WIPO Domain Name Decision D2021-2985 for teddyfresh.net, teddyfreshofficial.com

As set out above, the Complainant has requested that the second disputed domain name be added to these proceedings. The grounds for the Complainant’s request are, first, that the underlying registrant of the second disputed domain name is likely to be the same as the registrant of the first disputed domain name2 . Second, the Registrar for the second disputed domain name is the same registrar as the initial Registrar for the first disputed domain name. Third, the websites to which disputed domain names resolve are identical or virtually identical. Fourth, the Panel has power to allow the amendment; see paragraph 10 of the Rules and, for example, SunTrust Banks, Inc. v. Registration Private, Domains By Proxy, LLC / Kyle Britton, WIPO Case No. D2017-1537, where a domain name was added to the complaint in similar circumstances. Fifth, no prejudice will accrue to the Respondent if the second disputed domain name is added to the Complaint; as at September 27 2021, the Respondent had only just received the Notification of Complaint, and dealing with it in these proceedings will be more expedient and efficient than requiring the Complainant to file a separate complaint. Finally, the Complainant set out the basis of its complaint in relation to the second disputed domain name, which is essentially the same as that summarised below in relation to the first disputed domain name.

Paragraph 10 of the Rules empowers a Panel to conduct the administrative proceeding in such manner as it thinks fit, albeit the Rules do not expressly deal with the position in which a complainant seeks to add a domain name to a complaint after it has been notified to the respondent. This scenario is, however, considered at section 4.12.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) which explains that panels are generally reluctant to accept such requests because the addition of further domain names would delay unduly delay the proceedings. In cases where panels would grant such a request, the complainant would need to hold relevant trademark rights and the additional domain name would prima facie need to be registered by the same or related respondent. Moreover, if the additional domain name is added to the complaint, the panel may also order partial or full re-notification of the proceedings.

The fact that the first disputed domain name redirects to the website at the second disputed domain name establishes to the satisfaction of the Panel that both disputed domain names are under common control and are being used in tandem for the same purpose. Furthermore, both disputed domain names have been registered by the same underlying registrant (i.e. Waseem Iqbal) and the issues relating to them are the same. There is no purpose to be served by requiring the Complainant to bring separate proceedings in respect of the second disputed domain name. It is procedurally efficient for both disputed domain names to be dealt with in the same proceeding and there is no detriment to the Respondent, by so doing. The Respondent has been given additional time to respond to the Complainant’s assertions relating to the second disputed domain name but has not done so. The Panel accordingly grants the Complainant’s request to add the second disputed domain name to the proceedings.

The Complainant says that the disputed domain names are identical or confusingly similar to a trade mark or service mark in which it has rights. It draws attention to its trade marks for TEDDY FRESH, full details of one of these marks having been set out above, and says that the first disputed domain name is identical to its mark. The second disputed domain name consists of the Complainant’s trade mark, followed by the term “official”. However, if a domain name incorporates the entirety of complainant’s distinctive mark, it will normally be considered confusingly similar to it, notwithstanding the addition of other terms.

The Complainant says also that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent has no trade mark registrations for the disputed domain names and has not commonly been known by either of them. The Respondent is using the disputed domain names in order to sell counterfeit TEDDY FRESH merchandise, which infringe the Complainant’s copyright and trade marks, to the detriment of the Complainant. There can be no legitimate interest in the sale of counterfeits; see, for example Valentino S.p.A. v. Jack Wuzheng, Hongyun Trade Inc, Jacket Chan, Tech Trade Inc.,WIPO Case No. D2019-0647. The Respondent has registered the disputed domain names in order to mislead customers and divert Internet traffic away from the Complainant’s own website. The Complainant has received complaints from consumers who had purchased products from the Respondent’s website thinking they were purchasing the Complainant’s merchandise, and have been dissatisfied with Respondent’s service, thereby tarnishing the Complainant’s brand.

Lastly, the Complainant says that the disputed domain names were registered and are being used in bad faith. The Respondent registered them in order to prevent the Complainant from reflecting its mark in corresponding domain names and for the purpose of disrupting the Complainant’s business. The Respondent has intentionally launched a website at the disputed domain names in order to mislead consumers into believing that they are at the Complainant’s website and to induce them into purchasing counterfeit TEDDY FRESH merchandise. The Respondent has copied the Complainant’s logo as well as product photographs, product designs and product descriptions, directly from the Complainant’s website.

By using the disputed domain names and the Complainant’s other intellectual property, the Respondent is intentionally attempting to attract for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. In addition to calling itself the “Official Store” the Respondent has even linked its website to the Complainant’s social media pages in an effort to further mislead consumers and pass itself off as the Complainant.

The Respondent did not reply to the Complainant’s contentions.

Dealing, first, with the Respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.

Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following three elements in order to succeed in its Complaint:

(i) the disputed domain names are identical or confusingly similar to a trade mark 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 names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

The Complainant has provided details of the registered trade and service marks it owns for TEDDY FRESH, including the registration in respect of which full details have been provided above, which thereby establish its rights in this mark.

