ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Victoria Beckham v. Domain Administrator Case No. D2023-3494 1. The Parties Complainant is Victoria Beckham, United Kingdom, represented by Demys Limited, United Kingdom. Respondent is Domain Administrator, United States of America (the "US"). 2. The Domain Name and Registrar The disputed domain name
("Domain Name") is registered with NameSilo, LLC (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 17, 2023. On August 17, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 18, 2023, 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 (Redacted For Privacy, See ) and contact information in the Complaint. The Center sent an email communication to Complainant on August 18, 2023, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 21, 2023. 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 22, 2023. In accordance with the Rules, paragraph 5, the due date for Response was September 11, 2023. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on September 12, 2023. page 2 The Center appointed Mireille Buydens as the sole panelist in this matter on October 3, 2023. 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 Background Complainant is a singer, fashion designer, and television personality. Complainant rose to international prominence in the 1990s as a member of the music group "The Spice Girls", which became very successful internationally with over 100 million records sold worldwide. Complainant has since then also appeared in documentaries and reality shows. In 2008, Complainant launched her own fashion brand which has been internationally recognized, obtaining various awards. Complainant operates a commercial website at "www.victoriabeckham.com" which offers her fashion products for sale to web users. Complainant provides evidence that she owns an international portfolio of trademark registrations for the word mark VICTORIA BECKHAM ("the Trademark"). Examples of such registrations include the following word mark registrations: - European Union Trademark registration No. 002543320, registered on January 22, 2007; - International Trademark Registration No. 1163611, registered on June 14, 2012; - US Trademark registration No. 605626, registered on December 11, 2012. The US Trademark registration is not invoked by Complainant but a panel may undertake limited factual research into matters of public record (including trademark registration database) if it considers such information useful to assessing the case merits and reaching a decision (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 4.8). The Panel has retrieved this US registration in a trademark registration database and finds this registration relevant as Respondent is reportedly located in the US. Complainant's Trademark was registered prior to the date of registration of the Domain Name, which is June 7, 2023. Complainant provides evidence that the Domain Name resolved to an online shop selling goods similar to those sold by Complainant. Such website prominently used the Trademark but did not feature any form of disclaimer that would make it clear that it is not associated with, endorsed by, or otherwise affiliated with Complainant. However, on the date of this Decision, the Panel notes that the Domain Name directs to an inactive webpage. 5. Parties' Contentions A. Complainant First, Complainant submits that the Domain Name is identical or confusingly similar to Complainant's Trademark. The Domain Name only differs from Complainant's Trademark by the addition of the generic and descriptive word "store", which is linked to the retail and fashion industries, further increasing the potential for confusion, and the Top-Level Domain <.shop>, which should be disregarded for the purposes of comparison with Complainant's Trademark. Second, Complainant argues that Respondent has neither rights nor legitimate interests in the Domain Name. Complainant refers to section 2.1 of the WIPO Overview 3.0. Complainant further explains that it has found no evidence that Respondent has been commonly known as "victoria beckham" or "victoria beckham store" prior to or after the registration of the Domain Name. Respondent is not a licensee of Complainant and has not received any permission or consent from Complainant to use her Trademark. Respondent does not own any trademark incorporating the Trademark. Complainant asserts that Respondent is not using the Domain Name in connection with a bona fide offering of goods or services as per Policy 4(c)(i). page 3 Complainant further asserts that Respondent is not making a legitimate noncommercial or fair use of the Domain Name as it appears to engage in the alleged sale of presumably counterfeit products, including those of third parties. Complainant also contends that, in any event, Respondent would fail the "Oki Data test" notably because Respondent has failed to disclose its relationship (or, rather, nonrelationship) with Complainant, as well as the fact that it appears that the Domain Name advertises third party goods and may not actually sell said products, but instead counterfeits. Third, Complainant submits that the Domain Name was registered and is being used in bad faith. Complainant asserts that it is inconceivable that Respondent did not have a bad faith intent and Complainant in mind when it registered the Domain Name because of the following reasons: (1) Complainant and her Trademark are well-known, and the Domain Name contains the Trademark. Besides, the website associated with the Domain Name lacks any disclaimer that would dispel the confusion with Complainant; (2) Complainant's Trademark is highly distinctive; and (3) Complainant believes that the Domain name is used to sell counterfeit versions of the products advertised. B. Respondent Respondent did not reply to Complainant's contentions. 