Complainant is Patagonia Provisions, Inc., United States of America (“United States”), represented by Kilpatrick Townsend & Stockton LLP, United States.
Respondent is Whois Agent, Domain Protection Services, Inc., United States / Sam Jarsky, Lasuda Inc, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 2, 2020. On February 4, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 4, 2020, 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 February 5, 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 February 17, 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 February 18, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 9, 2020. Respondent did not submit any response. Accordingly, the Center notified the parties of Respondent’s default on March 11, 2020. The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on March 30, 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 is a California-based company, established in 2012, that develops and markets specialty food items under the PATAGONIA PROVISIONS mark (the “Mark”). Complainant operates an online shop through its website at “www.patagoniaprovisions.com” (the “Website”) and is the proprietor of numerous trademark registrations for the Mark in various jurisdictions, including the following: - United States registration No. 4786172 for PATAGONIA PROVISIONS (word mark), registered on August 4, 2015 in class 21, claiming a date of first use of September 10, 2014; - United States registration No. 4917049 for PATAGONIA PROVISIONS (word mark), registered on March 15, 2016 in classes 35, 41 and 43, claiming a date of first use of November 25, 2013. Respondent registered the disputed domain name, Complainant’s contentions may be summarized as follows. Under the first element, Complainant states that its parent company, Patagonia, Inc., was founded in the 1960s to design and sell climbing clothes and other active sportswear, and the PATAGONIA brand is famous in the United States and around the world for its products and environmental mission. Complainant was established in 2012 to sell foods that address environmental issues. The disputed domain name is a straightforward reproduction of Complainant’s PATAGONIA PROVISIONS Mark, with only the addition of a letter “o”. As such, the disputed domain name is confusingly similar as a matter of law under the Policy, since the disputed domain name constitutes typosquatting. Under the second element, Complainant states that Respondent has no rights or legitimate interests in the PATAGONIA PROVISIONS Mark, or in the disputed domain name. There is no relationship between Complainant and Respondent. Complainant has never authorized Respondent to use the Mark. Respondent “Sam Jarsky” is not commonly known by the disputed domain name, and Respondent’s use of the disputed domain name does not correspond to a bona fide offering of goods or services. The disputed domain name resolved to a website that mirrored Complainant’s website at “www.patagoniaprovisions.com”, and included unauthorized reproduction of Complainant’s copyrighted work and displayed Complainant’s PATAGONIA mark and logo. Such use is not indicative of rights or legitimate interests and appears likely to be an attempt to phish for customers’ personal and financial information. Under the third element, Complainant states that Respondent’s conduct constitutes bad faith registration and use of a domain name. Respondent has used a reproduction of Complainant’s Mark to create confusion and divert Internet users to its website. Such actions demonstrate that Respondent knew of Complainant’s rights in the PATAGONIA PROVISIONS Mark prior to registering and using the disputed domain name. Respondent obviously registered the disputed domain name with prior knowledge of Complainant’s PATAGONIA PROVISIONS Mark, which was in use and extensively promoted by Complainant and its affiliates. Respondent’s reproduction of Complainant’s official website confirms that Respondent’s registration was made in bad faith. Respondent selected the disputed domain name to deceive visitors to its website into believing that Respondent is either Complainant or is affiliated with Complainant for the purpose of convincing those visitors to provide Respondent with their personal or financial information, thus engaging in phishing and fraud. Respondent’s infringement of Complainant’s intellectual property rights is further proof of bad faith. Respondent cannot show any good-faith use of the disputed domain name. Complainant requests transfer of the disputed domain name. B. Respondent Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Given the facts in the case file and Respondent’s failure to file a response, the Panel accepts as true the contentions in the Complaint. Nevertheless, paragraph 4(a) of the UDRP requires Complainant to make out all three of 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) Respondent has registered and is using the disputed domain name in bad faith. A. Identical or Confusingly Similar Complainant has provided evidence establishing that it has trademark rights in the PATAGONIA PROVISIONS mark through registrations in several jurisdictions, thereby satisfying the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 3.0”), section 1.2.1. In comparing Complainant’s PATAGONIA PROVISIONS Mark with the disputed domain name Section 1.7 of WIPO Overview 3.0 provides: “It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.” Section 1.9 of WIPO Overview 3.0 provides: “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.” It is the well-established view of UDRP panels that the addition of the generic Top-Level Domain (“gTLD”) to the disputed domain name does not prevent the disputed domain name from being confusingly similar to Complainant’s trademark (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder). Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following: (i) before any notice to it 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 has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or (iii) Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The circumstances stated in the Complaint and evidence in support set forth in the Annexes to the Complaint indicate that Respondent has no rights or legitimate interests in the disputed domain name. The nature of the disputed domain name, which is an obvious misspelling of Complainant’s Mark, cannot constitute fair use because Respondent thereby effectively impersonates or suggests sponsorship or endorsement by Complainant, the trademark owner. See WIPO Overview 3.0, section 2.5.1. The Panel finds that there is no evidence that Respondent is commonly known by the disputed domain name or is using the PATAGONIA PROVISIONS Mark with permission of Complainant. Rather, the record supports Complainant’s express assertion that such permission does not exist. Complainant’s rights in the PATAGONIA PROVISIONS mark predate the registration of the disputed domain name by several years. The Panel finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Pursuant to WIPO Overview 3.0., section 2.1, and cases thereunder, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Respondent, in failing to timely file a response, has not submitted any evidence or arguments demonstrating such rights or legitimate interests, nor has it rebutted any of Complainant’s contentions. There is no information available that would support a finding of a fair use of the disputed domain name. Considering the near identity between Complainant’s Mark and the disputed domain name and the fact that the disputed domain name resolved to a website copying Complainant’s website for fraudulent purposes, there can be no finding or rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the disputed domain name in bad faith: (i) circumstances indicating that Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or (ii) that Respondent has registered the disputed 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) that Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or (iv) that by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website 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. The Panel finds bad faith under Policy, paragraph 4(b)(iv). The record in the case demonstrates that Respondent chose the disputed domain name deliberately for the purpose of impersonating or attempting to create an association with Complainant. Complainant’s rights in the PATAGONIA PROVISIONS mark predate by several years the registration of the disputed domain name. The disputed domain name contains Complainant’s Mark in its entirety, with the addition of a letter “o” that Internet users might easily overlook, which is clearly an example of typosquatting. The Panel finds that such a registration creates a presumption of bad faith. See WIPO Overview 3.0, section 3.1.4, describing the types of evidence that may support a finding of bad faith. Having established that the disputed domain name was registered in bad faith, the Panel next turns to the issue of whether Respondent has engaged in bad faith use of the disputed domain name. The Panel finds that Respondent has demonstrated bad faith use in establishing and operating a website that closely resembles Complainant’s website. Respondent’s website contains numerous indicia of fraudulent activity, including use of Complainant’s Mark, its logo, images, essays and recipes, and purported offers for sale of Complainant’s products. Respondent shielded his identity by using a privacy service when registering the disputed domain name. Respondent has failed to file any response or provide any evidence of actual or contemplated good faith use, and the circumstances do not make any such use plausible. The Panel therefore finds that Complainant has established the third element under paragraph 4(a) 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, Ingrīda Kariņa-Bērziņa
Sole Panelist
Date: April 17, 2020
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