Complainant is The White Company (U.K.) Limited, United Kingdom, represented by Dechert, United Kingdom.
Respondent is Carolina Rodrigues, Fundación Comercio Electrónico, 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 July 20, 2020. On July 20, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 21, 2020, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on July 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 12, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 13, 2020. The Center appointed Richard W. Page 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 Complainant is the owner of trademark rights in THE WHITE COMPANY Mark (the “Mark”). Complainant also owns a portfolio of registrations of the Mark, including without limitation: European Union Registration No. 2788578 (registered June 30, 2004); United Kingdom No. 2349982 (registered November 28, 2003); and USA No. 3029459 (registered January 21, 2005). Complainant has traded under the Mark since the company was established in the United Kingdom in 1994. Since its foundation, Complainant has been extremely successful and now operates an international, multi-channel business selling a variety of products under the Mark, including children’s clothing and toys, luxury clothing, footwear, homeware, home accessories, jewelry and cosmetics. Complainant has over 50 stores throughout the United Kingdom as well as stores throughout the United States of America (both standalone and in Nordstrom) and ships across the world, including Panama. The Disputed Domain Name was registered on March 2, 2020 and currently resolves to a pay-per click (PPC) site. 5. Parties’ Contentions A. Complainant Complainant contends that through its longstanding success operating under the Mark, it has developed substantial international reputation and goodwill in the Mark. During the 70 week period ending August 23, 2019, Complainant’s turnover was over GBP 273 million. Complainant maintains a website at “www.thewhitecompany.com”. Complainant’s further contends that its reputation is demonstrated by its industry recognition, having won multiple awards for its products and services, including being ranked within the Fast Track League Tables (published in the Sunday Times.) For example, in 2017 and 2016, Complainant ranked 132 and 136 respectively, within the Top Tack 250 (which ranks Britain’s private mid-market growth companies with the biggest sales) and in 2016 Complainant was also ranked at number 90 within the International Track 250 (which ranks Britain’s mid-market private companies with the fastest growing international sales.) In addition to Complaint’s industry recognition, Complainant asserts it has recently partnered with the global airline British Airways to provide luxury amenity kits and sleep wear to its Club World travelers on select flights to the United States. The CEO of British Airways described Complainant as a “quintessentially British brand renowned for quality and style”. There has been significant media coverage of Complainant’s success. Complainant further asserts that the Disputed Domain Name is confusingly similar to the Mark because it includes the entirety of the Mark with only the addition of an initial letter “r” and the generic Top-Level Domain (“gTLD”) suffix “.com”. Complainant asserts that this is simply a form of typosquatting, with the intention of attracting Complainant’s customers for commercial gain. See section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) regarding typosquatting with adjacent letters on a keyboard. Complainant alleges that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Disputed Domain Name was registered on March 2, 2020, around 26 years after Complainant’s business was founded and 18 years after the Mark was first registered. Complainant further alleges that, due to the reputation and international presence of Complainant, it is reasonable to assume that Respondent did not independently conceive of the name THE WHITE COMPANY and was aware of Complainant and its rights and reputation in the Mark at the time the Disputed Domain Name was registered. Complainant submits that Respondent chose the Disputed Domain Name specifically because it is confusingly similar to the Mark. Complainant’s primary submission is that Respondent chose the Disputed Domain Name because she knew: (i) that the Mark was well-known and associated with Complainant; (ii) that use of the Disputed Domain Name would create an association with Complainant’s business as a result of its similarity to the Mark: and (iii) that the Disputed Domain Name would act as a draw for traffic to her website. Additionally, Complainant submits that Respondent had constructive knowledge (should have known) of Complainant’s rights in the Mark which would have been revealed by a basic search of the words “The White Company” using any Internet search engine. Such constructive knowledge supports a finding that Respondent’s registration and use were not bona fide and in bad faith as used under the Policy. Complainant argues that there is no plausible reason why Respondent chose the Disputed Domain Name, other than to illegitimately trade off the Mark. The Disputed Domain Name appears to resolve to a website which contains various third-party pop-ups and which redirects online users to various third-party websites. Complaint further argues that these websites and pop-ups are fraudulent whether for phishing or for malware downloads. Complainant further argues that Respondent generates monetary revenue through this automatic redirecting of online users to third-parties and that this is not a legitimate use of the Disputed Domain Name. Complainant advises that its counsel sent a cease and desist letter to Respondent on June 4, 2020 in respect of the Disputed Domain Name. Counsel then sent a chaser to the letter on June 19, 2020. No response has been received. Complainant further advises that it has not licensed or otherwise permitted Respondent to use the Mark or to apply for a domain name incorporating the Mark. Respondent’s name does not include the Mark or anything similar and she is not commonly known by the Mark. Complainant alleges that Respondent’s purpose is to intentionally attract Internet users to her website for commercial gain through redirecting traffic to these third-party websites, which appear to be fraudulent websites. Complainant further alleges that this demonstrates that Respondent has registered and used the Disputed Domain Name in bad faith under paragraph 4(b)(iv) of the Policy. Complainant further alleges that typosquatting is also relevant to show Respondent’s bad faith. See, section 3.2.1 of the WIPO Overview 3.0. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.” Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met. See section 4.3 of the WIPO Overview 3.0. Paragraph 4(a) of the Policy directs that Complainant must prove each of the following: i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and, ii) that Respondent has no rights or legitimate interests in respect of 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 Complainant contends that it has numerous registrations of the Mark. Section 1.2.1 of the WIPO Overview 3.0 states that registration of a trademark is prima facie evidence of Complainant having enforceable rights in the Mark. Respondent has not contested the enforceability of the Mark for purposes of this proceeding. Complainant further contends that the Disputed Domain Name is identical with and confusingly similar to the Mark pursuant to paragraph 4(a)(i) of the Policy. Complainant further contends that the Disputed Domain Name is confusingly similar to the Mark because it includes the entirety of the Mark with only the addition of an initial letter “r” and the gTLD suffix “.com”. Complainant asserts that this is simply a form of typosquatting, with the intention of attracting Complainant’s customers for commercial gain. See section 1.9 of the WIPO Overview 3.0 regarding typosquatting with adjacent letters on a keyboard. See also sections 1.8 (inclusion of entire Mark) and 1.11.1 of the WIPO Overview 3.0 (disregard gTDL). The Panel finds that Complainant has satisfied the elements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Complainant contends that Respondent has no rights or legitimate interest in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy. Section 2.1 of the WIPO Overview 3.0 states that once Complainant makes a prima facie case in respect of the lack of rights or legitimate interests of Respondent, Respondent carries the burden of demonstrating it has rights or legitimate interests in the Disputed Domain Name. Where Respondent fails to do so, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. The Policy paragraph 4(c) allows three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the Disputed Domain Name: (i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or (ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Disputed Domain Name, even if you have acquired no trademark or service mark rights; or (iii) you [Respondent] are 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 Mark. Complainant alleges that Respondent had actual and constructive knowledge of Complainant’s rights in the Mark when she registered the Disputed Domain Name of March 2, 2020. Therefore, no use of the Disputed Domain Name can be bona fide. Complainant further advises that it has not licensed or otherwise permitted Respondent to use the Mark or to apply for a domain name incorporating the Mark. Respondent’s name does not include the Disputed Domain Name or anything similar and is not commonly known by the Disputed Domain Name. Complainant argues that there is no plausible reason why Respondent chose the Disputed Domain Name, other than to illegitimately trade off the Mark. The Disputed Domain Name appears to resolve to a website which contains various pay-per-clicks and which redirects Internet users to various third-party websites. Complaint further argues that these websites and pop-ups are fraudulent whether for phishing or for malware downloads. Complainant further argues that Respondent generates monetary revenue through this automatic redirecting of online users to third-parties and that this is not a legitimate use of the Disputed Domain Name. The Panel finds that Complainant has made a prima facie case in respect of the lack of rights or legitimate interests of Respondent. Respondent has not contested this prima facie case. Therefore, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of paragraph 4(a)(iii) of the Policy. Paragraph 4(b) of the Policy sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of the Disputed Domain Name: (i) circumstances indicating that you [Respondent] have registered or you have acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to Complainant who is the owner of the Mark or to a competitor of Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Disputed Domain Name; or (ii) you [Respondent] have registered the Disputed Domain Name in order to prevent the owner of the Mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) you [Respondent] have registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the Disputed Domain Name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the Mark as to the source, sponsorship, affiliation, or endorsement of your website. Complainant alleges that Respondent’s purpose is to intentionally attract Internet users to her website for commercial gain through redirecting traffic to these third-party websites, which appear to be fraudulent websites. Complainant further alleges that this demonstrates that Respondent has registered and used the Disputed Domain Name in bad faith under paragraph 4(b)(iv) of the Policy. Respondent has not responded to any of Complainant’s allegations. Therefore, the Panel finds that Complainant has proven the necessary elements of paragraph 4(b)(iv) and 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 Richard W. Page
Sole Panelist
Date: September 4, 2020
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