The Complainant is Mothers Polishes Waxes Cleaners Incorporated, United States of America (“United States” or “U.S.”), represented by Fulwider Patton LLP, United States.
The Respondent is WIS Inc., Cayman Islands, 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 30, 2020. On November 4, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 4, 2020, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on November 5, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 25, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 30, 2020. The Center appointed Jacques de Werra as the sole panelist in this matter on December 9, 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 owns U.S. trademark registration No. 5,244,680 for the mark MOTHERS SPEED CLAY 2.0 for use in connection with “hand operated cleaning instruments used for removing dirt, grit and other contaminates from the painted surface of automobiles, motorcycles, trucks and recreational vehicles” which was registered on July 18, 2017 (the “Trademark”). The Disputed Domain Name was registered on May 18, 2020. The Disputed Domain Name resolves to a “parked” page comprising pay-per-click (“PPC”) links including links related to car polish products and the text “domain sale click here to buy now!”). The Disputed Domain Name is for sale and the Respondent offered to sell it to the Complainant’s counsel for USD 9,929 on the basis of exchanges with the Respondent’s broker. 5. Parties’ Contentions A. Complainant The Complainant makes the following claims: The Complainant owns the Trademark for use in connection with “hand operated cleaning instruments used for removing dirt, grit and other contaminates from the painted surface of automobiles, motorcycles, trucks and recreational vehicles.” The Disputed Domain Name incorporates the Complainant’s Trademark and is confusingly similar to the Complainant’s Trademark. The Complainant claims that the Respondent does not appear to be a legitimate business and that it is not conducting any business because the Disputed Domain Name is for sale. The Complainant claims that the Respondent’s bad faith registration of the Disputed Domain Name is evidenced by the fact that it is not being used and is listed as being for sale and that the Respondent has offered to sell it to the Complainant for USD 9,929. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that the complainant must prove each of the following three elements in order to succeed in a UDRP proceeding: (i) the respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and The Panel is satisfied that the Complainant has rights to a trademark or service mark as reflected in the Trademark. A comparison between the Disputed Domain Name and the Trademark shows that the Disputed Domain Name is confusingly similar to the Trademark to the extent that it replicates the distinctive elements of the Trademark, i.e. “Mother Speed Clay” to which a descriptive term (i.e. “demo”) is added (i.e. As a result, based on the rights of the Complainant in the Trademark and on the confusing similarity between the Trademark and the Disputed Domain Name, the Panel finds that the condition of paragraph 4(a)(i) of the Policy is met. B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following: (i) before any notice to it of the dispute, the Respondent’s 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) the Respondent has been commonly known by the Disputed Domain Name, even if it has acquired no trademark or service mark rights; or (iii) the 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. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests, and once such prima facie case is made the burden of production shifts to the respondent to come forward with relevant evidence of rights or legitimate interests in the domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), section 2.1. In the Panel’s opinion, the Complainant has made a prima facie case against the Respondent. The Respondent indeed registered the Disputed Domain Name that reflects the distinctive elements of the Trademark owned by the Complainant without the authorization of the Complainant, in a way that can only reasonably be explained as a reference to the Complainant’s Trademark. The Panel further notes that the Respondent only uses it in connection with PPC links and offers it for sale. On this basis, the Panel considers that the Complainant has established prima facie that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that the Respondent has not established evidence of any rights or legitimate interests in the Disputed Domain Name. The Panel notes that it is established that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users, which is the case here. See WIPO Overview 3.0, section 2.9. As a result, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that the condition of paragraph 4(a)(ii) of the Policy is met. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of registration and use of a domain name in bad faith: (i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of the complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; (ii) circumstances indicating that the respondent registered the 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 the respondent has engaged in a pattern of such conduct; (iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location. The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Given that the scenarios described in UDRP paragraph 4(b) are non-exclusive and merely illustrative, even where a complainant may not be able to demonstrate the literal or verbatim application of one of the above scenarios, evidence demonstrating that a respondent seeks to take unfair advantage of, abuse, or otherwise engage in behavior detrimental to the complainant’s trademark would also satisfy the complainant’s burden. See WIPO Overview 3.0, section 3.1. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230. In this case, the Panel holds that the Respondent registered the Disputed Domain Name in bad faith because the Disputed Domain Name clearly targets the Complainant’s Trademark. Consequently, the choice of the Disputed Domain Name cannot be reasonably explained otherwise than as a reference to the Complainant’s Trademark. The Respondent has further used the Disputed Domain Name in connection with parked page comprising PPC links including links related to car polish products which corresponds to the Complainant’s products covered by the Trademark. The website at the Disputed Domain Name shows that it is available for sale. The Respondent has also offered the Disputed Domain Name for sale for USD 9,929 to the Complainant’s counsel via the Respondent’s broker. The Panel notes in this respect that a complainant can prove that a respondent has registered or acquired a domain name primarily to sell the domain name to the complainant (or its competitor) for valuable consideration in excess of the respondent’s costs related to the domain name by various ways. If circumstances indicate that the respondent’s intent in registering the disputed domain name was in fact to profit in some fashion from or otherwise exploit the complainant’s trademark, panels will find bad faith on the part of the respondent. See WIPO Overview 3.0, section 3.1.1. In this case, the Disputed Domain Name replicates the distinctive elements of the Trademark of the Complainant in a way that can only reasonably be explained by the Respondent’s intent in registering the Disputed Domain Name to profit in some fashion from or otherwise exploit the Complainant’s Trademark. The use of the Disputed Domain Name for a parked page comprising PPC links including links related to car polish products shows the intent of the Respondent to capitalize on the Complainant’s Trademark. On this basis, the Panel finds that the Respondent registered and uses the Disputed Domain Name in bad faith pursuant to paragraph 4(b) of the Policy, so that the conditions of paragraph 4(a)(iii) of the Policy are met. 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 Jacques de Werra
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the respondent’s domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Sole Panelist
Date: December 28, 2020
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