The Complainant is iDeal Of Sweden AB, Sweden, represented by Otmore Limited, Malta.
The Respondent is WHOIStrustee.com Limited, Registrant of idealofswedencase.com, United Kingdom / Blue Face, United States of America.
2. The Domain Name and RegistrarThe disputed domain names
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2021 relating to the Disputed Domain Name
On July 9, 2021 and August 5, 2021, the Complainant transmitted by emails to the Center a request to add the Disputed Domain Name
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 August 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 5, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 14, 2021.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on September 14, 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 BackgroundThe Complainant is a Sweden-based retailer selling various mobile phone cases and accessories across the world.
The Complainant is the owner of several trade mark registrations for the IDEAL OF SWEDEN trade mark in various jurisdictions, including, inter alia, IDEAL OF SWEDEN trade mark (Reg. No. 018036648) registered in the European Union on July 7, 2019; IDEAL OF SWEDEN trade mark (Reg. No. 00918036648) registered in the United Kingdom on July 19, 2019; and IDEAL OF SWEDEN international trade mark (Reg. No. 1490433) registered on August 16, 2019, and covering various countries including Australia, Canada, Japan, Singapore, Switzerland, Thailand, and Viet Nam.
The Respondent registered the Disputed Domain Name
The Complainant’s primary contentions can be summarised as follows:
(a) The Disputed Domain Names are confusingly similar to the Complainant’s IDEAL OF SWEDEN trade mark. The Disputed Domain Names incorporate the Complainant’s IDEAL OF SWEDEN trade mark in its entirety with the addition of the word “case” for the Disputed Domain Name
(b) The Respondent is not commonly known by the IDEAL OF SWEDEN trade mark and the Complainant has never authorised or given permission to the Respondent, who is not affiliated with the Complainant in any way, to use its IDEAL OF SWEDEN trade mark, therefore the Respondent has no rights or legitimate interest in the Disputed Domain Names; and
(c) The facts that the Respondent has registered the Disputed Domain Names primarily for the purpose of disrupting the Complainant’s business and to attract Internet users to its websites for commercial gain by creating a likelihood of confusion with the Complainant’s trade marks, and that the websites to which the Disputed Domain Names resolve is used by the Respondent to sell suspected counterfeit IDEAL OF SWEDEN products, support the assertion that the Respondent is acting in bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
The fact that the Respondent has not submitted a formal Response does not automatically result in a decision in favour of the Complainant. However, the Respondent’s failure to file a Response may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complaint as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies,WIPO Case No. D2009-1437, and Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403).
6. Discussion and FindingsUnder paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) the Disputed Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
(iii) the Disputed Domain Names have been registered and are being used by the Respondent in bad faith.
A. Identical or Confusingly SimilarThe Panel accepts that the Complainant has rights in the IDEAL OF SWEDEN trade mark, based on its various trade mark registrations, such as those mentioned above in the Factual Background.
It is well established that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the Top-Level Domain extension (“.com” and “.cc” in this case) may be disregarded. See section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Both Disputed Domain Names incorporate the Complainant’s IDEAL OF SWEDEN mark in its entirety, except that the word “case” has been added to the Disputed Domain Name
Therefore, the Panel agrees with the Complainant that the mere addition of the word “case” does not prevent a finding of confusing similarity between the Disputed Domain Name
The Panel therefore finds that the Disputed Domain Names are identical or confusingly similar to the Complainant’s IDEAL OF SWEDEN trade mark, and accordingly, paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate InterestsOnce a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent in a disputed domain name, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of the WIPO Overview 3.0.
The Panel accepts that the Complainant has not authorised the Respondent to use the IDEAL OF SWEDEN trade mark, and that there is no relationship between the Complainant and the Respondent which would otherwise entitle the Respondent to use the IDEAL OF SWEDEN trade mark. Accordingly, the Panel is of the view that a prima facie case has been established and it is for the Respondent to show rights or legitimate interests in the Disputed Domain Names. As the Respondent has not submitted a Response, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Names by demonstrating any of the following:
(1) before any notice to him of the dispute, the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Names or a name corresponding to the Disputed Domain Names was in connection with a bona fide offering of goods or services;
(2) the Respondent has been commonly known by the Disputed Domain Names, even if he has acquired no trade mark or service mark rights; or
(3) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
There is no evidence to suggest the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Names or a name corresponding to the Disputed Domain Names in connection with a bona fide offering of goods or services, since the Disputed Domain Names resolves to websites that sell suspected counterfeit IDEAL OF SWEDEN-branded products. The Panel agrees with the Complainants that such use of the Disputed Domain Names for selling suspected counterfeit IDEAL OF SWEDEN-branded products gives an impression that the Disputed Domain Names are associated with and/or endorsed by the Complainant and does not constitute a bona fide offering of goods and services. The lack of a disclaimer regarding the relationship (or lack thereof) between the Disputed Domain Names and the Complainant further supports an inference that the Respondent is not using the websites in a bona fide manner.
Similarly, the construction of the Disputed Domain Name
There is no evidence to demonstrate that the Respondent has trade mark rights corresponding to the Disputed Domain Names, or that it has become known by the Disputed Domain Names. Further, no evidence has been provided to suggest that the Disputed Domain Names have been used in connection with any legitimate noncommercial or fair use within the meaning of paragraph 4(c)(iii) of the Policy.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Names and the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithUDRP panels have consistently found that the mere registration of a domain name that is confusingly similar to a widely-known trade mark by an unaffiliated entity (particularly domain names which incorporate a mark plus a descriptive term) can already by itself create a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0.
The Complainant’s IDEAL OF SWEDEN trade mark appears to be fairly well-known. A quick Internet search shows that the top search results returned for “ideal of sweden” are the Complainant’s official website and social media sites, and several third party websites making references to the Complainant’s products and services. Therefore, taking this and the construction of the Disputed Domain Names into consideration, the Respondent must have been aware of the Complainant and its rights in the IDEAL OF SWEDEN trade mark when registering the Disputed Domain Names
In addition, the Panel finds that the following factors further support a finding that the Disputed Domain Names were registered and are being used by the Respondent in bad faith:
(i) The Respondent failed to respond to the Complainant’s contentions and has provided no evidence of any actual or contemplated good faith use by it of the Disputed Domain Names;
(ii) The Respondent failed to respond to the Complainant’s cease and desist letter sent on January 28, 2021;
(iii) It is difficult to conceive of any plausible use of the Disputed Domain Names that would amount to good faith use, given that the Disputed Domain Names are confusingly similar or identical to the Complainants’ IDEAL OF SWEDEN trade mark, and that the websites to which the Disputed Domain Names resolve are used to sell suspected counterfeit IDEAL OF SWEDEN-branded products; and
(iv) any use of the Disputed Domain Names would likely mislead Internet users into believing the Disputed Domain Names are associated with and/or endorsed by the Complainant, particularly given that the Disputed Domain Names are almost identical or identical to the Complainants’ IDEAL OF SWEDEN trade mark, and the websites to which the Disputed Domain Names resolve contain no disclaimer.
In the circumstances, the Panel finds that the Respondent registered and has been using the Disputed Domain Names in bad faith, and paragraph 4(a)(iii) of the Policy has been satisfied.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Names
Gabriela Kennedy
Sole Panelist
Date: September 28, 2021