The Complainant is Slickdeals, LLC, United States of America (“United States”), represented by Latham & Watkins LLP, United States.
The Respondent is Global Domain Privacy, Italy / Adeel Farooq, RevGlue Ltd, 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 January 27, 2021. On January 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 5, 2021, 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 February 5, 2021, 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 February 9, 2021. 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 February 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 3, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 4, 2021. The Center appointed Andrew F. Christie as the sole panelist in this matter on March 11, 2021. 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 Founded in 1999, the Complainant (and its predecessors in interest) offers Internet users a service that allows them to browse through countless online deals to save money when purchasing a wide variety of products. The Complainant offers these services primarily through its website at “www.slickdeals.net”, which has over nine million registered users, attracts upwards of 10 million unique visitors monthly, and has frequently been ranked as one of the top websites in the United States by various third parties, such as Alexa and Quantcast. In 2020, over 600,000 users from the United Kingdom visited the Complainant’s website. The Complainant owns numerous trademark registrations for the word trademark SLICKDEALS, including United States Trademark Registration No. 3416831 (registered on April 29, 2008). The disputed domain name was registered on August 8, 2018. The Complainant has provided a screenshot taken on January 15, 2021, showing that the disputed domain name resolved to a website purporting to be “Slick UK Deals” and offering a range of goods and services in a similar format to the Complainant’s website at “www.slickdeals.net”. The Complainant sent a cease and desist letter to the Respondent on December 20, 2018, with a follow up email on December 9, 2019, and another on March 16, 2020. The Respondent did not respond to these communications from the Complainant. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is confusingly similar to a trademark in which it has rights because: (i) the only difference between the disputed domain name and the Complainant’s word trademark SLICKDEALS is the insertion of “uk” into the middle of the disputed domain name; (ii) the insertion of the letters “uk” is all the more confusing as it references a geographic region in which the Complainant’s website is already accessible, i.e. the United Kingdom, and falsely suggests that the Respondent is an official United Kingdom dealer in the Complainant’s services, and that the Respondent offers these services from the United Kingdom; (iii) the Respondent is blatantly engaged in typosquatting by slightly altering the SLICKDEALS trademark to “slickukdeals”; and (iv) previous UDRP decisions have found that descriptive and geographical additions to a trademark in a domain name do not avoid a finding of confusing similarity. The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name because: (i) the Respondent never received the Complainant’s authorization, license, or permission to use the SLICKDEALS trademark or to register the disputed domain name, and it has no relationship with the Complainant; (ii) the SLICKDEALS trademark is a distinctive mark that is exclusively associated with the Complainant, and there is therefore no legitimate reason for the Respondent to use it in the disputed domain name; (iii) the Respondent’s only apparent use of the disputed domain name is to misleadingly confuse consumers and to trade off the Complainant’s SLICKDEALS trademark, all for the Respondent’s commercial gain, as the website resolving from the disputed domain name tracks the look and feel of the Complainant’s website resolving from “www.slickdeals.net”; (iv) the footer of the Respondent’s homepage on the website resolving from the disputed domain name identifies itself as “Slick Deals UK”, thus directly misleading consumers to think it is an authorized provider of the Complainant’s services in the UK; (v) the website resolving from the disputed domain name contains multiple advertisements for others’ products, and presumably the Respondent obtains payments for all the website traffic it generates for these companies and their underlying products/services, which is not a legitimate noncommerical use of the disputed domain name; and (vi) the website resolving from the disputed domain name is non-operational in several respects, which further demonstrates that the Respondent is not making any bona fide offering of goods and services. The Complainant contends that the disputed domain name was registered and is being used in bad faith because: (i) the Respondent knew or should have known about the Complainant’s SLICKDEALS trademark because it was properly registered with the United States Patent and Trademark Office (and trademark offices of numerous other countries), and has been extensively used by the Complainant throughout the world, thereby justifying the application of the legal concept of constructive notice; (ii) the Respondent clearly had actual knowledge of the Complainant’s SLICKDEALS trademark since it copied and used the “look and feel” of the Complainant’s website, and offers the same services on the website resolving from the disputed domain name; (iii) the Respondent was on actual notice of the Complainant’s trademark rights since at least December 20, 2018, as the Complainant sent the Respondent a cease and desist letter on that date, along with follow ups, to which the Respondent did not respond; (iv) since the disputed domain name incorporates wholesale the Complainant’s distinctive trademark, it can only sensibly refer to the Complainant; (v) the Respondent’s knowing violations of the Complainant’s trademark rights is per se a bad faith registration and use of the disputed domain name; and (vi) the Respondent is clearly using the disputed domain name in bad faith to attempt to attract consumers to its site for commercial gain, as evidenced by the fact that it uses the “look and feel” of the Complainant’s website and offers overlapping services with the Complainant’s, but then prominently advertises the competing services of others in an attempt to profit from the misdirection and siphoning away users interested in the Complainant’s services. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar Once the generic Top-Level Domain (“gTLD”) “.com” is ignored (which is appropriate in this case), the disputed domain name consists of the whole of the Complainant’s registered word trademark SLICKDEALS with the letters “uk” inserted between the words “slick” and “deals”. The Complainant’s word trademark SLICKDEALS is the dominant element of the disputed domain name. The addition of the letters “uk”, which Internet users are likely to read as being an initialism of “United Kingdom”, does not prevent a finding of confusing similarity of the disputed domain name with the Complainant’s word trademark. As provided in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests The Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorized by the Complainant to use its SLICKDEALS word trademark. The Respondent has not provided any evidence that it has been commonly known by, or has made a bona fide use of, the disputed domain name, or that it has, for any other reason, rights or legitimate interests in the disputed domain name. The evidence provided by the Complainant shows that the disputed domain name was used to resolve to a website at which was displayed various goods for sale. The Complainant asserted that this website “tracks the look and feel” of the Complainant’s website. It is not clear to the Panel what the Complainant means by “tracks the look and feel”. If by “tracks” the Complainant means what is asserted later in the Complaint, namely that the Respondent has “copied and used” the look and feel of the Complainant’s website, that assertion is not made out on the facts before the Panel. The screenshots of the two websites that were provided by the Complainant bear only the most rudimentary similarity, being a similarity common to most websites offering a multitude of goods for sale. The Respondent’s website has neither the same nor a substantially similar appearance to that of the Complainant’s website. Nevertheless, the fact remains that the website to which the disputed domain name resolves operates in a field of business that is the same as the field of business in which the Complainant operates under its trademark. Given the confusing similarity of the disputed domain name to the Complainant’s trademark, such a use of the disputed domain name is neither a bona fide use nor a legitimate noncommercial or fair use of the disputed domain name. The Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and the Respondent has not rebutted this. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith The disputed domain name was registered many years after the Complainant first registered its SLICKDEALS word trademark. It is highly unlikely that the Respondent registered the disputed domain name ignorant of the existence of the Complainant’s SLICKDEALS trademark, given that the Complainant’s trademark has been heavily used, that the disputed domain name consists of the Complainant’s trademark with merely the addition of the letters “uk”, and that the Respondent’s website operates in the same field of business as that of the Complainant. Furthermore, the evidence on the record provided by the Complainant indicates that the Respondent has used the disputed domain name to attract, for commercial gain, Internet users to a website by creating confusion in the minds of the public as to an association between the website and the Complainant. Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith. 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 Andrew F. Christie
Sole Panelist
Date: March 25, 2021
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