Complainant is Yeoman Asset, Management, LLC, United States of America (“United States”), represented by Sherman & Howard, LLC, United States.
Respondent is Domains Manager, Vivial – VSM, United States.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 20, 2021. On October 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 26, 2021, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on November 9, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 29, 2021. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 1, 2021.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on December 15, 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 is a United States company. Since at least 2013, Complainant has offered products and services under the RED DOT STORAGE mark, including provision of storage and storage rental facilities. Complainant has several registered trademarks for its marks in the United States, where Respondent lists an address of record. These include United States Registration Nos. 4445096 (registered December 3, 2013) and 4449150 (registered December 10, 2013) with an added design element.
The disputed domain name appears to have been registered on February 10, 2021. Respondent has no affiliation with Complainant. Respondent has used the URL associated with the disputed domain name to resolve to a website that appears to mimic an official website of Complainant, with reference to RED DOT STORAGE products and services, and displaying Complainant’s registered word and design mark. Complainant has not authorized any activities by Respondent, nor any use of its trademarks thereby.
5. Parties’ Contentions A. ComplainantComplainant contends that the (i) disputed domain name is identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith.
In particular, Complainant contends that it owns the RED DOT STORAGE mark, which it uses in connection with its various storage products and services.
Complainant contends that Respondent has incorporated in full its “distinctive” and “widely recognized” mark, and merely added the number “175.”
Complainant further contends that Respondent has no rights or legitimate interest in the domain name registration or use of the disputed domain name. Rather, Complainant contends that Respondent has acted in bad faith in registering the disputed domain name and in setting up a website meant to confuse consumers by impersonating Complainant, when Respondent clearly knew of Complainant’s rights.
B. RespondentRespondent did not file a reply to Complainant’s contentions.
6. Discussion and Findings A. Identical or Confusingly SimilarThis Panel must first determine whether the disputed domain name
Numerous UDRP panels have agreed that supplementing or modifying a trademark with basic terms or dictionary words does not make a domain name any less “identical or confusingly similar” for purposes of satisfying this first prong of paragraph 4(a)(i) of the Policy. See, for example, Inter Ikea Systems B.V. v. Polanski,
WIPO Case No. D2000-1614 (transferring
WIPO Case No. D2007-0584 (transferring
WIPO Case No. D2000-1500 (transferring
WIPO Case No. D2000-1065 (transferring
The Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsThe Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the domain name at issue in a UDRP dispute. For example, paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that Respondent has been “commonly known by the domain name”; or (iii) “legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
Respondent did not submit a reply to Complainant’s contentions. Thus, Respondent did not allege or otherwise provide any information that would support a finding that Respondent has rights or legitimate interest in the disputed domain name. Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in the disputed domain name, which Respondent has not rebutted.
C. Registered and Used in Bad FaithThere are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or of a product or service on [the] web site or location”. As noted in Section 4 of this Panel’s decision, Respondent has used the URL associated with the disputed domain name to resolve to a website that appears to mimic an official website of Complainant, and which displays Complainant’s own registered word and design mark. Respondent is thus trading on the goodwill of Complainant’s trademarks to attract Internet users, presumably for Respondent’s own commercial gain.
The Panel finds that Respondent registered and used the disputed domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy.
7. DecisionFor all 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
Lorelei Ritchie
Sole Panelist
Dated: December 20, 2021