As a technical requirement of registration, the Top-Level Domains that are “.net” and “.com”, in the case of the first and second disputed domain names respectively, are typically disregarded when assessing confusing similarity. The first disputed domain name comprises the Complainant’s TEDDY FRESH mark solus, and is accordingly identical to it. The second disputed domain name comprises the Complainant’s TEDDY FRESH mark, followed by the word “official”. This additional component does not prevent the disputed domain name from being considered confusingly similar to the Complainant’s mark because the Complainant’s TEDDY FRESH mark is recognizable within the second disputed domain name. As explained at section 1.8 of the WIPO Overview 3.0: “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”. Here, the addition of the non-distinctive “official” only underscores that the TEDDY FRESH portion of the name is identical to Complainant’s mark, and intentionally so.

The Panel accordingly finds that the first disputed domain name is identical, and the second disputed domain name is confusingly similar, to a trade and service mark in which the Complainant has rights.

Paragraph 4(c) of the Policy sets out circumstances, without limitation, by which a respondent might demonstrate that it has rights or legitimate interests in a domain name. These are, summarized briefly: if the respondent has been using the domain name in connection with a bona fide offering of goods and services, if the respondent has been commonly known by the domain name, or if the respondent has been making a legitimate noncommercial or fair use of the domain name.

The Complainant has asserted that the goods sold by the Respondent are counterfeit. Section 2.13.1 of the WIPO Overview 3.0 explains that “Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent”.

The Complainant’s evidence of counterfeiting is not especially strong, in that the single customer complaint it has produced relates to a customer asserting it has been sent the wrong garment rather than a counterfeit, although the Panel takes note of the fact that the Respondent has not denied the Complainant’s assertion.

However, irrespective of whether the goods advertised for sale by the Respondent are counterfeit, the Respondent’s website passes itself off as that of the Complainant, uses its distinctive logo and images and Internet users are being deceived into thinking that it is the Complainant which is offering the goods for sale. Passing off activities of this type do not comprise a bona fide offering of goods and services; see, for example, Bayerische Motoren Werke AG v. Nataporn Chetrakran, Bmw Easy Coding,WIPO Case No. D2020-2757 and Richemont International SA v. brandon gill,WIPO Case No. D2013-0037.

There is no evidence that the Respondent has been commonly known by either of the disputed domain names and the second circumstance under paragraph 4(c) of the Policy is therefore inapplicable. The third circumstance is also inapplicable; the use the Respondent has made of the disputed domain names is commercial in character. Moreover, the composition of both disputed domain names is such that they carry a significant risk of implied affiliation with the Complainant which prevents their use from being considered fair.

The Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names and the burden of production shifts to the Respondent; see Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455 and section 2.1 of the WIPO Overview 3.0. In the absence of any response from the Respondent to the Complaint, it has failed to satisfy that burden. The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

As at the date of registration of the first disputed domain name in July 2020, the Complainant’s business had been established for over 3 years and the Complainant had protected its TEDDY FRESH trading style through trade mark registrations. The second disputed domain was registered in September 2021, which is also after the Complainant’s trade mark registrations. The use to which the Respondent has put the disputed domain names following registration establishes that the Respondent was aware of the Complainant and its TEDDY FRESH mark as at their dates of registration and that it registered them in order profit unfairly from the connection which Internet users would make between them and the Complainant.

Paragraph 4(b) of the Policy sets out, without limitation, circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The circumstances set out at paragraph 4(b)(iv) of the Policy are if a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.

The use to which the Respondent has put the disputed domain names falls within these circumstances in that the first disputed domain name redirects, and the second disputed domain name resolves directly, to a website which purports to be operated by the Complainant and to offer the Complainant’s products for sale. The belief of Internet users that the Respondent’s website is operated by, or on behalf of, the Complainant will be reinforced because of the identicality/confusing similarity between the disputed domain names and the Complainant’s TEDDY FRESH trade marks. In the case of the second disputed domain name, the addition to the Complainant’s mark of the word “official” accentuates the false impression of that the website to which it resolves is operated by the Complainant and increases the likelihood of confusion to Internet users. There is no conceivable good faith use which the Respondent could make of the disputed domain names and the Respondent has not made any attempt to justify his conduct or to rebut the Complainant’s assertions. This clearly points to bad faith registration and use; see, in similar circumstances, the decision of the panel in Swarovski Aktiengesellschaft v. WhoisGuard Protected / Peter D. Person,WIPO Case No. D2014-1447.

The Panel therefore finds the registration of the disputed domain names to have been in bad faith.

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 names and be transferred to the Complainant.

Antony Gold
Presiding Panelist

Sally M. Abel
Panelist

Douglas Clark
Panelist
Date: December 16, 2021

1 As outlined at section 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision. The Panel has thereby established that that the first disputed domain name presently redirects to a website at the second disputed domain name.

2 This has now been confirmed by the second Registrar.