The Complainant is Woodbrass.com, France, represented by Inlex IP Expertise, France.
The Respondent is Contact Privacy Inc. Customer 0156096534, Canada / Milen Radumilo, Romania. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 10, 2019. On December 10, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 December 15, 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 December 20, 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 January 2, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 22, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 29, 2020. The Center appointed Theda König Horowicz as the sole panelist in this matter on February 20, 2020. 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 company registered under the French Laws since March 10, 1999, and has its headquarters in France. It sells musical equipment and apparatus through its official website “www.woodbrass.com”. The domain name The Complainant is the owner of a several trademark registrations incorporating its name “woodbrass” such as: - French Trademark WOODBRASS (wordmark) No 332386, in classes 9, 11 and 15 of November 10, 2004; The disputed domain name was registered by the Respondent on October 31, 2019. Prior to the Complaint was filed, the disputed domain name resolved to a malware page. At the time of the present Decision, the disputed domain name directed to a pay-per-click page with a “buy this domain” notice. 5. Parties’ Contentions A. Complainant The Complainant is of the opinion that the disputed domain name is very similar to its trademark. Indeed, the disputed domain name differs from Complainant’s mark only by one letter: the [D] in WOODBRASS is missing in the disputed domain name. According to the Complainant, this omission does not catch the public’s attention since it is in the middle of the name and has no other purpose than to mislead the consumer. In this frame, the Complainants underlines that typo squatting has been sanctioned in several WIPO decisions. Furthermore, the Complainant draws the attention over the fact that a Google search for “woobrass” automatically suggest links for the Complainant’s trademark WOODBRASS. The Complainant alleges that they could not find any trademark application or registration for the denomination “WOOBRASS” in the name of the Respondent. The Complainant also states that it does not have a business relationship with the Respondent and it has never authorized the latter to use the trademark WOODBRASS in any way. No information was found by the Complainant on “woobrass” when making a Google search. According to the Complainant, the disputed domain name is pointing to a malware page, which was blocked by the Complainant’s software. Under the circumstances, the Complainant concludes that the Respondent does not have rights or legitimate interests in the disputed domain name. The Complainant asserts that its WOODBRASS trademark is well-known and that its official website is the leading marketplace for online sales of musical instruments in France and on the international market of music instruments. It would therefore be obvious that the Respondent is intentionally attempting to take advantage of the well-known character of WOODBRASS in order to attract the Internet users to its website spreading malware, which is bad faith use. Moreover, the Complainant is of the view that the Respondent is trying to generate profits with email services attached to the disputed domain name. Finally, the Complainant asserts that the Respondent also used privacy services in order to register the disputed domain name and hence hide his identity. In addition, the Respondent is, respectively was, involved in many other UDRP typo squatting cases. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under the Policy, in order to prevail, a complainant must prove the following three elements for obtaining the transfer of a domain name: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; The Complainant showed that it has trademark rights in WOODBRASS through several registrations covering notably France and the European Union. In this frame, the Panel notes that the Respondent is domiciled in Romania, a member state of the European Union. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (hereinafter, “WIPO Overview 3.0”) under section 1.7, the standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. In cases where a domain name incorporates the entirety of a trademark, 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. When comparing WOODBRASS (the Complainant’s mark) with “woobrass” (the disputed domain name), the Panel arrives to the conclusion that the disputed domain name is very similar to the Complainant’s trademark. Indeed, both signs have almost the same number of letters. They both start with [WOO] and end with [BRASS]. The missing [D] in the disputed domain name does not change the overall impression and is not sufficient to avoid a finding of confusing similarity with the Complainant’s trademark. Under these circumstances, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s mark. B. Rights or Legitimate Interests Paragraph 4 (c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes: (i) the use of the domain name in connection with a bona fide offering of goods and services; Once the Complainant establishes a prima facie case against the Respondent under this ground, the burden of production shifts to the Respondent to rebut it. The Complainant refers to the fact that the disputed domain name was linked to a malware page and that the use of the disputed domain name is therefore not legitimate. The Panel notes that the print of the relevant webpage inserted by the Complainant in its complaint to evidence this allegation is unreadable. Actually, the disputed domain name currently refers to a parking page and no reference could be found by the Panel to the malware page the Complainant is referring to. This specific allegation can thus not be taken into consideration. However, the Complainant indicated that it has not authorized the Respondent to use the WOODBRASS mark or any other similar term in any manner and that it has no business relationship with the Respondent. Furthermore, the Complainant has shown that the Respondent does not have any trademark rights in WOOBRASS and that it has no presence under the said name on the Internet, which confirms that the Respondent is not commonly known by the disputed domain name. In addition to this, the Complainant has established that the Respondent engaged in a pattern of registering domain names corresponding to marks held by third parties, which is another indication of the fact that he does not plan to make a fair and/or legitimate use of the disputed domain name (see WIPO Overview 3.0, section 2.5.2.). Based on the above, the Panel considers that the Complainant made a prima facie case and the burden of production shifted to the Respondent. The Respondent chose not to reply to the case against him. No evidence is contained in the case file which would demonstrate that the Respondent has rights or legitimate interests in the disputed domain name, in particular that the Respondent would be known by the disputed domain name. Consequently, the Panels finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Complainant has shown that its WOODBRASS trademark is registered and is used by the Complainant on the Internet where it promotes its activities in selling music instruments. The case file contains elements showing that the Complainant has a strong online presence which tends to indicate that the Respondent knew of the said trademark and deliberately registered the very similar disputed domain name (see WIPO Overview 3.0, section 3.2.2.). Furthermore, the Respondent is, respectively was, involved in several other UDRP cases for having unduly registered domain names containing brands of third parties which is another indication that the registration of the disputed domain name was not made by the Respondent by coincidence. With regard to the bad faith use condition, the Complainant states that the disputed domain name was linked to a malware page. As already mentioned above, the print of the webpage inserted by the Complainant in its complaint is unreadable and is therefore not sufficient to evidence the Complainant’s assertion, particularly since the disputed domain name currently refers to a parking page and that the Panel could thus not find any trace of the page the Complainant’s refers to. This said, the Panel notes that the disputed domain name refers to a parking page with pay-per-click links displaying a notice at the bottom of the page offering the disputed domain name for sale. In addition, the Respondent chose to remain silent within these proceedings. Furthermore, the Respondent registered the disputed domain name through privacy services, which is not a bad faith use evidence per se, but the use of a privacy service linked with the fact that the Respondent has been cited in several UDRP proceedings for unduly registering domain names comprising trademarks owned by third parties, is a clear indication that he wanted to hide his identity and use the disputed domain name in bad faith (see WIPO Overview 3.0, section 3.6.). The Panel consequently finds that the Complainant has established its case under 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 Theda König Horowicz
- French Trademark WOODBRASS (semi figurative) No 4226357, in classes 9, 15, 16, 35 and 41, of November 17, 2015;
- International Trademark WOODBRASS (semi figurative) No 1292631, in classes 9, 15, 16, 35 and 41, of November 17, 2015 which extends to China, the European Union and the United States of America.
(ii) that the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
(ii) being commonly known by the domain name; or
(iii) the making of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.
Sole Panelist
Date: March 9, 2020
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