The Complainant is Sugar Walls LLC, United States of America (“United States”), represented internally.
The Respondent is Perfect Privacy LLC, United States, / Milen Radumilo, Romania. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 1, 2020. On October 1, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 7, 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 October 7, 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 amendment to the Complaint on October 7, 2020. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on October 9, 2020. The Center verified that the Complaint together with the amendment to the Complaint and 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 October 12, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 1, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 2, 2020. The Center appointed Alistair Payne as the sole panelist in this matter on November 5, 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. On November 10, 2020, the Panel issued the following Administrative Panel Procedural Order: “The Panel has reviewed the submissions from the Parties in this case. Pursuant to paragraphs 10 and 12 of the UDRP Rules, the Panel issues the following order: The Panel notes that Complainant seeks to rely upon common law rights in the name or mark SUGARWALLTSHIRTS. Section 1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (‘WIPO Overview 3.0’) at ‘https://www.wipo.int/amc/en/domains/search/overview3.0/#item13’ sets out the kind of evidence required under the Policy in order to assert unregistered or common law trade mark rights. The Panel directs the Complainant to file appropriate evidence in support of this element of its Complaint by November 16, 2020. The Respondent may file submissions or evidence in reply by November 23, 2020 but these must be strictly limited to commenting on the evidence filed by the Complainant following this Panel Procedural Order. The Panel hereby extends the due decision date to November 30, 2020.” On November 16, 2020, the Complainant filed a supplementary submission. No reply was received from the Respondent by November 23, 2020. 4. Factual Background The Complainant is an online company that sells privately branded apparel, merchandise, and memberships to various online social media communities. It has offered these good and services online since 2015 under the disputed domain name. The disputed domain name was owned by the Complainant and was first registered in June of 2015 with Google Domains and set to auto renew annually as it has done since its initial registration. For some reason this did not occur in June 2020 due to communications problems involving the registrar and the Complainant’s ISP and subsequently lapsed. The Respondent registered the disputed domain name on August 31, 2020. The disputed domain name now points to various website redirect pop up pages that require Internet users to download malware disguised as security software in order to reach the Complainant’s website. 5. Parties’ Contentions A. Complainant The Complainant has submitted evidence of its use of the disputed domain name since January 2016 for the promotion and sale of its t-shirt, clothing and novelty products. The Complainant states that it has made extensive use of the disputed domain name and of the name or mark “Sugar Walls” or “Sugar Walls T- Shirts” in international and interstate commerce in relation to its t-shirt and clothing products and certain novelty items such that it enjoys protectable common law rights in these names or marks in the United States. It says that it continues to make, a substantial investment of time, effort, and expense in the promotion of its online business at the disputed domain name The Complainant says that there is no evidence that the Respondent has made a prior 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. It says further that there is no evidence that the Respondent has ever been commonly known by the name or disputed domain name and is in no way affiliated with the Complainant and has no current or previous relationship with the Complainant and has not acquired any trade mark or service mark rights. In addition, it says that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain. The Complainant asserts that the Respondent is using the disputed domain name in an attempt to induce the Complainant’s current and returning customers and website visitors to download malware and for commercial gain. This says the Complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. As far as bad faith is concerned, the Complainant argues that the Respondent is disrupting its business. The website that the disputed domain name formerly resolved to was used by the Complainant for online commerce including the sale of apparel, goods and services. However, now under the Respondent’s control, the Complainant says that new visitors or returning visitors to the website are transferred to several websites through pop-up windows that induce its current customers, returning customers, and new website visitors to download malware disguised as security software in order to reach the website at the disputed domain name. The Complainant submits that using the disputed domain name to induce Internet users to download malware is overt evidence of bad faith. In addition the Complainant says that exploiting the reputation of a trade mark to obtain click-through commissions or other commercial revenue, such as a result of sponsored links from the diversion of Internet users is a common example of use in bad faith under paragraph 4(b)(iv) of the Policy. Finally, further indications of the Respondent’s bad faith, according to the Complainant, are that the Respondent has used a privacy or proxy service to attempt to mask its identity and has also provided false or incomplete contact information. The Complainant also notes that the Respondent has been involved as a respondent in 80 other domain name complaints in which UDRP panels have found bad faith and therefore has engaged in a pattern of such conduct. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar A finding of unregistered common law trade mark rights is possible under the Policy in the absence of registered trade mark rights, such as in this case. The Panel finds that the Complainant’s “Sugar Walls T-Shirts” name or mark has a high degree of inherent distinctiveness. The Complainant has submitted evidence of its use of the disputed domain name incorporating this mark since January 2016 for the promotion and sale of its t-shirt, clothing and novelty products under the “Sugar Walls T- Shirts” name or mark. This includes details of its use of the “Sugar Walls T-Shirts” name or mark on websites, through search engines and on social media in relation to its products, which appear to be largely aimed at a United States based audience. The Panel finds that there is just enough evidence here to support a finding that it is more likely than not that the Complainant owns common law rights in the “Sugar Walls T-Shirts” in the United States for the purposes of this element of the Policy. The Panel notes that a finding of common law rights was made in quite similar circumstances in IDR Solutions ltd v. Whois Privacy Corp., WIPO Case No. D2016-2156. As the disputed domain name wholly incorporates the Complainant’s “Sugar Walls T-Shirts” mark, with the exception of the hyphen, the Panel finds that the “Sugar Walls T-Shirts” mark is confusingly similar to the disputed domain name. As a result, the Complaint succeeds under this element of the Policy. B. Rights or Legitimate Interests The Complainant has submitted that there is no evidence that the Respondent has made a prior 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. It has also asserted that there is no evidence that the Respondent has ever been commonly known by the name or disputed domain name and it confirms that the Respondent has no affiliation or current or previous relationship with the Complainant and has not acquired any trade mark or service mark rights in the disputed domain name. The Complainant has also submitted that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain. Rather, it says that the Respondent is using the disputed domain name in an attempt to induce the Complainant’s current and returning customers and website visitors to download malware for commercial gain. This says the Complainant is not a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name. The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. This prima facie case has not been rebutted by the Respondent and as a result, and also for the reasons set out under Part C below, the Complaint succeeds under this element of the Policy. C. Registered and Used in Bad Faith The disputed domain name appears to have been registered opportunistically by the Respondent on August 31, 2020, following the lapse of its registration by the Complainant. The Panel finds that the disputed domain name is very distinctive. At the date of filing the disputed domain name still resolved to the Complainant’s website but via a pop-up screen, which according to the Complainant causes Internet users to download malware. In these circumstances it seems to the Panel more likely than not that the Respondent was aware of the Complainant’s online business when it registered the disputed domain name and knowingly did so in bad faith. The Complainant asserts that the Respondent’s conduct is disrupting its business. The website that the disputed domain name formerly resolved to was used for online commerce including the sale of apparel, goods and services. However, now under the Respondent’s control, the Complainant says that new visitors or returning visitors to the website are transferred to several websites through pop-up windows that induce its current customers, returning customers, and new website visitors, to download malware disguised as security software in order to reach the website at the disputed domain name. The Panel agrees with the Complainant that using the disputed domain name to induce Internet users to download malware is overt evidence of bad faith even if Internet users do ultimately arrive at the Complainant’s website. The fact that the Respondent has not sought to explain its conduct or to respond to the Complaint and in addition that it has been involved as a respondent in 84 UDRP cases (all transfers) only reinforces the likelihood that it has acted in bad faith in this instance. It appears to the Panel that the Respondent has opportunistically sought to register the disputed domain name following its lapse in order to prevent the Complainant from registering it and to use it for its own purposes in re-directing Internet users through diversion screens. Considering that the Complainant has been involved in numerous previous UDRP cases in which it has been found to have acted in bad faith, this fulfills the requirements of paragraph 4(b)(iii) of the Policy and is evidence of registration and use of the disputed domain name in bad faith. That the Respondent has used a privacy or proxy service to attempt to mask its identity further reinforces an inference of bad faith. For these reasons the Panel finds that the Respondent has both registered and used the disputed domain name in bad faith and the Complaint succeeds under this element 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 Alistair Payne
Sole Panelist
Date: November 26, 2020
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