Complainant is All Saints Retail Limited, United Kingdom, represented by Stobbs IP Limited, United Kingdom.
Respondent is Registration Private, Domains By Proxy, LLC, United States of America / Carolina Rodrigues, Fundacion Comercio Electronico, 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 December 20, 2019. On December 20, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 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 Complainant on December 24, 2020 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 January 16, 2020. 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 January 17, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 6, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 12, 2020. The Center appointed Bradley A. Slutsky as the sole panelist in this matter on February 28, 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 Complainant has numerous trademark registrations in various countries for the marks ALL SAINTS, ALLSAINTS, and a number of formatives of each of the foregoing. These registrations date back to at least 2002. Complainant asserts, and Respondent has not contested, that the disputed domain name was registered on February 11, 2018. The Panel observes that the historic domain name records attached to the Complaint reflect other possible registration dates as early as February 13, 2012 and as late as June 3, 2019. Regardless, all such potential domain name registration dates are well after Complainant’s registration of numerous ALLSAINTS and ALL SAINTS trademarks. According to evidence submitted by Complainant, the disputed domain name was listed for sale for USD 1,513 on Afternic and sometimes redirected to a website with retail related coupons and vouchers. 5. Parties’ Contentions A. Complainant Complainant is a British fashion retailer located in London, United Kingdom. Complainant asserts that it was founded in 1994 and that the name ALLSAINTS derives from the initials of one of the company’s founders. Complainant asserts that it sells clothing, footwear, and accessories in 232 stores across 27 countries, and has approximately 3,200 employees. Complainant asserts that the website “www.allsaints.com” began operation in 2009, and that the company now delivers to over 200 countries, has nearly 28 million website visits per year, has a mailing list with 760,000 members, has a turnover exceeding GBP 327 million, and has over 1.5 million social media followers across Instagram, Facebook, Twitter, YouTube, and Pinterest. In short, Complainant asserts that it has achieved a high level of recognition worldwide, has built considerable reputation and goodwill, and has rights in the ALLSAINTS and ALL SAINTS marks. Complainant asserts that the disputed domain name consists of the ALLSAINTS trademark with the addition of the geographic identifier “US” (for “United States”), and that the addition of “US” not only fails to distinguish the disputed domain name from Complainant’s marks, but reinforces potential confusion, especially in light of Complainant’s use of the website “www.us.allsaints.com”. Complainant further asserts that Respondent has no rights or legitimate interests in the disputed domain name, in that Respondent is not authorized to use Complainant’s marks, is not known by ALLSAINTS or ALL SAINTS, has no trademark registrations for ALLSAINTS or ALL SAINTS, and Respondent must have known of Complainant’s marks at the time Respondent registered the disputed domain name. Complainant further asserts that the disputed domain was registered and is being used in faith, due to the fact that Respondent has no rights or legitimate interests in the disputed domain name, due to Complainant’s significant goodwill in its marks such that, allegedly, there can be no good faith reason for the registration of the disputed domain name, due to the fact that Respondent listed the disputed domain name for sale for USD 1,513 on Afternic, and due to the fact that the disputed domain name sometimes redirected to Complainant’s website and sometimes redirected to a website with retail related coupons and vouchers. The Complaint also includes a list of 67 UDRP decisions between 2018 and 2019, all of which name the same Respondent as in this matter, many of which involve famous trademarks, and all of which resulted in a decision transferring the disputed domain name (one of the 67 decisions, Star Stable Entertainment AB v. Domains By Proxy, LLC, DomainsByProxy.com / VMI INC / Chad Moston, Elite Media Group / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2019-0450, sought to consolidate three respondents into a single complaint, and the Panel only allowed the complaint to go forward as to one of the respondents and that respondent was not Respondent Carolina Rodrigues, Fundacion Comercio Electronico). B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Pursuant to paragraph 15(a) of the Rules, a panel in UDRP proceedings “shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Under paragraph 4(a) of the Policy, Complainant must prove the following: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) 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 Under paragraph 4(a)(i) of the Policy, Complainant must show that the disputed domain name is “identical or confusingly similar to a trademark or service mark in which Complainant has rights”. Complainant’s trademark registrations in the Annexes to the Complaint demonstrate that Complainant has rights in the ALL SAINTS and ALLSAINTS marks. The disputed domain name consists of the ALLSAINTS mark, plus “US”, plus the generic Top-Level Domain (“gTLD”) “.com”. Generally, “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.” WIPO Overview of Panel View on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. Thus, the addition of “US” and the “.com” gTLD, does not prevent a finding of confusing similarity between the disputed domain name and Complainant’s marks on the facts of this case. See WIPO Overview 3.0, section 1.8 (“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”); WIPO Overview 3.0, section 1.11.1 (“The applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.”); All Saints Retail Limited v. Peter Wood,WIPO Case No. D2019-1457 (“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.”); All Saints Retail Limited v. Name Redacted,WIPO Case No. D2018-0698 (“‘allsaints’ is the dominant and distinctive part of the Domain Name and the addition of the descriptive term ‘outlet’, the geographical designation ‘uk’ and the gTLD suffix ‘.com’, does not alter that conclusion in any way”). Accordingly, the Panel finds that the disputed domain name is confusingly similar to trademarks in which Complainant has rights, and that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests Complainant also must demonstrate that Respondent has “no rights or legitimate interests in respect of the domain name[s]”, paragraph 4(a)(ii) of the Policy. “Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [Respondent’s] rights or legitimate interests to the domain name[s] for purposes of paragraph 4(a)(ii): (i) before any notice to [Respondent] of the dispute, [Respondent’s] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) [Respondent] (as an individual, business, or other organization) ha[s] been commonly known by the 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 domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” Policy, paragraph 4(c). There is no evidence that Respondent was making a bona fide use of the disputed domain name before receiving notice of this dispute, or that Respondent has been commonly known by the disputed domain name These allegations make out a prima facie case of lack of rights or legitimate interests, which Respondent has not rebutted. See All Saints Retail Limited v. Peter Wood,WIPO Case No. D2019-1457 (“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. […] None of this is consistent with any rights or legitimate interests vesting in the Respondent.”); Philip Morris USA Inc. v. Private Registration / tongliang wang,WIPO Case No. D2019-1041 (“The Panel notes that the Respondent is not an authorized reseller, service provider, licensee or distributor, and is not making legitimate noncommercial use or fair use of the Complainant’s trademarks. The Panel therefore considers that none of the circumstances of legitimate interests envisaged by paragraph 4(c) of the Policy apply. The Panel also notes that no evidence or arguments have been submitted by the Respondent in reply. The Panel therefore rules that the Complainant has satisfied the requirements for the second element under the Policy.”). Accordingly, the current state of the record supports a conclusion that Respondent has no rights or legitimate interests in respect of the disputed domain name, and that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith Complainant also bears the burden of establishing that the “domain name has been registered and is being used in bad faith”. Policy, paragraph 4(a)(iii). As set forth in the Policy, paragraph 4(b): “[T]he following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that [Respondent has] registered or [Respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to [C]omplainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent’s] documented out‑of‑pocket costs directly related to the domain name; or (ii) [Respondent has] 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 [Respondent has] engaged in a pattern of such conduct; or (iii) [Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] website or location or of a product or service on [Respondent’s] website or location.” “Given that the scenarios described in UDRP paragraph 4(b) are non-exclusive and merely illustrative, even where a complainant may not be able to demonstrate the literal or verbatim application of one of the above scenarios, evidence demonstrating that a respondent seeks to take unfair advantage of, abuse, or otherwise engage in behavior detrimental to Complainant’s trademark would also satisfy Complainant’s burden.” WIPO Overview 3.0, section 3.1. Complainant asserts that the disputed domain name was registered and is being used in bad faith because, among other things, (1) Complainant’s significant goodwill in its marks precludes good faith registration, (2) Respondent listed the disputed domain name for sale for USD 1,513 on Afternic; and (3) the disputed domain name sometimes redirected to a website with retail related coupons and vouchers. Registration of a domain name with knowledge of a trademark and intent to trade on the goodwill of the trademark is evidence of bad faith. See All Saints Retail Limited v. Name Redacted,WIPO Case No. D2017-2492 (“the Panel believes that the Respondent has clearly had the Complainant’s trademark in mind when constructing the disputed domain name, [accordingly] the Panel regards it as appropriate to find that the disputed domain name was registered in bad faith, and so finds”); WIPO Overview 3.0, section 3.1.4 (“Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar […] to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.”). Further, as noted in paragraph 4(b)(i) of the Policy, registering a domain name primarily for the purpose of selling it is evidence of registration and use in bad faith. The redirection of a disputed domain name to a website with retail related coupons and vouchers also is evidence of bad faith. See Skyscanner Limited v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2019-2707 (finding that this Respondent engaged in bad faith registration and use due to the facts that “[t]he Respondent is seeking to gain from this confusion through the use of PCC links on its website that lead to travel arrangement services which are not endorsed by or related to the Complainant [and t]he Respondent is offering the disputed domain name for sale at a price (USD 500) that, in the Panel’s view, is likely to exceed the Respondent’s out-of-pocket costs directly associated with the disputed domain name.”). Finally, the fact that Respondent has been found to have engaged in bad faith in numerous other UDRP disputes suggests a pattern of bad faith conduct. See Accenture Global Services Limited v. Registration Private, Domains By Proxy, LLC, DomainsByProxy.com / I S, ICS INC,WIPO Case No. D2018-2726 (“Respondent is a systematic cybersquatter who has been found to have registered and used domain names in bad faith in multiple other cases under the Policy, which suggests a pattern of such conduct on the part of Respondent”). Accordingly, the Panel finds that the present record supports a conclusion that the disputed domain name has been registered and is being used in bad faith, and that paragraph 4(a)(iii) of the Policy is satisfied. 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 Bradley A. Slutsky
Sole Panelist
Date: March 13, 2020
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