The Complainant is CCA and B, LLC, United States of America (“United States” or “U.S.”), represented by The Sladkus Law Group, United States.
The Respondent is Domain Administrator, Fundacion Privacy Services LTD, Panama. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 17, 2021. On May 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 18, 2021, 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 May 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 10, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 14, 2021. The Center appointed Tobias Malte Müller as the sole panelist in this matter on June 23, 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 is a family owned and operated publishing company, founded by Carol Aebersold with her daughters, Chanda Bell and Christa Pitts. In 2005, Aebersold and Bell co-authored a children’s book entitled “The Elf on the Shelf: A Christmas Tradition”. Since that time, the Complainant has continuously published, marketed, and sold this book alongside a line of Christmas elf dolls, and related products aimed at families with children. In the past years, the brand expanded its catalogue of titles amongst others with “The Elf on the Shelf: A Birthday Tradition” and the motion picture “An Elf’s Story”. Finally, the Complainant also offers licensed products using THE ELF ON THE SHELF brand, including personal care products, jewelry, and clothing. The Complaint is based, amongst others, on the following U.S. trademark: THE ELF ON THE SHELF, No 3533459, registered on November 18, 2008, for goods in classes 16 and 28. The disputed domain name was registered on December 11, 2020. It results from the Complainants’ documented allegations that no content is displayed on the website to which the disputed domain name resolves and on the Complainant’s information and belief the disputed domain name has never hosted an active website. Prior to filing the present UDRP Complaint, the Complainant attempted to contact the Respondent, its privacy service and the Registrar to notify them of the Complainant’s rights in the relevant trademarks and request voluntary transfer of the disputed domain name. All such correspondence was ignored by the Respondent. 5. Parties’ Contentions A. Complainant Firstly, the Complainant points out that the disputed domain name is confusingly similar to the registered mark THE ELF ON THE SHELF. The disputed domain name incorporates the substantial majority of the Complainant’s trademark, everything but the first “The”. Although the disputed domain name includes the additional term “ship” and the generic Top-Level Domain (“gTLD”) “.com”, the addition of these nondistinctive terms does not negate the confusing similarity of the disputed domain name to the Complainant’s registered marks. Secondly, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. In particular, the Complainant submits that it did not authorize Respondent to register the disputed domain name or otherwise use its registered mark THE ELF ON THE SHELF in any manner whatsoever. Moreover, the Complainant has no affiliation, association, or connection, past or present, with the Respondent. Further, on information and belief, the Respondent did not make any preparations to use the disputed domain name in connection with a bona fide offering of goods or services prior to receiving notice of this dispute. In fact, on information and belief the disputed domain name has never hosted an active website. Finally, the Respondent has also not been commonly known by the disputed domain name. Thirdly, the Complainant contends that the Respondent registered and uses the disputed domain name in bad faith. In the Complainant’s view, the disputed domain name improperly leverages the goodwill associated with the Complainant’s well-known registered trademarks to attract Internet users and divert them from Complainant’s own website and THE ELF ON THE SHELF goods. Under these circumstances, there is no conceivable good faith use of the Complainant’s marks or the disputed domain name by the Respondent. The Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. At the very least, the Respondent knew or should have known that the disputed domain name was either identical or confusingly similar to the Complainant’s internationally known and registered trademarks. Further factors supporting the finding of good faith are in the Complainant’s view: the Respondent concealing its identity, the disputed domain name is being passively held, and the Respondent did not respond to the Complainant’s communications sent before starting these UDRP proceedings. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 15(a) of the Rules instructs this Panel to “decide a 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”. Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in order to obtain an order that the disputed domain name should be transferred or cancelled: (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 respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. The Panel is satisfied that the registrant of record for the disputed domain name is the Respondent and will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied. A. Identical or Confusingly Similar Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must first of all establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to said mark. The Complainant is the registered owner of the registered U.S. trademark THE ELF ON THE SHELF No. 3533459, registered on November 18, 2008, for goods in classes 16 and 28. The disputed domain name almost entirely incorporates the THE ELF ON THE SHELF trademark, preceded by the term “ship” and the gTLD “.com”. As noted in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7, in cases where