Complainant is John M. Earle, Johnny Cupcakes, Inc. of Weymouth, Massachusetts, United States of America ("United States"), represented by Schmeiser, Olsen & Watts, LLP, United States.
Respondent is Nick Sanchez of Lakewood, Ohio, United States, represented by Newman Du Wors, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 12, 2017. On January 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 13, 2017, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 January 24, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 13, 2017. In accordance with the Rules, paragraph 5(b), the due date for Response was extended to February 17, 2017. The Response was filed with the Center on February 18, 2017.
On February 14, 2017, Complainant filed additional materials with the Center. Complainant submitted an unsolicited supplemental filing on February 27, 2017.
The Center appointed Mark Partridge as the sole panelist in this matter on March 1, 2017. 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 clothing and apparel business that provides goods through various locations under the JOHNNY CUPCAKES trademark. The mark has been used since 2003 and registered since 2006. The mark is the subject of multiple registrations around the globe, notably the United States Trademark Registration No. 3,140,914 for JOHNNY CUPCAKES (registered on September 12, 2006) on the Principal Register. Complainant operates a website at "www.m", where Complainant sells its products under the mark JOHNNY CUPCAKES.
Respondent is identified as Nick Sanchez of Lakewood, Ohio, United States. Respondent registered the disputed domain name on November 6, 2014. The disputed domain name redirects visitors to a different website, "" ("Respondent's website"), that sells a variety of products, including apparel and home décor. 5. Parties' Contentions A. Complainant
Complainant asserts rights in the JOHNNY CUPCAKES trademark as evidenced by its registrations and use since 2003. Complainant argues that based on revenue and international recognition from consumers and media outlets, the JOHNNY CUPCAKES trademark is a well-known and distinctive mark.
Complainant asserts that the disputed domain name is identical or confusingly similar to its JOHNNY CUPCAKES mark.
Complainant argues that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Complainant is not affiliated with, does not endorse, and has not sponsored Respondent's use of the disputed domain name; (2) the disputed domain name directly copies Complainant's official domain name without permission and redirects visitors to another website; (3) Respondent has no trademark rights in JOHNNY CUPCAKES, is not commonly known as JOHNNY CUPCAKES, and does not make use of the disputed domain name in connection with a bona fide offering of goods or services; (4) Respondent is using Complainant's JOHNNY CUPCAKES brand for commercial gain to redirect Internet traffic to Respondent's website; and (5) Respondent is not making a fair use of the disputed domain name because Respondent is a direct competitor of Complainant, had prior knowledge of Complainant's JOHNNY CUPCAKES brand, and registered the disputed domain name to redirect visitors to Respondent's website.
Finally, Complainant asserts that Respondent registered and is using the disputed domain name in bad faith because: (1) Respondent has registered a domain name that is identical to Complainant's JOHNNY CUPCAKES trademark; (2) Respondent's use of the disputed domain name has confused and will continue to confuse Internet users as to the source of the website because the website domain name is identical to Complainant's official website at "www.m", and Respondent is a direct competitor of Complainant; (3) Respondent is using the JOHNNY CUPCAKES brand to increase traffic to its website and is intentionally deceiving Internet users to benefit financially; (4) Respondent provided false contact information to the Registrar; and (5) Respondent asserts an affiliation with Complainant and its JOHNNY CUPCAKES brand on Respondent's website.
Complainant requests the transfer of the disputed domain name from Respondent to Complainant. B. Respondent
Respondent alleges the following to support the denial of the transfer of the disputed domain name: (1) Respondent paid for the use of the domain name; (2) Respondent's intent was to use the disputed domain name in conjunction with an apparel brand created by Respondent and Respondent's family member named Jonny; (3) Respondent's retail store related to the disputed domain name does not sell t‑shirts; (4) Respondent's intention in using the disputed domain name is completely unrelated and non‑competitive with "www.m"; (5) Respondent included a product description at a subsection of Respondent's website, stating "as a courtesy [to complainants]… "I'm known as Jonny Cupcakes, but not to be confused with the guy from Boston, Johnny Cupcakes that sells cupcake shirts"; and (6) Complainant has worked with Respondent at multiple events and in connection with multiple companies. 6.1 Preliminary Matter: Admissibility of Late Response and Complainant's Supplemental Filings
The Panel notes that the Response was filed shortly after the due date for submission of the Response. The Panel further notes that Complainant has submitted two supplemental filings. In accordance with the powers of the Panel as set out in paragraphs 10 and 12 of the Rules, and in the interest of fairness to the Parties, the Panel has decided to admit both the late-filed Response, and Complainant's supplemental filings. 6.2 Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant is required to prove each of the following three elements:
(i) The disputed domain name is identical or confusingly similar to a trade mark or service mark in which Complainant has rights; and
(ii) 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 by Respondent in bad faith.
To result in a decision in Complainant's favor, Complainant is required to prove each of the three elements required under paragraph 4(a) of the Policy. A. Identical or Confusingly Similar
Complainant has rights in the JOHNNY CUPCAKES mark, as demonstrated by its many United States and international trademark registrations. Most notable of these registrations is the JOHNNY CUPCAKES United States Trademark Registration No. 3,140,914, which was registered on September 12, 2006. A trademark registration constitutes prima facie evidence of the validity of the mark. National Construction Rentals, Inc. v. T, Inc.,WIPO Case No. D2009-0147.
