The Complainant is Moda Operandi, Inc., United States of America (“United States”), represented by Hand Baldachin & Amburgey, LLP, United States.
The Respondent is John Harding, Moda International, Australia. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2021. On April 23, 2021, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the Disputed Domain Name. On April 27, 2021, GoDaddy.com, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that 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 April 28, 2021. In accordance with the Rules, paragraph 5(a), the due date for Response was May 18, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 19, 2021. The Center appointed Nicholas Weston as the sole panelist in this matter on May 25, 2021. 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 corporation organized under the laws of the United States that operates a fashion retail business with an online presence in numerous countries selling clothing, accessories, and home furnishings. The Complainant holds registrations for the trademark MODA OPERANDI in numerous countries, including United States Reg. No. 4,266,390, registered on January 1, 2013; a “wavy ribbons” version of that trademark was registered in Australian Registered Trade Mark No 1452161 on August 22, 2011; and, a plain text version, Australian Registered Trade Mark No. 2060438 for the mark MODA OPERANDI, was registered on December 2, 2019. The Complainant is also the owner of the domain name The Complainant has provided the evidence that the Disputed Domain Name resolves to an online fashion store substantially the same, in many respects, to the website operated by the Complainant. 5. Parties’ Contentions A. Complainant The Complainant cites its trademark registrations of the trademark MODA OPERANDI in various countries, including the United States and Australia, as prima facie evidence of ownership. The Complainant submits that the mark MODA OPERANDI is distinctive and that its rights in that mark predate the registration of the Disputed Domain Name The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because the Respondent has no trademark rights in, or license to use, the MODA OPERANDI mark. The Complainant claims that the Disputed Domain Name Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith. On the issue of registration, the Complainant contends that the Respondent could not have registered the Disputed Domain Name without having the MODA OPERANDI trademark in mind given that the fancy form of the MODA OPERANDI trademark was registered in Australia in August 2011 and the plain text version in December 2019. On the issue of use, the Complainant claims that the Respondent operates a website that “has copied the design, the images, and the totality of Complainant’s website…to capitalize on consumer recognition of the MODA OPERANDI mark and the website at modaoperandi.com”. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following: (i) that the disputed domain name is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights; and The Complainant must first establish is that the Disputed Domain Name is identical with, or confusingly similar to, the Complainant’s name, trade mark or service mark by demonstrating that it has rights in a trade mark at the date the Complaint was filed and, if that is the case, the Disputed Domain Name must also be identical or confusingly similar to the trademark. This Panel finds that the Complainant has rights in the MODA OPERANDI trademark acquired through use and registration. The Panel also finds that the Disputed Domain Name, which contains the MODA OPERANDI in its entirety, is confusingly similar to the MODA OPERANDI trademark. In considering the element of paragraph 4(a)(i) of the Policy, the contents of a website are typically not relevant, albeit relevant for the assessment of the second and third elements. In The Crown in Right of the State of Tasmania trading as “Tourism Tasmania” v. Gordon James Craven,WIPO Case No. DAU2003-0001, the panel held that: “the test of confusing similarity under the Policy is confined to a comparison of the Disputed Domain Name and the name or trademark alone, independent of the other marketing and use factors usually considered in trademark infringement or unfair competition cases.” Accordingly, the Panel finds that the Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the Disputed Domain Name. Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name: (i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or (ii) the Respondent (as an individual, business, or other organisation) has been commonly known by the disputed domain name even if the Respondent has acquired no trademark or service mark rights; or (iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the MODA OPERANDI trademark. The Complainant has prior rights in the MODA OPERANDI trademark which precede the Respondent’s registration of the Disputed Domain Name by nine years (as claimed by the Complainant). The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name, and the burden is thus on the Respondent to produce evidence to rebut this presumption, see: GlobalCenter Pty Ltd v. Global Domain Hosting Pty Ltd, WIPO Case No. DAU2002-0001. The Respondent has failed to submit a Response and so has not shown that it has acquired any trademark rights in respect of the Disputed Domain Name or that the Disputed Domain Name is used in connection with a bona fide offering of goods or services. To the contrary, this Panel accepts the Complainant’s uncontested evidence that the Disputed Domain Name “resolves to a page that is a nearly exact copy of Complainant’s website”. In all the circumstances of this case, such use does not amount to a bona fide offering of goods or services under the Policy. There has been no evidence adduced to show that the Respondent has been commonly known by the Disputed Domain Name, nor does any of the evidence demonstrate that the Respondent is making legitimate noncommercial or fair use of the Disputed Domain Name. The Panel therefore finds that the Complaint fulfils the second condition in paragraph 4(a)(ii) of the Policy. C. Registered or Subsequently Used in Bad Faith The third element of the Policy that the Complainant must also demonstrate is that the disputed domain name has been registered or subsequently used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both. The evidence that the Respondent registered and has used the Disputed Domain Name in bad faith is overwhelming. The onus is on the Respondent to make the appropriate enquiries. Paragraph 2 of the Policy clearly states: “It is your [domain-name holder’s] responsibility to determine whether your domain name registration infringes or violates someone else’s rights.” The Disputed Domain Name registered by the Respondent, the unlikelihood that registering such Disputed Domain Name containing the Complainant’s arbitrary word trademark attributable to pure coincidence and the apparent lack of any good faith attempt to ascertain whether or not the Respondent was registering and using someone else’s trademarks, such as by conducting trademarks searches or search engine searches, supports a finding of bad faith, see Flexopack SA Plastics Industry v Flexopack Australia Pty Ltd [2016] FCA 235; 118 IPR 239 at [111] (“If a person does not take steps that an honest and reasonable person would take to ascertain the ability to use a trade mark, and has in effect taken a risk, then they are not acting in good faith”). The Panel finds that the Respondent must have been aware of the relevant trademark. The Panel finds that the Respondent has taken the Complainant’s trademark and incorporated it into the Disputed Domain Name without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademarks by diverting Internet users to, what is ostensibly, its copy of the Complainant’s website. This Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s name or mark as to the source, sponsorship, affiliation, or endorsement of that website or of a product or service on that website contrary to paragraph 4(b)(iv) of the Policy. Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of 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 Disputed Domain Name Nicholas Weston
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered or subsequently used in bad faith. A. Identical or Confusingly Similar
Sole Panelist
Date: June 4, 2021
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