The Complainant is Susan Lordi Marker, United States of America (“United States”), represented by Hovey Williams LLP, United States.
The Respondent is Name Redacted.1 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 17, 2020. On July 17, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 20, 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 the Complainant on July 20, 2020 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 July 22, 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 the Respondent of the Complaint, and the proceedings commenced on July 28, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 17, 2020. The Respondent did not submit any response. On August 6, 2020, a third party sent an email to the Center claiming that the registration of the Disputed Domain Name had been made without its knowledge or authorization using its identity. On August 7, 2020, the Center acknowledged receipt of the third party’s email, replied that the Panel would address the issue in its decision, and proceeded to Panel Appointment on August 18, 2020. The Center appointed Lynda M. Braun as the sole panelist in this matter on August 21, 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 the designer, manufacturer and seller of hand-crafted and carved, hand-painted “Willow Tree” figurines and other home decor. The Complainant promotes and sells figurines online and also licenses the figurines to a select group of authorized dealers who market and distribute the items in the United States, Canada, and Australia. Since 2000, DD Traders, Inc. d/b/a DEMDACO has been one of the selected authorized dealers of the Complainant’s figurines and home decor, which it sells through its “www.demdaco.com” website and via third-party marketplace storefronts. The Complainant owns the following registered trademarks that are used to promote and sell the figurines: WILLOW TREE, United States Registration No. 2687795, registered on February 18, 2003 in International classes 20 and 24; WILLOW TREE, United States Registration No. 3572110, registered on February 10, 2009 in International class 28; and WILLOW TREE, United States Registration No. 3958583, registered on May 10, 2011 in International class 16. The Complainant also owns registered trademarks for WILLOW TREE in Canada and Australia and has pending trademarks in several other countries. The aforementioned trademarks will hereinafter collectively be referred to as the “WILLOW TREE Mark”. The Disputed Domain Name was registered on May 13, 2020 and resolved to a website offering for sale the WILLOW TREE figurines, among other similar items, although they were sold without authorization or permission of the Complainant. The Disputed Domain Name resolved to the Respondent’s online marketplace and was set up as a triangulation fraud scheme2 to defraud unsuspecting customers wishing to make a genuine purchase, but resulted in receiving a product that was fraudulently purchased from a retailer’s website using stolen payment details from previous customers.3 5. Parties’ Contentions A. Complainant The following are the Complainant’s contentions: - the Disputed Domain Name is confusingly similar to the Complainant’s trademark; - the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and, - the Disputed Domain Name was registered and is being used in bad faith. - The Disputed Domain Name was registered and is being used in bad faith as part of a triangulation scheme in which the Respondent sells items to unsuspecting customers using stolen credit cards of previous purchasers to pay for the goods. The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraphs 4(a)(i)-(iii)): (i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) The Disputed Domain Name was registered and is being used in bad faith. A. Identical or Confusingly Similar This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Name is confusingly similar to the WILLOW TREE Mark. It is uncontroverted that the Complainant has established rights in the WILLOW TREE Mark based on its years of use as well as its registered trademarks for the WILLOW TREE Mark in the United States and other jurisdictions worldwide. The general rule is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. See CWI, Inc. v. Domain Administrator c/o Dynadot,WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has rights in the WILLOW TREE Mark. The Disputed Domain Name consists of the entirety of the WILLOW TREE Mark followed by the dictionary term “figure”, and then followed by the generic Top-Level Domain (“gTLD”) “.com”. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of a descriptive or dictionary word or abbreviation. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo,WIPO Case No. D2011-0795; see also Hoffmann-La Roche, Inc. v. Wei-Chun Hsia,WIPO Case No. D2008-0923. As stated in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “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”. Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182. Thus, the Disputed Domain Name is confusingly similar to the Complainant’s WILLOW TREE Mark. Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant. B. Rights or Legitimate Interests Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name at issue. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1. In this case, the Panel finds that the Complainant has made out a prima facie case. In particular, the Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case and there is no evidence in the record that the Respondent is in any way associated with the Complainant. The Respondent is not an authorized distributor of the Complainant’s figurines nor is the Respondent an authorized licensee of the WILLOW TREE Mark. Moreover, the Complainant has not otherwise permitted the Respondent to use its WILLOW TREE Mark. There is also no evidence that the Respondent is commonly known by the Disputed Domain Name or by any name similar to it. Furthermore, the Respondent is using the Disputed Domain Name solely for the purpose of perpetrating a fraudulent scheme on unwitting Internet users. “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.” WIPO Overview 3.0, section 2.13.1. Given the blatant triangulation scheme the Respondent operated through the Disputed Domain Name’s resolving website, the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name, but rather is using the Disputed Domain Name for commercial gain with the intent to mislead by defrauding the Complainant’s consumers and stealing their personal and financial information. As such, the Panel determines that the Respondent does not have rights or legitimate interests in the Disputed Domain Name. Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant. C. Registered and Used in Bad Faith The Panel finds that based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy. As demonstrated above, the Respondent used the Disputed Domain Name to impersonate the Complainant and perpetrate a fraudulent scheme, a strong indication of bad faith. The Respondent’s scheme to offer for sale Complainant’s figurines to unsuspecting customers wishing to make a genuine purchase, but ended up receiving products that were fraudulently purchased from a retailer’s website using stolen credit cards from previous customers evidences a clear intent to disrupt the Complainant’s business, deceive individuals, and trade off the Complainant’s goodwill by creating an unauthorized association between the Respondent and the Complainant’s WILLOW TREE Mark. See Banco Bradesco S.A. v. Fernando Camacho Bohm,WIPO Case No. D2010-1552. Such conduct is emblematic of the Respondent’s bad faith registration and use of the Disputed Domain Name. Moreover, the registration of a domain name that is confusingly similar to a trademark by an entity that has no relationship to that mark may be sufficient evidence of opportunistic bad faith. See Ebay Inc. v. Wangming,WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163. Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant. 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 Lynda M. Braun 1 The Respondent appears to have used the name and contact details of a third party when registering the Disputed Domain Name. In light of the potential identity theft, the Panel has redacted the named Respondent’s name from this Decision. However, the Panel has attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the Disputed Domain Name, which includes the name of the named Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding and has indicated that Annex 1 to this Decision shall not be published due to the exceptional circumstances of this case. See ASOS plc. v. Name Redacted,WIPO Case No. D2017-1520. 2 A triangulation scheme is one in which three individuals play a role in the purchase of an order: 3 As of the writing of the decision, the Disputed Domain Name resolves to an inactive parking page.
Sole Panelist
Date: August 27, 2020
- An unsuspecting customer who places an order on an auction or marketplace using some form of credit, debit, or PayPal tender;
- A fraudulent seller who receives the order and then places the order for the actual product with a legitimate eCommerce website using a stolen credit card; and
- A legitimate eCommerce website that processes the criminal’s order.
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