The Complainant is Reeds Jewelers, Inc., United States of America (“United States”), represented by Carlton Fields, United States.
The Respondent is 21562719 Ont Ltd, Canada. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 16, 2020. On January 17, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 22, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the 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 28, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 17, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 18, 2020. The Center appointed Gareth Dickson 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 The Complainant operates in connection with the manufacture and distribution of high quality luxury goods, namely jewellery, gemstones, and precious metals as well as retail services for the aforementioned items. The Complainant is the owner of a number of trade mark registrations for REEDS and REED’S around the world, and has been using REEDS since 1946. Its registered rights include: - United States trade mark registration number 1123222, for REED’S, registered on July 31, 1979; (the “Marks”). The disputed domain name was registered on November 12, 2004. It currently directs Internet users to webpages which, inter alia, feature sponsored links and links to competitors of the Complainant. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is identical to or confusingly similar with the Marks, the notoriety of which is said to be evidenced by the media coverage and publicity submitted by the Complainant. The Complainant asserts that the disputed domain name differs from the Marks by only one letter, specifically the repetition of the letter “e”, which is only a slight variation on the Marks. That small difference is said to support a finding of confusing similarity due to nearly identical visual and phonetic characteristics, and indeed also of a “purposeful misspelling” of the Marksthat constitutes “typo-squatting”. The generic Top-Level Domain (“gTLD”) “.com” also does not relieve the said confusing similarity The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name. It submits that none of the circumstances that may evidence rights or legitimate interests as set out in paragraph 4(c) of the Policy apply to the disputed domain name: there is no evidence that the Respondent has made use of, or made demonstrable preparations to use, the disputed domain name or its literal element “reeeds” in connection with any bona fide offering of goods or services, or for other legitimate purposes. By contrast, the Complaint has submitted evidence that the Respondent is using the disputed domain name to trade off the Marks by directing Internet users to webpages with malicious content involving phishing, data mining, malware, and spyware; or to webpages prominently featuring links composed of keywords relating to the specific goods and services provided by the Complainant under the Marks, which provide access to third party websites that offer goods and services identical to those provided by the Complainant under the Marks. Finally, the Complainant states that the Respondent is not commonly known by the disputed domain name and has been granted no licence or other rights to use the Marks as part of any domain name or for any other purpose, nor has the Respondent ever been associated with or affiliated with the Complainant. In relation to the third limb of the Policy, the Complainant alleges that the Respondent has engaged in a pattern of typo-squatting, evidenced by the Respondent having been ordered to transfer other “typo-squatting” domain names in several prior UDRP cases, and that the registration and use of the disputed domain name was designed to misdirect Internet traffic for the Respondent’s commercial gain, including to websites of the Complainant’s competitors; and to distribute misleading and malicious content including fake gift card promotions, malware, spyware, and personal data collection. The Complainant also notes that the Respondent used a privacy service to conceal its identity. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, the Complainant bears the burden of proving that: (i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; These criteria are cumulative. The failure of the Complainant to prove any one of these elements means the Complaint must be denied. A. Identical or Confusingly Similar The Panel accepts that the Complainant is the owner of, and therefore has rights in, the Marks. Section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) provides that “[a] domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element”. The Panel accepts that the disputed domain name is confusingly similar to the Marks. The additional instance of an “e” in the disputed domain name (or the omission of the apostrophe seen in the oldest of the Marks) does not alter the phonetic or conceptual similarity between the disputed domain name and the Marks; and the disputed domain name is clearly intended to appear, and is, confusingly similar to the Marks. The addition of the gTLD “.com” does not alter this conclusion. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights. B. Rights or Legitimate Interests Although a complainant is required to demonstrate that a respondent has no rights or legitimate interests in respect of the domain name, as explained in section 2.1 of the WIPO Overview 3.0, the consensus view of previous UDRP panels is that where a complainant establishes a prima facie case that the respondent lacks rights or legitimate interests the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. In the current proceeding, the Complainant has established its prima facie case. It states that it has not given the Respondent permission to use the Marks, in a domain name or otherwise, and submits that the Respondent has not been commonly known by the disputed domain name. The Complainant also submits that the redirection of Internet users to websites potentially adopting malicious practices, and also to websites of the Complainant’s competitors, does not constitute a bona fide sale of goods or services or a legitimate noncommercial or fair use within the meaning of the Policy. Section 2.13.1 of the WIPO Overview 3.0 states that: “Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent”. By not participating in these proceedings, the Respondent has failed to refute the Complainant’s prima facie case that it has met its burden under the second UDRP element. As clearly stated in section 2.1 of the WIPO Overview 3.0, “a panel’s assessment will normally be made on the basis of the evidence presented in the complaint and any filed response. The panel may draw inferences from the absence of a response as it considers appropriate, but will weigh all available evidence irrespective of whether a response is filed”. Having reviewed and weighed the available evidence, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith The Panel finds that the Domain Name was registered in bad faith. It is a clear example of a typo-squatting domain name, that is, one which was chosen with a trade mark owner in mind, usually after the relevant trade marks have been registered, and for the purpose of diverting traffic away from that trade mark owner by capitalizing on Internet users’ typographical mistakes. The Domain Name is also being used in bad faith. The unassailable evidence before the Panel is that the disputed domain name is being used for a commercial purpose that involves redirecting Internet users (in particular those seeking the Complainant) to competitors of the Complainant. That is an unacceptable use of the Complainant’s trade marks. In addition, while the existence of so many other UDRP proceedings having been won against the Respondent does not create a presumption of bad faith per se, it does tend to support a finding of bad faith where the Respondent has not taken any steps to rebut it and continues to use a privacy service to make it more difficult and time consuming to obtain its identity. The Panel finds that the Respondent has registered and is using the Domain Name 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 Gareth Dickson
- European Union trade mark number 012922779 for REEDS, registered on October 16, 2014;
- United States trade mark registration number 4892679, for REEDS, registered on January 26, 2016;
(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.
Sole Panelist
Date: March 20, 2020
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