The Complainant is GmbH of Aschheim, Germany, represented by KLAKA Rechtsanwälte, Germany.
The Respondent is Vickey Parchani of Parramatta, New South Wales, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with Crazy Domains (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 22, 2013. On October 22, 2013, the Center transmitted by email to Web Address Registration Pty Ltd a request for registrar verification in connection with the disputed domain name. After several reminders, on November 13, 2013, Crazy Domains transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 18, 2013.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy” or “.auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 19, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 9, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 10, 2013.
The Center appointed James A. Barker as the sole panelist in this matter on December 19, 2013. 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 clothing retailer and sells its products over the Internet.
The Complainant is the owner of international mark registrations for MYTHERESA. The mark is registered in classes 25, 35, and 38 in relation to online retail services related to clothing, and clothing and services relating thereto. The mark is registered in relation to various countries, including Australia where the Respondent has her address. The earliest of the Complainant’s marks has a priority of April 2006.
In addition, “mytheresa” is the company name of the Complainant. The Complainant has been incorporated under that name since January 2001. The Complainant also owns the domain name which it registered in October 2005.
Although not identified in the Complaint, the Complainant has been a successful complainant in previous decisions under the Uniform Domain Name Disputed Resolution Policy (“UDRP”), which recognised its rights in its MYTHERESA mark: GmbH v. ICS INC.,WIPO Case No. D2013-0810; GmbH v. Domain Admin Private Registrations Aktien Gesellschaft,WIPO Case No. D2013-0904.
According to the details confirmed by the Registrar, the disputed domain name was registered by Respondent on January 7, 2013.
There is little evidence in the case file about the business of the Respondent. From information in the Complaint, it appears that the Respondent is a sole trader, trading under the name of “parchani web solution”. 5. Parties’ Contentions A. Complainant
The Complainant makes the following three allegations, in accordance with paragraph 4(a) of the Policy:
Firstly, the Complainant alleges that the disputed domain name is relevantly identical to its registered marks for MYTHERESA.
Secondly, the Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not found that the Respondent has any registered trademarks, trade names or personal names corresponding to the disputed domain name. The Respondent is not using the disputed domain name in any way that would give her legitimate interests. The Respondent has no license or authorization of any kind from the Complainant to use the designation “.au”.
Thirdly, the Complainant alleges that the Respondent has registered and used the disputed domain name in bad faith. The Complainant has been using its marks and a corresponding domain name since 2006 in Europe, the United States of America and Australia. The Complainant is also the registrant of marks with effect in Australia. Against this background, the Complainant says that it is obvious that the Respondent must have been aware of the Complainant’s prior rights in the designation “mytheresa”. The Complainant alleges that the Respondent registered the disputed domain name primarily for the purpose of transferring the registration to another person for valuable consideration in excess of the Respondent’s out-of-pocket costs.
In this connection, the Complainant provides evidence of communications between the parties in October 2013, in which the Complainant asked whether the disputed domain name was available for sale and what the price was. In those exchanges, the Respondent states that “I registered this domain for my website” (however no details of that site are provided) and asked the Complainant why it was interested. The Complainant’s response was that “the domain is a gift for a friend”. After some further correspondence, and an initial offer from the Complainant of USD 150, the Respondent requested USD 20,000.
In relation to bad faith use, the Complainant states that the disputed domain name was used recently in connection with a ‘parking’ website. The evidence the Complainant provides is of a bare website, apparently maintained by the Registrar, which states that the disputed domain name “is registered and parked with Crazy Domains”. No other links appear on that website, other than those associated with the Registrar. B. Respondent
The Respondent did not reply to the Complaint, nor make any other communication in connection with this case. 6. Discussion and Findings
For the Complaint to succeed, under paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a name, 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 was registered in bad faith or subsequently used in bad faith.
The onus is on the Complainant to establish each of the above circumstances. These circumstances are discussed below. The Panel notes that the Policy is, with some notable exceptions, substantially similar to the UDRP and, as such, the Panel has drawn on authority concerning the UDRP, in relation to similar terms of the Policy. A. Identical or Confusingly Similar
The Complainant has provided evidence that it has rights in a registered mark for MYTHERESA.