a domain name incorporates the entirety of a trademark, or at least 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 mark for the purposes of UDRP standing. The Panel finds that the dominant features of the trademark THE ELF ON THE SHELF is readily recognizable in the disputed domain name. Furthermore, the addition of the term “ship” to the trademark in the disputed domain name is insufficient to avoid a finding of confusing similarity under the first element of the UDRP. In fact, it is acknowledged amongst UDRP-panels that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element (see WIPO Overview 3.0, section 1.8). The Panel finds the trademark to constitute the dominant or principal component of the disputed domain name, while the mere addition of the descriptive term “ship” will rather be understood as indicating an online shop where goods can be ordered for shipping. The gTLD “.com” may be disregarded, as it is viewed as a standard registration requirement (see WIPO Overview 3.0, section 1.11.1). Hence, this Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s trademark THE ELF ON THE SHELF pursuant to the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests Pursuant to paragraph 4(a)(ii) of the Policy, the Complainants must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name. In the Panel’s view, based on the unrebutted allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name. No content is displayed on the website to which the disputed domain name resolves. Such use can neither be considered a bona fide offering of goods or services nor 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 in the sense of paragraph 4(c)(i) and (iii) of the Policy (see, e.g., Sanofi, Genzyme Corporation v. Domain Privacy,WIPO Case No. D2016-1193; Volkswagen AG v. Nowack Auto und Sport – Oliver Nowack,WIPO Case No. D2015-0070; Deutsche Lufthansa AG v. Mustermann Max, Muster AG,WIPO Case No. D2015-1320). In addition, the Respondent’s concealment of its identity behind a privacy service is also taken in consideration, and this Panel finds that it most likely that the Respondent selected the disputed domain name with the intention to take advantage of the Complainant’s registered trademarks THE ELF ON THE SHELF by registering a domain name consisting of that trademark’s dominant and distinctive features with the intent to attract Internet users for commercial gain. Finally, the Panel does not dispose of any elements that could lead the Panel to the conclusion that the Respondent is commonly known by the disputed domain name or that it has acquired trademark rights pursuant to paragraph 4(c)(ii) of the Policy. It is acknowledged that once the Panel finds such prima facie case is made, the burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence in this regard, this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant is therefore deemed to have satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Pursuant to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith. According to the Complainant’s undisputed allegations, the Respondent does not actively use the disputed domain name. With comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, prior UDRP panels have found that the apparent lack of active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith under the doctrine of passive holding (see Sanofi, Genzyme Corporation v. Domain Privacy,WIPO Case No. D2016-1193; Actelion Pharmaceuticals, Ltd v. Whois Agent, Whois Privacy Protection Service, Inc / Jean-Paul Clozel,WIPO Case No. D2016-0068; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). The Panel must therefore examine all the circumstances of the case to determine whether the Respondent is acting in bad faith. Factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark; (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use; (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement); and (iv) the implausibility of any good faith use to which the domain name may be put (see WIPO Overview 3.0, section 3.3 and Actelion Pharmaceuticals, Ltd v. Whois Agent, Whois Privacy Protection Service, Inc / Jean-Paul Clozel, supra). In the case at hand, the Panel finds that the Complainant did not submit substantial evidence in order to support the alleged reputation of the THE ELF ON THE SHELF trademark. Nevertheless, it is the view of this Panel the further circumstances surrounding the registration, i.e.: (i) the distinctiveness of the trademark THE ELF ON THE SHELF which has existed since 2008; (ii) the Respondent’s failure to reply to the Complainant’s cease-and-desist letter; (iii) the Respondent’s failure to respond to this Complaint; and (iv) the fact that the Respondent hides its identity behind a privacy shield. These above circumstances suggest that the Respondent was aware that it has no rights or legitimate interests in the disputed domain name, and that the disputed domain name has been registered and is being used in bad faith (see Actelion Pharmaceuticals, Ltd v. Whois Agent, Whois Privacy Protection Service, Inc / Jean-Paul Clozel, supra; America Online, Inc. v. Antonio R. Diaz,WIPO Case No. D2000-1460). In addition, due to these circumstances this Panel concludes that the Respondent knew or should have known the trademark THE ELF ON THE SHELF when it registered the disputed domain name, and that there is no plausible legitimate active use that the Respondent could make of the disputed domain name. In the light of the above, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant is therefore deemed to also have satisfied the third element, 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 Tobias Malte Müller
Sole Panelist
Date: July 7, 2021
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