The Complainant is Kurt Geiger Limited, United Kingdom, represented by The GigaLaw, Douglas M. Isenberg, Attorney at Law, LLC, United States of America (“United States”).
The Respondent is Domain Admin, Whoisprotection.cc., Malaysia / Awen Lloyc, United Kingdom. 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 2, 2020. On October 5, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 16, 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 16, 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 19, 2020. The Center verified that the Complaint together with the amendment to 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 October 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 9, 2020. On October 21, 2020, and October 26, 2020, the Center received informal communications from a third party who appeared to have received the Center’s Written Notice at its physical address. The Respondent did not submit any response. On November 11, 2020, the Center notified the Parties that it would proceed to appoint the Administrative Panel. The Center appointed Jane Seager as the sole panelist in this matter on December 1, 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 Established in the United Kingdom in 1963, the Complainant is a footwear brand and retailer. The Complainant sells its footwear and related products via numerous stores in the United Kingdom and internationally, and maintains a network of wholesale partners. The Complainant owns the domain name For use in connection with the Complainant’s footwear, related products, and retail services, the Complainant has registered a number of trademarks for KURT GEIGER, including the following: - Danish Trademark Registration No. VR199001984, KURT GEIGER, registered on March 30, 1990; - United Kingdom Trademark Registration No. UK00001481898, KURT GEIGER, registered on November 13, 1992; - European Union Trademark Registration No. 001996511, KURT GEIGER, registered on March 20, 2002; and - United States Trademark Registration No. 3554312, KURT GEIGER, registered on December 30, 2008. The disputed domain name was registered using a privacy service on August 28, 2020. The disputed domain name resolves to a website titled “KURT GEIGER”, purporting to offer shoes and bags for sale at significantly discounted prices (the “Respondent’s website”). The footer of the Respondent’s website reads “KURT GEIGER © 2020. All Rights Reserved.” The Respondent’s website features a similar color scheme, layout, and contents to the Complainant’s official website available at “www.kurtgeiger.com”. 5. Parties’ Contentions A. Complainant The Complainant asserts rights in the KURT GEIGER trademark. The Complainant submits that the disputed domain name is confusingly similar to its KURT GEIGER trademark. The Complainant submits that the element “Kurt G” is an obvious abbreviation of the KURT GEIGER trademark, and that the word “shop” does not eliminate the confusing similarity between the disputed domain name and the Complainant’s trademark. The Complainant further submits that the contents of the Respondent’s website are evidence that the disputed domain name is confusingly similar to the Complainant’s KURT GEIGER trademark, as it confirms that the Respondent registered the disputed domain name targeting the Complainant’s trademark. The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant asserts that it has never granted any licence or other authorization for the Respondent to make use of the Complainant’s KURT GEIGER trademark in any manner. The Complainant submits that the Respondent is using the disputed domain name in connection with a website that falsely appears to be a website for the Complainant and offers for sale designer footwear and accessories under the Complainant’s KURT GEIGER trademark, without permission or consent from the Complainant. The Complainant therefore submits that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy. The Complainant asserts that the Respondent is not commonly known by the disputed domain name in accordance with paragraph 4(c)(ii) of the Policy, nor is the Respondent making any legitimate noncommercial use of the disputed domain name, pursuant to paragraph 4(c)(iii) of the Policy. The Complainant submits that the Respondent registered and is using the disputed domain name in bad faith. The Complainant notes that its KURT GEIGER trademark has been registered for 30 years, and is protected in jurisdictions throughout the world. The Complainant asserts that it is implausible that the Respondent was unaware of the Complainant when it registered the disputed domain name. The Complainant argues that because the disputed domain name is so obviously connected with the Complainant, the Respondent’s actions suggest opportunistic bad faith. The Complainant submits that by using the disputed domain name, the Respondent has attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The Complainant submits that the Respondent’s website is likely to be fraudulent, indicating an intent to deceive, or at a minimum, act in bad faith with the intent for commercial gain. The Complainant requests transfer of the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In order to prevail, the Complainant is required to demonstrate, on the balance of probabilities, that it has satisfied the requirements of paragraph 4(a) of the Policy, namely: (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 the disputed domain name; and (ii) the disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel finds that the Complainant has established rights in the KURT GEIGER trademark, the registration details of which are provided in the factual background section above. The disputed domain name comprises the “kurt” element of the Complainant’s trademark, while the element “geiger” is simply shortened to the letter “g”, together with the descriptive word “shop”. As stated in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7, where a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that trademark for purposes of standing under the Policy. The Panel finds that the abbreviation of the Complainant’s KURT GEIGER trademark to “kurtg” as the leading element of the disputed domain name, together with the descriptive word “shop” does not prevent a finding of confusing similarity, as sufficient elements of the Complainant’s trademark are recognizable in the disputed domain name. See Lennar Pacific Properties Management, Inc., CalAtlantic