The Complainant is Victoria Beckham, David Beckham, United Kingdom (“UK”), represented by Demys Limited, UK.
The Respondent is Contact Privacy Inc. Customer 1247653581/ Cynthia Panford, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 11, 2021. On June 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 15, 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 June 21, 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 June 21, 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 June 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 13, 2021. Having previously emailed the Center on June 21 and 22, 2021, the Respondent submitted a further, informal response on June 23, 2021. The Center appointed Warwick A. Rothnie as the sole panelist in this matter on August 12, 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 Complainants are wife and husband. The First Complainant, having previously achieved celebrity as a member of the Spice Girls pop group, is now a successful fashion designer and United Nations Global Goodwill Ambassador. The First Complainant started her “Victoria Beckham” fashion label in 2008 and a “diffusion label” in 2011. In 2011, the Victoria Beckham brand was named designer brand of the year in the UK and, according to an article in the Guardian included in the Complaint, again in 2014. In 2014, the First Complainant herself was named Entrepreneur of the Year in Management Today magazine’s list of Britain’s top 100 entrepreneurs. The First Complainant’s fashion products are promoted and offered for sale from the website to which The Complaint describes the Second Complainant as a former professional footballer who, amongst other things, was the first English football player to win league titles in four countries: England, Spain, the United States, and France. He is currently the president and co-owner of Inter Miami CF in the United States and Salford City Football Club in England. Since retiring from football in 2013, the Second Complainant has worked with world-leading fashion and lifestyle brands including Adidas, Diageo, H&M, L’Oreal, Tudor, and Sands. His Instagram account has 64 million followers. Amongst other things, the Second Complainant is the owner of two registered trademarks in the United States: (a) Registered Trademark No. 3,342,223, BECKHAM, in respect of a wide range of goods and services in International Classes 9, 16, 25 (which includes clothing), 28, and 41 which was filed on October 29, 2004 and registered on November 20, 2007; and (b) Registered Trademark No. 4,208,454, BECKHAM, in respect of goods in International Class 3 (which includes fragrances) which was filed on July 3, 2012 and registered on September 18, 2012. Both trademarks are registered in the Principal Register. The disputed domain name was registered on July 8, 2020. It resolves to a website offering for sale clothing, handbags, shoes and fashion accessories “at high discounted prices”. The website includes a title “BECKHAM® Official Online Boutique” and a prominent header BECKHAM in upper-case and a sans-serif font similar to the upper case sans-serif font used by the First Complainant in the prominent header for her website, VICTORIA BECKHAM. According to the Complaint (and not disputed by the Respondent) the products on offer from the Respondent’s website are not products made or offered by the First Complainant’s business or endorsed by the Second Complainant. The Complaint also states that clicking on the link on the website “Fragrances” took the browser to another website “www.genewus.com” which in addition to offering for sale fragrances offered other fashion items including a swimsuit range under the label “Victoria Beck”, which is not used by or associated with either of the Complainants. 5. Discussion and Findings Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainants must demonstrate each of the following: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants (or one of them) have rights; and 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. Consolidation of Complaints The Complainants have requested consolidation of their Complaints against the Respondent. Paragraph 3(c) of the Rules expressly permits a complaint to relate to more than one domain name where all the domain names are registered by the same domain name holder. In addition to this express provision, panels have frequently held that the Panel’s powers under paragraph 10(e) of the Rules may permit consolidation of multiple domain name disputes, subject to satisfaction of the other requirements of Policy and Rules. In particular, paragraph 10(b) of the Rules requires the Panel to ensure that all parties are treated equally and each is given a fair opportunity to present his, her or its case. Accordingly, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.1 outlines that: In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation. The foundation of both Complainants’ objections to the Respondent’s registration and use of the disputed domain name is their shared surname, BECKHAM, which has been registered by the Second Complainant as a trademark including in respect of clothing, fragrances and fashion accessories. It is also a prominent and important feature of the Second Complainant’s fashion brand. The Panel notes that the Respondent’s communications with the Center have objected to the communications from the Center on the grounds that they are harassment and disruptive. Requiring both Complainants to bring separate proceedings would only compound that aggravation, lead to unnecessary duplication and the risk of inconsistent decisions. In these circumstances, the Panel considers that consolidation is appropriate. B. Identical or Confusingly Similar The first element that the Complainants must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainants’ trademark rights. There are two parts to this inquiry: the Complainants must demonstrate that they (or one of them) has rights in a trademark at the date the Complaint was filed and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark. The Complainants rely on the Second Complainant’s registered trademarks for BECKHAM in the United States. The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. This test is narrower than and thus different to the question of “likelihood of confusion” under trademark law. Therefore, questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. See e.g., WIPO Overview 3.0, section 1.7. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top Level Domain (gTLD) component as a functional aspect of the domain name system. WIPO Overview 3.0, section 1.11. Disregarding the “.com” gTLD, the disputed domain name consists of the Second Complainant’s registered trademark and the prefix “us” which, as the Complainants contend can be readily understood as an initialism for “United States”. As this requirement under the Policy is essentially a standing requirement, the addition of such a geographical term does not preclude a finding of confusing similarity. See e.g., WIPO Overview 3.0, section 1.8. Apart from anything else, the Complainant’s trademark remains clearly recognisable both visually and aurally within the disputed domain name. Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademark and the requirement under the first limb of the Policy is satisfied. C. Rights or Legitimate Interests The second requirement the Complainants 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 Complainants. 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 usually sufficient for the Complainants 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. The ultimate burden of proof, however, remains with the Complainants. See e.g., WIPO Overview 3.0, section 2.1. The Complainants state that they have not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with either of them. The disputed domain name is plainly not derived from the Respondent’s name. Nor is there any suggestion of some other name by which the Respondent is commonly known from which the disputed domain name could be derived. Searches of the United States Patent and Trademark Office show that the Respondent does not hold any trademarks for the disputed domain name or from which the disputed domain name could be derived. According to the Complaint, the products being offered for sale from the Respondent’s website are not products of the First Complainant’s fashion label. Nor are they products which either of the Complainants have endorsed or are associated with. The disputed domain name was registered well after the Second Complainant’s trademarks were registered and also well after the First Respondent’s fashion label was launched and had gained widespread recognition in both the United Kingdom and the United States. The use of a confusingly similar domain in connection with competing or rival goods, therefore, does not qualify as use in good faith under the Policy. For completeness, the Complaint notes that the Respondent’s website does not properly disclose the relationship (or rather, non-relationship) with the Complainants. On the contrary, the exclusion of good faith is further reinforced by at least the title of the website “BECKHAM® Official Online Boutique”. First, the use of the symbol ® misrepresents that the operator of the website is the owner of, or associated with, the owner of the BECKHAM registered trademark. Similarly, the claim that it is the “official” online boutique misrepresents that the website is connected with the owner of the BECKHAM trademark or the “Beckham” fashion label. These matters, taken together, are sufficient to establish a prima facie case under the Policy that the Respondent has no rights or legitimate interests in the disputed domain name. In her informal Response, the Respondent claims entitlement to the disputed domain name on the basis that she has registered it. The Respondent further says that “I have given up the Beckham [presumably, domain name or website] but the usbeckham is not owned by the complainant”. The Panel is not aware what the Respondent is referring to when she says she has given up “the Beckham”. Insofar as the Respondent considers “usbeckham.com” does not conflict with the Complainants’ rights, however, that is wrong for the reasons set out in section 5.B. above. The fact that the Respondent has been able to register the disputed domain name does not give her indefeasible “title” to it. The registration (like all registrations in the “.com” gTLD) is subject to, amongst other things, the Policy and, under the general law, trademark rights. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also. D. Registered and Used in Bad Faith Under the third requirement of the Policy, the Complainants must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,WIPO Case No. D2010-0470. Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant. In the present case, the Panel accepts that both Complainants have achieved a high degree of celebrity and public recognition. The Panel also notes that the About Us page describes the Respondent in the following terms: “Co-owner Cynthia a mother and a wife spent most of her adult life between London, California, Georgia, New Jersey, New York and Pennsylvania. Inspired by her love for haute couture and her eager to merge her love of fashion and her entrepreneurial background, Cynthia set out to create a truly unique experience in luxury online shopping at affordable prices for every woman to look and feel their best self, every products from www.usbeckham.com is made to instill confidence in you.” [sic] It seems highly likely that the Respondent was aware of the Complainants and their trademark rights given: (a) the Respondent’s adult background particularly in London and California; Accordingly, the Panel finds that the Respondent registered the disputed domain name to use it in connection with the promotion and sale of fashion products in competition with the Complainants. In circumstances where the Panel has found that the Respondent does not have rights or legitimate interests in the disputed domain name, therefore, the Panel finds the Respondent has registered it in bad faith. The subsequent use of the disputed domain name in the manner indicated also constitutes use in bad faith under the Policy. Accordingly, the Complainant has established all three requirements under the Policy. 6. 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, Warwick A. Rothnie
(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.
(b) her love for haute couture;
(c) her name is not “Beckham”; and
(d) while “Beckham” is a surname, it has significance in connection with fashion products largely, if not only, because of its use in connection with fashion and clothing by the Complainants through their various business and promotional activities.
Sole Panelist
Date: August 26, 2021
Full & Egal Universal Law Academy