disputed Domain Name and that the Disputed Domain Name was registered with knowledge of that use and with the intention of taking advantage of the reputation that had or would attach to that term by reason of that use. Therefore, the fact that at that time the Complainant had not applied for or obtained a registered trade mark for that term, does not prevent a finding of bad faith registration and use (BML Group Limited v. Rikard Beach, Proxy My Whois AB,WIPO Case No. D2015-1897). The Panel also notes that UDRP paragraph 4(b)(iv), read in light of paragraph 4(a)(ii), can support an inference of bad faith registration for the respondent to rebut (see section 3.2.1 of WIPO Overview 3.0). The Panel is satisfied that the circumstances here (including the Respondent’s lack of rights or legitimate interests, the fact that the Disputed Domain Name is identical to the Trade Mark, the Respondent’s use of the Disputed Domain Name for PPC links, failure to submit a Response and use of a privacy shield) support an inference of bad faith registration. Turning to bad faith use, the Panel considers that the following factors support a finding of bad faith use: - The Complainant has also provided evidence that in the past, the website at the Disputed Domain Name also redirected to the Complainant’s website. This can establish bad faith use (see section 3.1.4 of WIPO Overview 3.0). - The website at the Disputed Domain Name contains a link to another website containing an invitation to make an offer to purchase the Disputed Domain Name (see Singapore Telecommunications Limited v. Domain for SALE http://offers.NameRegister.com,WIPO Case No. D2001-1059). - The Respondent has used an additional privacy or proxy service underlying another privacy or proxy service. This “Russian Doll” technique is an indication of bad faith (see section 3.6 of WIPO Overview 3.0 and Matvil Corporation v. Private Registration / PrivacyProtect.org,WIPO Case No. D2011-0841). The Panel considers that the Complainant has proved that by using the Disputed Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s Trade Mark or otherwise to take advantage in some manner of the Complainant’s reputation and goodwill in the Trade Mark. This is evidence of registration and use in bad faith. In light of the above, and in the absence of a Response and any evidence rebutting bad faith registration and use, the Panel finds that the Complainant has succeeded on the third element 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 John Swinson
(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 Complainant has provided evidence that the Respondent has used the Disputed Domain Name for PPC advertising. The links on the parking page include links to various clothing and apparel companies. The Panel considers that these links either compete with, or capitalise on, the reputation and goodwill of the Complainant’s brand. The Respondent cannot disclaim responsibility for these links (see section 3.5 of WIPO Overview 3.0 and Owens Corning v. NA,WIPO Case No. D2007-1143).
Sole Panelist
Date: November 19, 2019
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