Complainant is Smartmockups s.r.o., Czech Republic, represented by SafeNames Ltd., United Kingdom.
Respondent is Registration Private, Domains By Proxy, LLC, United States of America / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2021. On August 3, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 4, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on August 5, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amended Complaint. Complainant filed an amended Complaint on August 9, 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 Respondent of the Complaint, and the proceedings commenced on August 9, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 29, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 30, 2021.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on September 6, 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 BackgroundComplainant, Smartmockups s.r.o., is a graphic design platform founded in 2016 by Lukáš Zajíc and Andrew Nekvinda. Complainant has over 550,000 monthly users, and in 2020, over three million “mock-ups” have been created by Internet users. Complainant exclusively operates globally online from the website “www.smartmockups.com”. In February 2021, Complainant was acquired by Canva Pty Ltd, a globally used online graphic design platform. The Canva platform receives over 200 million visits a month, over 30 million active users in 190 countries.
To date, Complainant holds several registered trademarks for SMARTMOCKUPS, including:
Mexico Trademark Registration No. 2189106, registered on December 15, 2020;
Australian Trademark Registration No. 2123578 registered on September 25, 2021; and
European Union Trademark Registration No. 018313309 registered on February 27, 2021.
Complainant further utilises the SMARTMOCKUPS mark as part of its brand logo, which is also registered as a trademark across various jurisdictions. Furthermore, third-party websites consistently include Complainant as among the best options for creating design mock-ups. As a result, the SMARTMOCKUPS brand and mark is well-known in the graphic design industry, where designers can present their designs on various images of products.
Complainant has an established social media presence and uses the SMARTMOCKUPS mark to promote its services under this mark, for example, on:
- Facebook: “www.facebook.com/smartmockups/”;
- Twitter: “www.twitter.com/smartmockups”;
- Instagram: “www.instagram.com/smartmockups”;
- YouTube: “www.youtube.com/channel/UCGldkJ1Ua1TdaTLZJ9plVHQ”.
The Domain Name was registered on April 23, 2021. The website resolves to a webpage that features pay-per-click (“PPC”) redirecting to third party websites, for example: “Website Design”, “Wireframe Design”, “Website Wireframe”, “Web Design”, “Mockup Website”, and “Wireframe Tool.” Moreover, some of the PPC links hosted on the website redirect users to the websites of third-party businesses, offering services which appear to be in competition to those offered by Complainant. Respondent has also listed the Domain Name for sale on domain aftermarket website “www.afternic.com” for the price of USD 999.
Complainant’s representatives sent a cease and desist letter to Respondent on June 4, 2021. This letter was written and sent in order to put Respondent on notice of Complainant’s trademarks and rights and with a view to resolving the matter amicably. Respondent did not respond.
5. Parties’ Contentions A. ComplainantComplainant contends that (i) the Domain Name is identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the Domain Name; and (iii) Respondent registered and is using the Domain Name in bad faith.
In particular, Complainant contends that it has trademark registrations for the SMARTMOCKUPS marks and owns domain names incorporating the SMARTMOCKUPS marks. Complainant contends that Respondent registered and is using the Domain Name to confuse Internet users looking for bona fide and well-known SMARTMOCKUPS products and services.
Complainant notes that it has no affiliation with Respondent, nor authorized Respondent to register or use a domain name, which includes Complainant’s marks, and that Respondent has no rights or legitimate interests in the registration and use of the Domain Name. Rather, Complainant contends that Respondent has acted in bad faith in acquiring and setting up the Domain Name, when Respondent clearly knew of Complainant’s rights.
B. RespondentRespondent did not reply to Complainant’s contentions.
6. Discussion and FindingsUnder paragraph 4(a) of the Policy, to succeed, Complainant must satisfy the Panel that:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name was registered and is being used in bad faith.
Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states: Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding? Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed: a respondent’s default is not necessarily an admission that the complainant’s claims are true.”
Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340.
A. Identical or Confusingly SimilarOwnership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See WIPO Overview 3.0, section 1.2.1. Complainant provided evidence of its rights in the SMARTMOCKUPS marks (which have been registered since September 2020, before registration of the Domain Name on April 23, 2021, as noted above). Complainant has also owned numerous domain names, which includes the SMARKMOCKUPS mark. Complainant has also submitted evidence, which supports that the SMARTMOCKUPS marks are widely known trademarks and a distinctive identifier of Complainant’s products and services. Complainant has therefore proven that it has the requisite rights in the SMARTMOCKUPS marks.
