The Complainant is Make Great Sales Limited, United States of America (“United States”), represented internally.
The Respondent is WhoIs Guard, Inc., Panama / Siddharth Bagga, India. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 17, 2021. On February 17, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 17, 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 24, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant did not amend its Complaint. On February 25, 2021, the Respondent sent an informal email communication to the Center to express its interest to transfer the disputed domain name. 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 April 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 5, 2021. The Respondent did not submit a formal response. On March 12, 2021 and April 21, 2021, the Respondent sent two email communications to reiterate its previous position to transfer the disputed domain name. Accordingly, on April 6, 2021 the Center informed the Parties that it would proceed to appoint a panel. The Center appointed Alistair Payne as the sole panelist in this matter on April 19, 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 The Complainant, based in the United States, commenced business in September 2020 and promotes and offers DANGOBUD wireless earbuds through its official website at “www.buydangobuds.com”. It owns German trade mark registration DE302020019498 for the DANGOBUDS mark which was registered on November 11, 2020. The Respondent based in India registered the disputed domain name on January 20, 2021. Prior to filing of the Complaint the disputed domain name resolved to a website offering DANGOBUD earbuds for sale. 5. Parties’ Contentions A. Complainant The Complainant submits that it owns a registered trade mark for its DANGOBUD mark as noted above. It says that other than the Top-Level Domain root “.xyz”, the disputed domain name wholly incorporates its DANGOBUDS mark and is identical to it. The Complainant says that the Respondent registered the disputed domain name on January 20, 2021, a few months after the Complainant registered the DANGOBUDS mark with the German Patent and Trademark Office and long after the Complainant began using the DANGOBUDS mark on September 11, 2020. It confirms that the Respondent is not a licensee of the Complainant and that the Respondent is not otherwise authorised to use the Complainant’s DANGOBUDS mark for any purpose. The Complainant says that as far as it is aware the Respondent is not commonly known as the disputed domain name and does not offer goods or services under it and has not made preparations to do so in connection with a bona fide offering of goods or services. In short, says the Complainant, there is no legitimate basis for the Respondent’s registration and use of the disputed domain name, including as it does an exact and unauthorised reproduction of the Complainant’s DANGOBUDS mark. As far as bad faith is concerned, the Complainant submits that the Respondent registered and is using the disputed domain name primarily to profit from and exploit the Complainant’s DANGOBUDS mark. It says that the Respondent is using the disputed domain name to misdirect Internet users to its own website and that Internet users encountering a domain name containing the Complainant’s DANGOBUDS trade mark, will believe that the corresponding website is the Complainant’s website or is otherwise authorised by or affiliated with the Complainant. Based on a comparison of the respective websites, it is apparent submits the Complainant, that the Respondent has been attempting to pass-off its goods as those of the Complainant under the DANGOBUDS mark. This, says the Complainant, amounts to the Respondent intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trade mark DANGOBUDS as to the source, sponsorship, affiliation, or endorsement of its website, or of a product on its website, in terms of paragraph 4(b)(iv) of the Policy. The bad faith allegations set out in the paragraphs above, combined with the Respondent’s lack of interest or rights in the disputed domain name leads to the inevitable conclusion, says the Complainant, that there are no plausible circumstances in which the Respondent could legitimately register or use the disputed domain name and therefore that the disputed domain name was registered and is being used by the Respondent in bad faith. B. Respondent The Respondent did not formally reply to the Complainant’s contentions. On February 25, 2021, the Respondent emailed the Center to express its interest to transfer the disputed domain name. On March 12, 2021 and April 21, 2021, the Respondent reiterated its previous position to transfer the disputed domain name. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant has demonstrated that it owns German trade mark registration DE302020019498 for the DANGOBUDS mark. The element of the disputed domain name before the “.xyz” Top-Level Domain root wholly incorporates and is identical to the Complainant’s trade mark registration. As a result, the Panel finds that the Complaint succeeds under this element of the Policy. B. Rights or Legitimate Interests The Complainant has confirmed that the Respondent is not a licensee of the Complainant and that the Respondent has not been authorised to use the Complainant’s DANGOBUDS mark for any purpose. The Complainant has confirmed that as far as it is aware the Respondent is not commonly known by the disputed domain name and does not offer goods or services under it and has not made preparations to do so in connection with a bona fide offering of goods or services. The Panel notes that the website at the disputed domain name appears to be very similar to the overall “look and feel” of the Complainant’s website and reproduces the very distinctive DANGOBUDS trade mark on the website. It is apparent that the Respondent is using the disputed domain name to try to pass-off its website and products as belonging to the Complainant, or as having an affiliation with the Complainant. This is not legitimate or bona fide conduct. 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 which case has not been rebutted by the Respondent. Accordingly, the Panel finds that the Complaint also succeeds under this element of the Policy. C. Registered and Used in Bad Faith The Respondent registered the disputed domain name on January 20, 2021, a few months after the Complainant registered the DANGOBUDS mark with the German Patent and Trademark Office and some time after the Complainant says that it began using the DANGOBUDS mark on September 11, 2020. The DANGOBUDS mark is highly distinctive. Also, considering the extremely high degree of similarity between the respective websites and the use on the website at the disputed domain name of the Complainant’s distinctive triangular device mark and the dual blue shaded representation of its DANGOBUDS mark that follows it, the Panel considers it highly likely that the Respondent was very well aware of the Complainant’s DANGOBUDS mark and business when it registered the disputed domain name. Under paragraph 4(b)(iv) of the Policy the use of the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to a 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 a website or location or of a product or service on the website amounts to evidence of registration and use in bad faith. This is exactly what the Respondent appears to be doing in this case. It has sought to use the disputed domain name incorporating the Complainant’s DANGOBUDS trade mark to divert Internet users to a website that ostensibly belongs to, or is authorised by, the Complainant and which looks extremely similar to the Complainant’s own website, using as it does the same word mark and a logo mark. As noted under Part B above, the Respondent appears to be trying to pass its website and products off as those of the Complainant in order to confuse or deceive Internet users that it has some association or affiliation with the Complainant’s business that it does not have and for its own commercial gain or purposes. The fact that the Respondent also used a privacy service to try to mask its identity only serves to reinforce the Panel’s view of the Respondent’s bad faith. The Panel therefore finds that the Respondent has both registered and used the disputed domain name in bad faith and that 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: April 23, 2021
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