ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Goop Inc. v. Atilla Albayrak, WIPIT AB Case No. D2024-0908 1. The Parties The Complainant is Goop Inc., United States of America (“United States”), represented by Frost Brown Todd LLP, United States of America. The Respondent is Atilla Albayrak, WIPIT AB, Sweden. 2. The Domain Name and Registrar The disputed domain name is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 29, 2024. On March 1, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 1, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (Redacted for Privacy) and contact information in the Complaint. The Center sent an email communication to the Complainant on March 6, 2024, 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 amended Complaint on March 10, 2024. 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 the Respondent of the Complaint, and the proceedings commenced on March 22, 2024. In accordance with the Rules, paragraph 5, the due date for Response was April 11, 2024. The Respondent sent email communications to the Center on March 6, 2024, March 8, 2024, March 10, 2024, March 21, 2024, and March 22, 2024. Pursuant to paragraph 6 of the Rules, on April 18, 2024, the Center informed the Parties that it would proceed with the panel appointment process.
page 2 The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on April 24, 2024. 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 The Complainant is a Delaware, United States, corporation with a principal place of business in Santa Monica, California, United States. According to the Complainant, the Complainant is a global lifestyle company that was founded in 2008 by OSCAR-winning actress and entrepreneur Gwyneth Paltrow, which is one of the most valuable and recognizable lifestyle brands in the world. The Complainant claims extensive media coverage for its mark and products, including references and parodies on high profile television programs. While this claim itself was not directly evidenced in the record, the Panel notes that the Complainant inserted its website into evidence (including producing a screenshot of same) from which it can be established that the Complainant had its own show on streaming service Netflix from 2020 entitled “The goop Lab” and that its “goop Podcast” benefits from tens of millions of downloads. 1 The Complainant notes that it began to open physical brick-and-mortar locations in 2017, and now has five such outlets, together with pop-up stores elsewhere. The Complainant maintains an online store at “www.goop.com”. The Complainant is the owner of a variety of registered trademarks for the mark GOOP, including, for example, United States Registered Trademark No. 4946429 for the word mark GOOP, registered on April 26, 2016 in Class 35, and United States Registered Trademark No. 5232763 for the word mark GOOP, registered on June 27, 2017 in Classes 3, 5, 14, 21, and 24 (certain other classes being cancelled). Broadly speaking, these marks relate to retail store services, and certain lifestyle and household products respectively. According to the WhoIs record, the disputed domain name was registered on January 5, 2024. Despite some email communications to the Center, the Respondent has not participated formally in the administrative proceeding and, as such, little is known about it. It does however appear from the Registrant Organization field of the WhoIs record to be a Swedish Aktiebolag (limited company) based in Malmo, Sweden. Its website, at “www.wipit.se” indicates that it is an information technology company founded in 2008. The disputed domain name itself points to a holding page with a cartoon drawing of a person on a laptop, underneath which is stated “Sorry, we’re doing some work on the site / Thank you for being patient. We are doing some work on the site and will be back shortly.” The disputed domain name also has MX records configured for it, suggesting that it is capable of receiving email. 1The Panel considered that reviewing a number of the Complainant’s claims via publicly available sources would be useful to assist it in reaching its determination. For example, the Panel visited the Complainant’s website, and also verified that the Complainant’s alleged Netflix series, which the Panel had not previously watched, was available to stream in the United Kingdom. However, in general, a complainant should not rely upon the fact that a panel will be prepared to carry out any such research (nor should a complainant base its case exclusively upon a panel’s willingness to review a complainant’s online offerings) and would be better served by providing specific evidence of same along with its complaint. For balance, the Panel also visited the Respondent’s website at “www.wipit.se” as this was referred to in the Complaint. On the topic of the Panel conducting such research, see section 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”). The Panel determined that it was not necessary to put the outcome of its research to the Parties because of the fact that the Complainant had sought to incorporate its online platform into the evidence, from which its various claims could be assessed and verified, and had referred to the Respondent’s website in its submissions.
page 3 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Notably, the Complainant contends that the disputed domain name incorporates the Complainant’s mark in its entirety, that the addition of “it” and the “.net” suffix do nothing to obviate the impact of this incorporation, and that the disputed domain name is thereby confusingly similar to said mark. The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name as it is neither a licensee of, nor otherwise currently affiliated with, nor in a contractual relationship with, the Complainant. The Complainant adds that it has investigated the Respondent’s physical address, noting that this does not purport to conduct business under the name “goopit,” and adding that a search of the WIPO Global Brand Database does not reveal any related trademark registrations, while a general Google search for the Respondent reveals no business use of “goop” or related formative marks, including on the Respondent’s website. Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith with a clear intent to profit from confusion, on the basis that it is obviously connected with the Complainant and its products, such that its use by an entity with no connection to the Complainant suggests opportunistic bad faith. The Complainant submits that the disputed domain name was registered long after the Complainant’s mark had become well-known. The Complainant asserts that the passive holding of the disputed domain name would not prevent a finding of registration and use in bad faith, when the fame of the Complainant’s mark and whether it is possible to conceive of any good faith use of the domain name by the Respondent are considered. The Complainant notes the configuration of MX records in the DNS to which the disputed domain name is delegated and submits that given the Respondent’s lack of rights and legitimate interests in the disputed domain name and its confusing similarity to the Complainant’s mark, any use of the disputed domain name for email communication would falsely imply an affiliation with the Complainant and be a use in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. However, the Respondent issued five communications to the Center that may be repeated verbatim: (1) “Hi, What is the issue here?” (2) “My dear, I don’t understand anything... better you give us a call”. (3) “Hi, We are only buying and selling domains and this domain we have sold to GOOPIT PVT LTD in INDIA. I really don’t understand this issue? Can you please be more clearly” [sic] (4) “Hi, We still don’t know what this is about since the domain name was bought for GOOPIT SOFTWARE PTV LTD our sister company. I only see conversations flying like Jetplanes in the heaven without knowing where the jetplanes will land”, and (5) “Hi, Do you want buy the domain or? [sic] We can sell it to you... What is the issue just to be clear.” 6. Discussion and Findings A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview 3.0, section 1.7. The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1.