6. Discussion and Findings Dealing with 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 Complainant prove each of the following three elements in order to succeed in its Complaint: (i) the disputed domain name is identical or confusingly similar to a trademark 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 name; and (iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar Complainant has established that it is the owner of the Trademark. The Panel finds that the Domain Name is confusingly similar to Complainants' Trademark. The Domain Name incorporates the Trademark VICTORIA BECKHAM. The fact that the Domain Name also contains another term (here, the descriptive word "store") is irrelevant (see WIPO Overview 3.0. section 1.8: "where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographic, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element"). The generic Top-Level Domain ".shop" is a standard registration requirement and does not prevent the disputed domain name from being confusingly similar to the Trademark (see WIPO Overview 3.0, section 1.11.1). The Panel therefore finds that the Domain Name is confusingly similar to the Trademark. The Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy. page 4 B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a respondent does not have any rights or legitimate interests in the disputed domain name. Once such showing is made, the burden of production shifts to the respondent. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (see WIPO Overview 3.0, section 2.1.). In the Panel's opinion, Complainants' submissions set out above under 5.A give rise to a prima facie case that Respondent has no rights or legitimate interests in respect of the Domain Name. There is no evidence that Respondent is affiliated with or authorized by Complainant in any way. The composition of the Domain Name, adding the term "store" to Complainant's Ttrademark along with the gTLD ".shop", coupled with the use of the Domain Name to resolve to a website in which Respondent supposedly sells Complainant's or similar products, affirms Respondent's intention of taking unfair advantage of the likelihood of confusion between the Domain Name and Complainant as to the origin or affiliation of the website at the Domain Name. There is also no evidence that Respondent is using the Domain Name in connection with a bona fide offering of products or services. Rather, Respondent uses the Domain Name for the purpose of trading off Complainant's well-known Trademark for commercial gain by offering for sale products that are similar to those offered by Complainant. This suggests that Respondent had no bona fide intention behind the use of the Domain Name other than to mislead Internet users expecting to find Complainant or a website in association with Complainant. The facts and circumstances presented to the Panel demonstrate that Respondent does not have any rights or legitimate interests in the Domain Name. The Panel finds that Complainant has met its burden under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Given that the Domain Name incorporates Complainant's Trademark, which predates the registration of the Domain Name, with the addition of a word ("store") which is descriptive in the retail sector where Complainant is active, Respondent was more likely than not aware of Complainant's Trademark at the time of the registration of the Domain Name (see section 3.1.4 of the WIPO Overview 3.0 that states that "the mere registration of a domain name that is identical or confusingly similar (particularly domain name comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith".) The Domain Name is also ideally suited to mislead the public. The composition of the Domain Name (the Trademark and the descriptive word "store") combined with the gTLD ".shop", falsely suggests that Internet users can shop Complainant's products in the "store" presented under the Domain Name. Respondent has sought to create a misleading impression of association with Complainant, which is a well-known singer, fashion designer, and television personality and thereby attracts Internet users and inspires confidence. Furthermore, the failure of Respondent to submit a response or to provide any evidence of actual or contemplated good faith use, or to this Complaint, is further evidence of bad faith, given all the circumstances of the case (see WIPO Overview 3.0, section 3.2). Based on the evidence and circumstances of this case, the Panel concludes that the requirement of registration and use of the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy has been fulfilled. page 5 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to Complainant. /Mireille Buydens/ Mireille Buydens Sole Panelist Date: October 17, 2023
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