The Complainant is ABG-Tretorn, LLC, United States of America, represented by Authentic Brands Group, United States of America.
The Respondent is Client Care, Web Commerce Communications Limited, Malaysia.
2. The Domain Names and RegistrarThe disputed domain names
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 28, 2021. On December 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On December 31, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 5, 2022 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 amendment to the Complaint on January 5, 2022.
The Center verified that the Complaint together with the amendment to 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 the Respondent of the Complaint, and the proceedings commenced on January 7, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 27, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 28, 2022.
The Center appointed Dawn Osborne as the sole panelist in this matter on February 2, 2022. 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 the owner of the mark TRETORN registered, inter alia, in the United Kingdom (“UK”) for clothing under registration no 900910240 since November 26, 1999. It operates a web site at “www.tretorn.com”.
The Domain Names registered in 2021 have been used for web sites offering clothing which use the Complainant’s trademark as a masthead to represent that they are official sites or authorised by the Complainant.
5. Parties’ ContentionsA. Complainant
The Complainant’s contentions can be summarised as follows:
The Complainant is the owner of the mark TRETORN registered, inter alia, in the UK for clothing under registration no 900910240 since November 26, 1999. It operates a website at “www.tretorn.com”.
The Domain Names registered in 2021 consist of “tretorn” followed by:
a. the geographically descriptive term “UK”
b. the geographically descriptive term “Deutschland” which translates to “Germany”, or
c. the Swedish term “Gummistovler” which translates “rubber boots” and the generic Top-Level Domain (“gTLD”) “.com”.
The Domain Names are each confusingly similar to the Complainant’s TRETORN mark since the mark is recognizable within the disputed domain name and the addition of other terms would not prevent said confusing similarity.
The Respondent does not have rights or legitimate interests in the Domain Names, is not commonly known by them and is not authorised by the Complainant.
The Domain Names resolve to websites offering counterfeit TRETORN branded goods. This is not a bona fide offering of goods or services or a noncommercial legitimate or fair use.
It is registration and use in bad faith, causing confusion on the Internet for commercial gain in actual knowledge of the Complainant’s rights. The Respondent has used a privacy service and did not reply to a cease and desist letter from the Complainant.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings A. Identical or Confusingly SimilarThe Domain Names consist of the Complainant’s TRETORN mark (which is registered, inter alia in the UK for clothing since 1999), the terms “UK”, “deutschland” meaning Germany in English or “gummistovler” meaning rubber boots in English (“the Terms”) and the gTLD “.com”.
Previous panels have found confusing similarity when a respondent merely adds a term to a complainant’s mark. The Panel agrees that the addition of the Terms and the gTLD “.com”, which is a standard registration requirement, to the Complainant’s TRETORN mark do not prevent a finding of confusing similarity between the Complainant’s trademark and each of the Domain Names.
Accordingly, the Panel holds that the Domain Names are confusingly similar for the purpose of the Policy to a mark in which the Complainant has rights.
As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate InterestsThe Complainant has not authorised the use of its mark. There is no evidence or reason to suggest the Respondent is commonly known by the Domain Names. The Respondent is known as Web Commerce Communications Limited in the WhoIs database details. The use of the Domain Names is commercial and so is not legitimate noncommercial fair use.
The websites attached to the Domain Names use the Complainant’s TRETORN mark and logo as a masthead suggesting that the Respondent’s sites are official sites of or authorised by the Complainant. They do not make it clear that there is no commercial connection with the Complainant. The Panel finds this use is confusing and deceptive. As such it cannot amount to the bona fide offering of goods and services.
The Respondent has not answered this Complaint or explained why it should be able to register and use domain names containing the Complainant’s mark in this way.
As such the Panelist finds that the Respondent does not have rights or legitimate interests in the Domain Names and that the Complainant has satisfied the second limb of the Policy.
C. Registered and Used in Bad FaithIn the opinion of the Panel, the use made of the Domain Names in relation to the Respondent’s sites is confusing and disruptive in that visitors to the sites might reasonably believe that they are connected to or approved by the Complainant as they use a copy of the Complainant’s mark and logo as a masthead. The use of the Complainant’s logo shows that the Respondent is aware of the Complainant and its business, rights and services.
Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its websites by creating a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s websites and services offered on them likely to disrupt the business of the Complainant. The Panel also notes the registration of three Domain Names containing the trade mark of the Complainant used for the sale of counterfeit goods is manifestly considered evidence of bad faith.
As such, the Panelist believes that the Complainant has made out its case that the Domain Names were registered and used in bad faith and has satisfied the third limb of the Policy under para 4(a) (iii).
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 Names,
Dawn Osborne
Sole Panelist
Date: February 7, 2022