The Complainant is Cyden Limited, United Kingdom, represented by UDL Intellectual Property, United Kingdom.
The Respondent is Jorge G Lopez Gonzalez, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name <5moothskin.com> is registered with GoDaddy.com, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 25, 2021. On March 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 26, 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 March 29, 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 amendment to the Complaint on March 30, 2021.
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 April 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 21, 2021. The Center received informal communications from the Respondent March 30, 2021, April 1 and 3, 2021, however the Respondent did not submit any formal response. Accordingly, the Center informed the Parties that it was proceeding to panel appointment on April 23, 2021.
The Center appointed John Swinson as the sole panelist in this matter on May 3, 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 sells hair removal products under the trademark SMOOTHSKIN. These products have been sold in the United States since 2016.
The Complainant owns United States trademark registration number 6264190 for SMOOTHSKIN. This registration was filed on February 5, 2020, has a registration date of February 9, 2021, and claims a priority date of August 8, 2019.
The Respondent did not file a formal Response, so little is known about the Respondent.
The disputed domain name was registered on April 8, 2020.
The website at the disputed domain name is an online store that sells a hair removal device that appears to be called a “Silky Slide” and which has the branding “FINISHINGTOUCH” on the device. The website also sells a blackhead remover. The website is branded as “Smooth Skin” in the banner heading.
The Respondent emailed the Center on April 3, 2021 stating: “Would you like to simply buy the domain and I close the store? I believe USD160K is fair. If not, changing all text from ‘Smooth Skin’ to ‘5mooth Skin’ can also be done.” 5. Parties’ Contentions A. Complainant
The Complainant made the following submissions in the Complaint: Identical or Confusingly Similar
The Complainant owns United States trademark registration number 6264190 for SMOOTHSKIN, referred to above. This registration was obtained as a result of demonstrating acquired distinctiveness to the United States Patent and Trademark Office (“USPTO”). Use began in the United States in 2016, and since that time, over 8000 units have been sold at a cost of USD 232 to USD 379 per unit.
The products are sold through various high-volume retail outlets in the United States such as Amazon.com, QVC.com, Groupon Goods and shopping clubs such as HauteLook.
SMOOTHSKIN products have been advertised across Internet platforms such as Facebook, Amazon and Google, in television advertising through QVC and through in-person marketing events.
The disputed domain name consists of the word “5moothskin”, where the first “S” of the Complainant’s trademark has been replaced with the number “5”. Depending on the specific font, this can be visually identical, or at least extremely similar, to the Complainant’s trademark.
The goods available on the Respondent’s website are identical and similar to the goods covered by the Complainant’s registration. Rights or Legitimate Interests
The Complainant makes the following three statements in respect of the second element:
Use by the Respondent of the disputed domain name on the associated website is not in connection with a bona fide offering of goods or services.
The Respondent has not been commonly known by the domain name prior to the registration of the domain name in April 2020.
The Respondent is not making legitimate noncommercial or fair use of the domain name, but rather is intent on commercial gain by misleadingly diverting consumers or to tarnish the trademark at issue.
Registered and Used in Bad Faith
The Complainant repeats the wording from paragraphs 4(b)(iii) and (iv) of the Policy. B. Respondent
The Respondent did not formally reply to the Complainant’s contentions but the Respondent sent several emails to the Center offering the disputed domain name for sale. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The onus of proving these elements is on the Complainant even though the Respondent failed to submit a Response.
Paragraph 15(a) of the Rules directs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable. A. Identical or Confusingly Similar
The Complainant has proven ownership of a registered trademark in the United States for SMOOTHSKIN.
The disputed domain name is confusingly similar to that trademark, disregarding the domain generic Top-Level Domain “.com”. The only difference is that the initial letter “S” is replaced with the number “5”.
It is well established from UDRP decisions more than 20 years old that where there is “typosquatting”, the domain name in question can be considered to be confusing similarly to the trademark (Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc.,WIPO Case No. D2001-1314; DaimlerChrysler Corporation v. Worshipping, Chrisler, and Chr, aka Dream Media and aka Peter Conover,WIPO Case No. D2000-1272; and Playboy Enterprises v. Movie Name Company,WIPO Case No. D2001-1201). The Panel considers this to be a clear case of typosquatting particularly because the Respondent’s website uses the term “smoothskin” without the number “5”.
In short, because the number “5” and the letter “S” look similar, the Panel finds that the disputed domain name and the Complainant’s trademark are confusingly similar.
The Complainant succeeds on the first element of paragraph 4(a) the Policy in relation to the disputed domain name. B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] 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] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] 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.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant.
Previous UDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case.
There is no evidence that the Respondent is commonly known by the disputed domain name. The Respondent’s products do not appear to be called SMOOTHSKIN or similar.
The Respondent is making a commercial use of the disputed domain name by using it for an online store to sell products that compete with the Complainant’s products.
The use of a complainant’s trademark to direct users to a competing site does not support a claim by a respondent to rights or legitimate interests in the disputed domain name.
In these circumstances, the Complainant has established a clear prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. The Respondent has not sought to rebut that prima facie case.
Accordingly, the Panel finds that the Complainant succeeds on the second element of paragraph 4(a) of the Policy in relation to the disputed domain name. C. Registered and Used in Bad Faith
As stated above, the Respondent is using the disputed domain name to direct Internet traffic to the Respondent’s online store which sells products that compete with the Complainant. However, the Respondent does not use the term “5moothskin” on that website. Rather, the Respondent uses the Complainant’s trademark SMOOTHSKIN as the banner heading of the website.
One inference that can be drawn from this conduct is that the Respondent selected the disputed domain name to trade off the reputation of the Complainant and to mislead Internet users into believing that they were visiting the Complainant’s online store when in fact they were not.
Furthermore, it is well settled that the practice of typosquatting constitutes an evidence of the bad faith registration of a domain name. See, Longs Drug Stores California, Inc. v. Shep Dog,WIPO Case No. D2004-1069 (finding typosquatting to be evidence of bad faith domain name registration); Lexar Media, Inc. v. Michael Huang,WIPO Case No. D2004-1039 (“Typosquatting has been held under the Policy to be evidence of bad faith registration of a domain name”); Wal-Mart Stores, Inc. v. Longo,WIPO Case No. D2004-0816 (“[typosquatting] is presumptive of registration in bad faith”).
The Respondent’s email to the Center, referred to in section 4 above, is also unhelpful to the Respondent.
Thus, it is reasonable for the Panel to conclude that the Respondent intentionally 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 of the website. This is an indicator of bad faith under paragraph 4(b)(iv) of the Policy.
The Complainant succeeds on the third element of paragraph 4(a) of the Policy in relation to the disputed domain name. 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 <5moothskin.com> be transferred to the Complainant.
John Swinson
Sole Panelist
Date: May 11, 2021
Full & Egal Universal Law Academy