Title, Inc. v. Contact Privacy Inc. Customer 1245361062 / JSL LLC,WIPO Case No. D2019-2256: “The Domain Name [ While the content of a website is usually disregarded by UDRP panels when assessing confusing similarity under the first element, it is immediately apparent when viewing the contents of the Respondent’s website that the Respondent has sought to target the Complainant’s KURT GEIGER trademark through the disputed domain name; see WIPO Overview 3.0, section 1.15. The Panel finds the disputed domain name to be confusingly similar to the Complainant’s trademark. The Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out 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; see WIPO Overview 3.0, section 2.1. The Panel finds there to be no evidence of any licence or other authorization for the Respondent to make use of the Complainant’s trademark, in the disputed domain name or otherwise. As noted above, the disputed domain name resolves to a website that purports to offer shoes and bags for sale at significantly discounted prices. The footer of the Respondent’s website reads “KURT GEIGER © 2020. All Rights Reserved.” The Respondent’s website features a similar color scheme, layout, and contents to the Complainant’s official website available at “www.kurtgeiger.com”. Prior UDRP panels have recognized that resellers using a domain name containing a complainant’s trademark to undertake sales of the complainant’s goods or services may be making a bona fide offering of goods or services, and thus have a legitimate interest in such a domain name. Whether this is the case is often determined by applying the cumulative criteria, as set out in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 (the “Oki Data criteria”), namely: - the respondent must actually be offering the goods or services at issue; - the respondent must use the website to sell only the trademarked goods or services; - the website must accurately and prominently disclose the registrant’s relationship with the trademark holder; and - the respondent must not try to “corner the market” in domain names that reflect the trademark. The Panel notes that the Respondent’s website appears to be offering goods for sale at prices that are substantially below their market value. In addition, the Respondent appears to have misappropriated copyrighted images from the Complainant’s official website. There is also evidence that the Respondent provided false WhoIs information for the disputed domain name. Such factors would tend to suggest that the Respondent is not making a genuine offering of goods or services via the website at the disputed domain name; see WIPO Overview 3.0, section 2.13.2. Even if the Panel takes the view that the offering of goods for sale via the Respondent’s website is in fact genuine in nature, the Respondent’s website does not accurately disclose its (lack of) relationship with the Complainant. Rather, it is apparent that the Respondent has sought to create a misleading impression of association with the Complainant, by creating a website that prominently displays the Complainant’s trademark, while copying the graphics, color scheme, layout, and even making use of the same favicon used by the Complainant for its official website at “www.kurtgeiger.com”. The Respondent’s website does not contain any comprehensive information about the owner of the website, and the inclusion of the text “KURT GEIGER © 2020. All Rights Reserved” in the footer of the Respondent’s website only serves to reinforce the confusion. In light of the above, the Panel finds that the Respondent is not making use of the disputed domain name in connection with a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy. The disputed domain name was registered using a privacy service, and the underlying registrant is listed as “Awen Lloyc”, which bears no resemblance to the disputed domain name whatsoever. The Respondent has not come forward with any evidence of having obtained any trademark rights in “Kurt G Shop”, or any variation thereof, as reflected in the disputed domain name. The Respondent’s use of the disputed domain name as described above does not support a legitimate claim of being commonly known by the disputed domain name. The Panel finds that the Respondent is not commonly known by the disputed domain name pursuant to paragraph 4(c)(ii) of the Policy. The Respondent’s use of the disputed domain name is clearly intended to be commercial in nature, and does not amount to legitimate noncommercial or fair use, as contemplated by paragraph 4(c)(iii) of the Policy. The Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not come forward with evidence to rebut the Complainant’s case. The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Complainant’s KURT GEIGER trademark registrations substantially predate the Respondent’s registration of the disputed domain name on August 28, 2020. It is clear from the contents of the Respondent’s website that the Respondent was well aware of the Complainant and its rights in the KURT GEIGER trademark at the time that the Respondent registered the disputed domain name. The Panel finds that the Respondent registered the disputed domain name, having no authorization to make use of the Complainant’s trademark in a domain name or otherwise, in order to create a misleading impression of association between the disputed domain name and the Complainant, in bad faith. As described above, the disputed domain name is being used in connection with a website that gives a strong impression of being an online store, operated or authorized by the Complainant. The Panel finds that by using the disputed domain name in such a manner, the Respondent has attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s KURT GEIGER trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and the products offered for sale therein, in bad faith pursuant to paragraph 4(b)(iv) of the Policy. The Panel further finds that the registration of the disputed domain name using a privacy service, as well as the provision of what appear to be false underlying registrant details, amount to further evidence of the Respondent’s bad faith. The Panel finds that the disputed domain name was registered and is being used in bad faith. The Complainant has satisfied the requirements of 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 Jane Seager
Sole Panelist
Date: December 15, 2020
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