With Complainant’s rights in the SMARTMOCKUPS marks established, the remaining question under the first element of the Policy is whether the Domain Name, typically disregarding the Top-Level Domain (“TLD”) in which it is registered (in this case, “.com”), is identical or confusingly similar to Complainant’s mark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2010-0842.
Here, the Domain Name is confusingly similar to Complainant’s SMARTMOCKUPS mark. The SMARTMOCKUPS mark is recognizable in the Domain Name. The SMARTMOCKUPS mark is entirely reproduced with the absence of the letter “r” between the letter “a” and the letter “m”. This absence (creating a typo) does not prevent a finding of confusing similarity between Complainant’s SMARTMOCKUPS trademark and the Domain Name registered by Respondent.
Thus, the Panel finds that Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate InterestsUnder paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a respondent possesses no rights or legitimate interests in a Domain Name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once a complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
From the record in this case, it is evident that Respondent was, and is, aware of Complainant and the SMARTMOCKUPS marks, and does not have any rights or legitimate interests in the Domain Name. Complainant has confirmed that Respondent is not affiliated with Complainant, or otherwise authorized or licensed to use the SMARTMOCKUPS trademarks or to seek registration of any Domain Name incorporating the trademarks. Respondent is also not known to be associated with or commonly known by the SMARTMOCKUPS marks.
In addition, Respondent has not used the Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant provided evidence that the Domain Name resolves to a webpage that features PPC links redirecting to third party websites, offering services, which appear to be in competition to those offered by Complainant. Respondent has also listed the Domain Name for sale on domain aftermarket website “www.afternic.com”, for the price of USD 999. Such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Domain Name and cannot under the circumstances confer on Respondent any rights or legitimate interests in the Domain Name. See, e.g. Intesa Sanpaolo S.p.A. v. Charles Duke / Oneandone Private Registration,WIPO Case No. D2013-0875. Moreover, there is no evidence showing that Respondent has been commonly known by the Domain Name.
Accordingly, Complainant has provided evidence supporting its prima facie claim that Respondent lacks any rights or legitimate interests in the Domain Name. Respondent has failed to produce countervailing evidence of any rights or legitimate interests in the Domain Name. Thus, the Panel concludes that Respondent does not have any rights or legitimate interests in the Domain Name and Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithThe Panel finds that Respondent’s actions indicate that Respondent registered and is using the Domain Name in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
The Panel finds that Complainant provided ample evidence to show that registration and use of the SMARTMOCKUPS marks predate the registration of the Domain Name by Respondent. Complainant is also well established and known. Indeed, the record shows that Complainant’s SMARTMOCKUPS marks and related services are widely known and recognized. Therefore, especially noting that the Domain Name is a typo of Complainant’s mark, the Panel finds that Respondent knew or should have known of the SMARTMOCKUPS marks when it registered the Domain Name. See WIPO Overview 3.0, section 3.2.2; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited,WIPO Case No. D2016-1973.
The Panel also finds that Respondent’s awareness of Complainant’s trademark rights at the time of registration suggests bad faith. See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz,WIPO Case No. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite,WIPO Case No. D2001-1070; BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007.
As discussed above, the Domain Name redirects to third party websites. Examples of the links include: The website resolves to a webpage that features third party links, for example: “Website Design”, “Wireframe Design”, “Website Wireframe”, “Web Design”, “Mockup Website”, and “Wireframe Tool”. Moreover, some of the links hosted on the website redirect users to the websites of third-party businesses, offering services which appear to be in competition to those offered by the Complainant. Respondent has also listed the Domain Name for sale on domain aftermarket website “www.afternic.com”, for the price of USD 999.
Such use is misleading to Internet users, creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website. It is also potentially disruptive to Complainant’s business activities and may result in tarnishing Complainant’s reputation and good will. See WIPO Overview 3.0, section 3.3.
Here, the present circumstances, including the distinctiveness and reputation of the SMARTMOCKUPS marks, the failure of Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, and the implausibility of any good faith use to which the Domain Name may be put, support a finding of bad faith.
Accordingly, the Panel finds that Respondent has registered and is using the Domain Name in bad faith and Complainant succeeds under the third element of paragraph 4(a) of the Policy.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name
Kimberley Chen Nobles
Sole Panelist
Date: September 20, 2021