ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Goop Inc. v. Carolina Rodrigues, Fundacion Comercio Electronico Case No. D2024-1989 1. The Parties The Complainant is Goop Inc., United States of America (“United States”), represented by Frost Brown Todd LLC, United States. The Respondent is Carolina Rodrigues, Fundacion Comercio Electronico, Panama. 2. The Domain Name and Registrar The disputed Domain Name (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 13, 2024. On May 15, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 16, 2024, 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 (Unknown) and contact information in the Complaint. The Center sent an email communication to the Complainant on May 22, 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 May 24, 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 May 30, 2024. In accordance with the Rules, paragraph 5, the due date for Response was June 19, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 8, 2024.
page 2 The Center appointed Ana María Pacón as the sole panelist in this matter on July 13, 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 was founded in 2008 in the United States by the widely known actress and entrepreneur Gwyneth Paltrow. It is providing a wide range of lifestyle products to customers around the world, including fashion, beauty, wellness, home décor, and jewelry products. It is accompanied by podcasts (“The Goop Podcast”) and a streaming television show on the Netflix platform (“The Goop Lab”). The Complainant operates six retail stores as well as an e-commerce website and multiple social media sites. The record includes substantial evidence of the Complainant’s advertising and brand recognition in the United States, including media coverage on popular television shows such as Saturday Night Live and The Late Show with Stephen Colbert. The Complainant holds several United States trademark registrations for its products and services, including the following: Mark Registration Number Registration Date Goods or Services/Class GOOP 4946429 April 26, 2016 35: Retail store services featuring a wide variety of consumer goods; providing consumer product information via the Internet or other communications networks; computerized on-line ordering services featuring a wide variety of consumer goods GOOP 5232763 June 27, 2017 3: Perfume, cologne, eau de toilette. 5: vitamins, dietary supplements 8: Cutlery, namely, knives 14: jewelry 18: handbags, luggage 20: pillows 21: pots, pants 24: bedding, namely, pillow cases, kitchen linens The Complainant also owns the domain name which reflects its GOOP trademark. This domain name was registered on February 2, 1996. The Domain Name was registered on January 22, 2024. According to a screenshot attached to the Complaint, the website of the Domain Name contains Pay-Per-Click (“PPC”) links to various websites. 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 Domain Name.
page 3 Notably, the Complainant contends that the Domain Name is confusingly similar to its registered GOOP trademark, which it incorporates in its entirety. The addition of “w” and “connect” does nothing to mitigate the impact of this incorporation, as it provides the same commercial impression and is virtually the exact same mark. Moreover, the addition of the “.com” suffix does nothing to prevent this confusion. Further, the Complainant argues that the Respondent has no rights or legitimate interests in the Domain Name, as the Respondent is neither a franchisee or otherwise affiliated with the Complainant, and there is no evidence that the Respondent’s use of the Domain Name relates to a bona fide offering of goods or services. The Respondent has no permission to use the Complainant’s trademark and is not conducting business under a corresponding name. The Complainant infers that the Respondent selected the Domain Name in an effort to profit from the resulting traffic misdirected to a domain confusingly similar to the Complainant’s well-known GOOP trademark. Additionally, the Complainant emphasizes that the Respondent has registered and is using the Domain Name in bad faith to benefit from misdirected traffic seeking information and options to purchase legitimate, authorized, and licensed merchandise from the Complainant. The Complainant argues that the Respondent’s use of a domain privacy service further evidences an intent to make it difficult for the trademark owner to protect its rights, as the Domain Name has been used only for a PPC landing page. The Complainant contends that the Respondent also appears to be a serial cybersquatter, as a review of UDRP decisions reveals that the Respondent has been a named in over 450 UDRP proceedings since 2012. Finally, the Respondent has set up mail exchange (“MX”)-records for the Domain Name, enabling it to send and receive emails, which could be used for fraudulent email communications. B. Respondent The Respondent did not reply to the Complainant’s contentions. 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 of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“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. The entirety of the mark is reproduced within the Domain Name. Accordingly, the 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 may bear on assessment of the second and third elements, the Panel finds the addition of the terms “w” and “connect” here do not prevent a finding of confusing similarity between the Domain Name and the trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. Then there is the addition of the generic Top-Level Domain (“gTLD”), here “.com”. As is generally accepted, the addition of a gTLD such as “.com” is merely a technical registration requirement and as such is typically disregarded under the first element confusing similarity test. WIPO Overview 3.0, section 1.11.1. The Panel finds the first element of the Policy has been established.
page 4 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 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 Domain Name such as those enumerated in the Policy or otherwise. 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 the present case, the Panel notes that the Complainant has substantiated the fact that its trademark GOOP, which has been registered and used, now benefits from worldwide public awareness. Several UDRP panels have determined that registering a domain name with knowledge of another company’s rights in a domain name, and with the intention to divert traffic, may serve as evidence of bad faith registration (see Digital Spy Limited v. Moniker Privacy Services and Express Corporation, WIPO Case No. D2007-0160; PepsiCo, Inc. v. “null”, aka Alexander Zhavoronkov, WIPO Case No. D2002-0562; and The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113). In this case the Panel finds it implausible that the registration of the Domain Name took place in good faith, and also notes the lack of convincing evidence from the Respondent otherwise. Thus, the Panel finds, based on the evidence available, that the Respondent likely had knowledge of the GOOP trademark when it registered the Domain Name. Furthermore, by using the Domain Name to host a PPC parking page, the Respondent creates a likelihood of confusion with the Complainant’s trademark and potentially obtains revenue from this practice. Previous UDRP decisions have considered this type of use sufficient to demonstrate bad faith (see Serta Inc. v. Charles Dawson, WIPO Case No. D2008-1474; see also Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415). In addition, as pointed out by the Complainant, the Respondent has set up MX-records for the Domain Name. Panels have held that the use of a domain name to set up email services with the intent to falsely imply an affiliation with the complainant supports a finding of bad faith. See bioMérieux v. Registration Private, Domains By Proxy, LLC / Milton Bardmess, WIPO Case No. D2020-3499.
page 5 Finally, the Panel visited the Center’s website, where cases filed with the Center are listed and the decisions are available for review online. The Respondent has been involved in over 450 cases since 2012, with over 100 decisions finding against the Respondent in 2023 and 2024 alone. This demonstrates that the Respondent is, as the Complainant asserts, a serial cybersquatter. The Panel has no reason to believe that this case is anything other than another case in the long line of cases brought against the Respondent for the unauthorized commercial use of well-known trademarks. The absence of a reply from the Respondent is further suggestive of bad faith from the Respondent in the present case. 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. /Ana María Pacón/ Ana María Pacón Sole Panelist Date: July 27, 2024
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