The Complainant argues that the disputed domain name is identical to its registered mark.
It is a well-established principle under the Policy that the “.” extension is to be disregarded for the purpose of comparing a domain name to a mark. Disregarding that extension, it is self-evident that the disputed domain name is identical to the Complainant’s registered mark.
For these reasons, the Panel finds that the Complainant has established that the disputed domain name is identical to the Complainant’s mark in which it has rights. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to establish that the Respondent has no rights or legitimate interests in the disputed domain name. This paragraph requires the Complainant to at least present a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once the Complainant has made a prima facie case, the burden shifts to the Respondent to refute it. See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
The Complainant has presented a bare case against the Respondent in this connection. Essentially, the Complainant has asserted that the Respondent has no license from the Complainant to use its mark, and the Complainant can discover no legitimate reason for the Respondent to use the disputed domain name.
The Respondent did not submit a reply. There is little evidence in the case file as to what motivated the Respondent to register the disputed domain name. The only evidence suggestive of such a motivation is the Respondent’s claim, in an email to the Complainant, that she registered the disputed domain name in connection with a website. But the purpose or features of such a website were not identified in those communications. There is no evidence in the case file that the disputed domain name has been used in connection with any operating website. There is otherwise no evidence in the case file that suggests some legitimate connection between the Respondent and the disputed domain name. Neither does the domain name appear to this Panel to be descriptive or generic, such that it might have a number of associations unconnected with the Complainant and which other parties may have rights to register for this reason.
In these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered or Subsequently Used in Bad Faith
Under the Policy, bad faith may be found where a respondent registers or uses a domain name for the purpose of unfairly exploiting the trademark rights of another.
There is little direct evidence in this case about the Respondent’s motivation in registering the disputed domain name. That disputed domain name was registered a year ago. The Respondent has not used it in connection with an active website. There is little evidence of the Respondent’s business and no reply from the Respondent herself. In these circumstances, the issue of bad faith must be determined on circumstantial evidence.
The Complainant contends that the Respondent registered the domain name primarily for the purpose of selling it to the Complainant for valuable consideration in excess of her out-of-pocket expenses. If this was the case, it would constitute evidence of bad faith in accordance with paragraph 4(b)(i) of the Policy. The Complainant’s evidence is a short series of emails between an apparent representative of the Complainant (although not identified in those emails as such) and the Respondent. In this context, the Complainant approached the Respondent with an inquiry about purchasing the disputed domain name, under the pretext of purchasing it as a gift. An initial offer from the Complainant of USD 150 was refused by the Respondent. In response to a further query, the Respondent then asked for USD 20,000. There is no evidence of any further communications between the parties.
In this Panel’s view, this is not strong evidence that the Respondent was primarily motivated by the prospect of selling the disputed domain name to the Complainant or a competitor. But then, little of the direct evidence in this case is particularly strong, one way or the other.
However, the Panel considers that the circumstantial evidence is suggestive that the Respondent was aware of the Complainant’s mark, and is likely to have registered it to exploit its trademark value. This is for the following reasons:
The Complainant’s mark does not appear to have a descriptive or generic meaning. While the Complainant provided little evidence of the reputation of its mark, there was no evidence that the mark has an association unconnected with the Complainant. A simple Google search for “mytheresa” provides top results that relate entirely to the Complainant. The Complainant has also been in business for over 10 years. The Complainant’s rights have been previously recognised in decisions under the UDRP. The Respondent has registered the disputed domain name identical to the Complainant’s mark, and there is no evidence that the Respondent has any rights or legitimate interests in that domain name. The Respondent has chosen to submit no Response to the allegations made by the Complainant.
With this evidence taken together, the Panel considers it is likely that the Respondent was aware of the Complainant and registered the disputed domain name to take some unfair advantage of its obvious association with the Complainant’s mark. For this reason, the Panel finds that the disputed domain name was at least registered in bad faith. This is sufficient for a finding of bad faith against the Respondent under the Policy. 7. Decision
For all 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 the Complainant.
James A. Barker
Sole Panelist
Date: January 2, 2014
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