page 4 The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other terms, here, “it”, may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. There is very little for the Panel to go on by way of attempted rebuttal of the Complainant’s prima facie case by the Respondent in the present matter. However, the Respondent does assert that it has registered the disputed domain name on behalf of a sister company, allegedly named GOOPIT PVT LTD. No further information was provided as to this entity, and it is to be noted that the Center wrote to the Respondent inviting it to forward the Notification of the Complaint and Annexes to the entity identified by the Respondent, if the Respondent considered that this entity might have an interest in the proceeding. No such entity has come forward. In the absence of such, or any further explanation from the Respondent, there is no link between the Respondent and any such entity that is apparent to the Panel on the present record. The Panel notes for completeness that even if the alleged sister company exists and would have an interest in the proceeding, the mere incorporation of a company with a name corresponding to a domain name does not typically, on its own, lead to a finding of rights and legitimate interests under the Policy. The rationale for this approach is set out in Royal Bank of Canada v. RBC Bank, WIPO Case No. D2002-0672, in which the panel noted: “If the intention of the Policy were otherwise, every cybersquatter would be able to avoid the operation of the Policy by the simple expedient of: (i) quietly registering someone else’s trademark as a corporation name (possibly in some jurisdiction having no connection with either the trademark owner or the cybersquatter); (ii) waiting some decent interval of time before registering the corporation name as a domain name; and (iii) resisting the trademark owner’s challenge under the Policy by claiming that the fact of the registration of the corporation proves that the corporation has been ‘commonly known by’ the corporation name/trademark/domain name, and therefore has a legitimate interest in the domain name.”
page 5 It follows that the Panel would have to be able to identify some evidence that went beyond the mere registration of a corresponding company in order to determine that the respondent concerned had rights and legitimate interests in the domain name concerned. Here, no further information is forthcoming. In any event, the Panel has reason to doubt the Respondent’s assertion, principally because having stated that the disputed domain name was registered on behalf of an affiliate, the Respondent then offered to sell the disputed domain name to the Complainant. This suggests that a potential sale of the disputed domain name to the Complainant was always in the Respondent’s contemplation (rather than the making of a registration on behalf of a third party with a legitimate right to use it). The making of a registration in order to sell it to the Complainant in the circumstances of this case could not on any view confer rights and legitimate interests upon the Respondent. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In order to make out a case of bad faith registration under the Policy, generally speaking, a complainant must demonstrate that some form of targeting of its rights has occurred and at least the fact that the respondent had the complainant or its rights in mind at the point when it registered the domain name concerned. In the present case, the Panel notes that the Complainant’s GOOP mark is prominent and is likely to have considerable reach, not least due to its close affiliation with its globally renowned and famous founder. Panels have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. Having reviewed the available record, the Panel finds the non-use of the disputed domain name does not prevent a finding of bad faith in the circumstances of this proceeding. Although panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, and (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement). WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness or reputation of the Complainant’s trademark as discussed above, and the composition of the disputed domain name, and finds that in the circumstances of this case the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy. Finally, the Panel notes that it places particular significance on the fact that the Respondent sought to sell the disputed domain name to the Complainant in an informal communication even after the commencement of this proceeding. As noted in the preceding section, this tends to undermine the Respondent’s assertion that it registered the disputed domain name primarily for an eponymous third party, as does the fact that it offered no further evidence of the alleged third party’s identity, and the fact that no such third party came forward when the Respondent was invited to ask it to do so. This suggests that the Respondent may have registered the disputed domain name primarily for the purpose of selling it to the Complainant who is the owner of the trademark, for valuable consideration likely in excess of the Respondent’s out-of-pocket costs directly related to the domain name, contrary to the Policy, paragraph 4(b)(i). The Panel adds for completeness that given the prominent reproduction of the Complainant’s mark in the disputed domain name, its use for email purposes may falsely imply an affiliation with the Complainant, and the fact that the disputed domain name is configured for such use, in all the circumstances of this case, constitutes abusive threat hanging over the head of the Complainant (i.e., an abuse capable of being triggered by the Respondent at any time) and therefore a continuing abusive use (see: Conair Corp. v. Pan Pin, Hong Kong Shunda International Co. Limited, WIPO Case No. D2014-1564).
page 6 The Respondent has failed to engage formally with the administrative proceeding, and accordingly has not addressed the Complainant’s submissions regarding registration and use in bad faith, nor has the Respondent put forward, with corresponding evidence, a substantive and reasonable explanation for such registration and use which might have suggested a good faith motivation on its part. In the absence of such, the Panel cannot conceive of a suitable explanation which the Respondent might have tendered in this matter. The Panel finds that the Complainant has established the third element of the Policy. 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 disputed domain name be transferred to the Complainant. /Andrew D. S. Lothian/ Andrew D. S. Lothian Sole Panelist Date: May 8, 2024
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