Where a disputed domain name includes an identical match to a complainant's mark, a complainant has satisfied the burden of proving that the domain name is identical or confusingly similar under paragraph 4(a)(i) of the Policy. See, e.g., Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. Polygenix Group Co.,WIPO Case No. D2000-0163.
It is a well-established rule that the Top-Level Domain ("TLD") may be disregarded in determining whether a trademark is identical or confusingly similar to a domain name. See Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd.,WIPO Case No. D2006-0762; Gerling Beteiligungs‑GmbH (GBG) v. World Space Corp,WIPO Case No. D2006-0223.
The disputed domain name incorporates Complainant's JOHNNY CUPCAKES mark in its entirety. The inclusion of the TLD ".co" does not diminish the confusing similarity.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant's JOHNNY CUPCAKES trademark and that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Under the second element of paragraph 4(a) of the Policy, a complainant is required to present a prima facie case that the respondent lacks rights of legitimate interests in the disputed domain name. After the complainant has made a prima facie case, the burden of production shifts to the respondent to present evidence demonstrating rights or legitimate interests in the disputed domain name. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455.
Paragraph 4(c) of the Policy instructs that rights and legitimate interests can be demonstrated by Respondent if:
"(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
Complainant asserts that Respondent has no rights or legitimate interests. Complainant argues that it is not affiliated with, does not endorse, and does not sponsor Respondent or its use of the disputed domain name. Respondent does not appear to have been commonly known by the phrase "Johnny Cupcakes". Respondent is a direct competitor of Complainant and had prior knowledge of the JOHNNY CUPCAKES trademark. Finally, Respondent has substantially copied Complainant's domain name which redirects visitors to another website owned by Respondent, and it does not present a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
Respondent replied to Complainant's assertions through the text of an email. Based on the record, Respondent contends that it owns, pays for and is intending to use the disputed domain name in connection with an apparel brand created "with [Respondent's] brother Jonny." Respondent contends that its use of the disputed domain name is unrelated and non-competitive with complainant because "[its] store doesn't even sell T-shirts."
When considering whether Respondent has rights or legitimate interests in the disputed domain name, it is necessary to consider the relationship of the Parties, their previous dealings and any knowledge that Respondent may have of Complainant's services. See Emmanuel Vincent Seal trading as Complete Sports Betting v. Ron Basset,WIPO Case No. D2002-1058. Additionally, where the disputed domain name is being used, or intends to be used, as a commercial site to sell products, that alone is insufficient for a finding of rights or legitimate interests if it appears that Respondent used the disputed domain name as a means of attracting Internet users to its site where it sells its products. See id.
Based on the record, this Panel finds that Complainant has satisfied its burden of presenting a prima facie case that Respondent lacks rights of legitimate interests in the disputed domain name. Respondent has almost identically reproduced Complainant's in the disputed domain name, which cuts against any bona fide offering or legitimate noncommercial or fair uses under paragraphs 4(c)(i) and (iii) or the Policy. Additionally, since Respondent admits being aware of Complainant's retail and apparel business, so much so that he was interested in forming a business relationship with Complainant, Respondent's contention that it intends to use the domain name in connection with an apparel brand that is "non-competitive" is not persuasive.
Consequently, the Panel finds the record is sufficient to show that it is more likely than not that Respondent does not have any rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists circumstances that shall be evidence of registration and use of a domain name in bad faith, including, among other reasons;
"(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."
Complainant argues that Respondent has registered the disputed domain name in bad faith by intentionally adopting Complainant's well-known JOHNNY CUPCAKES mark in violation of Complainant's rights. Further, Respondent's almost replication of Complainant's official domain name evidences use in bad faith because Internet users are likely to be confused by Respondent's use of the disputed domain name and Complainant received information that customers have already mistyped by instead entering . Complainant argues that Respondent has acted in bad faith by providing false contact information to the Registrar, GoD, LLC with which the disputed domain name was registered and by intentionally redirecting visitors to Respondent's own website.
Respondent has failed to defend its conduct regarding the "redirecting" of visitors to the disputed domain name. Respondent also has failed to defend the claim that Respondent provided false contact information to the Registrar.
Respondent's only justification for picking the disputed domain name is puzzling. Respondent claims the name is derived from a family member named "Jonny". If that is true, why did Respondent pick the different spelling – "Johnny" – matching Complainant's trademark? This hollow explanation suggests bad faith.
Respondent contends that its use of a "courtesy… product description stat[ing] 'I'm known as Jonny Cupcakes,' but not to be confused with the guy from Boston, Johnny Cupcakes that sells cupcake shirts'" evidences good faith. But, the existence of a disclaimer cannot by itself cure bad faith, when bad faith has been established by other factors. Pliva, Inc. v. Eric Kaiser,WIPO Case No. D2003-0316.
On the whole, this Panel finds that Complainant has sufficiently shown Respondent's bad faith registration and use of the disputed domain name, and has satisfied paragraph 4(a)(iii) 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 Complainant.
Mark Partridge
Sole Panelist
Date: March 16, 2017
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