WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

DBA LUX 1 v. Rashanda Minniefield

Case No. D2012-0120

1. The Parties

The Complainant is DBA LUX 1 of Luxembourg, Luxembourg, represented by Cabinet Germain & Maureau, France.

The Respondent is Rashanda Minniefield of Florida, United States of America (“USA” or “US”).

2. The Domain Name and Registrar

The disputed domain name <shockabsorbersportsbra.org> is registered with Wild West Domains, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 24, 2012. On January 24, 2012, the Center transmitted by email to Wild West Domains, LLC a request for registrar verification in connection with the disputed domain name. On the same date, Wild West Domains, 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 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 30, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 19, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 20, 2012.

The Center appointed Mihaela Maravela as the sole panelist in this matter on February 27, 2012. 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.

The Panel notes that the Registrar has confirmed the specific language of the registration agreement as English. In these circumstances, the Panel is satisfied that English is appropriate as the default language of the proceedings in accordance with paragraph 11 of the Rules.

4. Factual Background

The following facts have been alleged by the Complainant and not refuted by the Respondent.

The Complainant is a DBA LUX 1, a Luxembourg corporation, affiliated to the DBApparel Group, a market leader in design, manufacture and distribution of branded intimate apparel with a strong presence in France, Germany, Italy, the United Kingdom of Great Britain and Northern Ireland, South Africa, Belgium, USA and emerging markets. Among the renowned brands distributed by DBApparel Group are DIM, PLAYTEX, LOVABLE, NUR DIE, ABANDERADO and WONDERBRA as well as SHOCK ABSORBER.

The Complainant is the owner of the registered trademark SHOCK ABSORBER which is used on a worldwide scale in relation with woman bras specifically designed for the practice of sports.

The disputed domain name was registered on December 29, 2011.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s earlier trademark SHOCK ABSORBER which is entirely reproduced therein. The addition of the descriptive terms “sportsbra” does not deprive the mark SHOCK ABSORBER of its distinctiveness and individuality, but furthermore enhances the risk of association in the public’s mind between the Complainant and the disputed domain name.

Also, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not legally or economically related to the Complainant and has never been authorized by the Complainant to use or register in any manner the name Shock Absorber Sports Bra, including as a domain name. The Respondent is not making any legitimate noncommercial or fair use of the disputed domain name.

The Complainant contends that the Respondent was very well aware of the Complainant’s business and rights when it registered the disputed domain name since the screenshots of the webpage to which the disputed domain name resolves reflect that it relates exclusively to woman underwear and in particular sport bras, which happen to be the very product in respect of which the Complainant uses its trademark. In addition, the Complainant contends that the pictures of sports bras displayed on the Respondent’s website are in fact photos that have been pirated from the Complainant’s commercial literature. According to the Complainant’s arguments, the intent of the Respondent is to cause confusion among the public, in order to attract Internet users to a web page that may appear at first sight as if it was an official web site of the Complainant, but in fact promotes and offers for sale competing bras that are not genuine SHOCK ABSORBER. The Respondent’s web page contains sponsored links, related to competitors of the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Because the Respondent has defaulted in providing a response to the allegations of the Complainant, the Panel will decide this administrative proceeding on the basis of the Complaint (Rules, paragraph 14(a)), and certain factual conclusions may be drawn by the Panel on the basis of the Complainant’s undisputed representations (id., paragraph 15(a) of the Rules, which reads as follows: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”).

Applied to this case, paragraph 4(a) of the Policy directs that the complainant must prove each of the following:

(i) that the domain name registered by the respondent is identical or confusingly similar to the trademark in which the complainant has rights; and,

(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and,

(iii) that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

A panel must find that: (a) the Complainant has a trademark or service mark; and (b) that the domain name is identical or confusingly similar to that trademark or service mark.

Here, the Complainant has demonstrated ownership of the registered trademark SHOCK ABSORBER by submitting the community trademark no. 000024562 registered on March 23, 1998 and the US trademark registration no. 2051795 registered on April 15, 1997. The registrations submitted predate the registration of the disputed domain name.

The question of confusing similarity for the purpose of the Policy requires a comparison of the disputed domain name with the trademark.

The Complainant’s trademark SHOCK ABSORBER is entirely incorporated in the disputed domain name <shockabsorbersportsbra.org>. The addition of the generic terms “sports bra” does not confer a distinctive character to the disputed domain name, in relation to the Complainant’s trademark. See DBA LUX 1 v. Speedeenames.com, Andrea Fletcher, WIPO Case No. D2011-1064 and decisions cited therein.

The addition of the generic top-level domain suffix (gTLD) “.org” is without legal significance from the standpoint of comparing the disputed domain name <shockabsorbersportsbra.org> to SHOCK ABSORBER since the use of a gTLD suffix is a technical requirement of a domain name registration, “.org” is one of only several such gTLDs, and “.org” does not serve to identify a specific enterprise as a source of goods or services. See also Ticketmaster Corporation v. DiscoverNet, Inc., WIPO Case No. D2001-0252; Williams-Sonoma, Inc. d/b/a Pottery Barn v. John Zuccarini d/b/a Country Walk, WIPO Case No. D2002-0582 concerning the inclusion of a gTLD.

In the absence of any argument to the contrary from the Respondent, this Panel concludes that, on balance, the disputed domain name is confusingly similar to the Complainant’s trademarks. See also Reuters Limited v Global Net 2000, Inc, WIPO Case No. D2000-0441.

The Panel therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate a respondent’s rights or legitimate interests in a disputed domain name:

(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is 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.

The consensus view of WIPO UDRP panels concerning the burden of establishing rights or legitimate interests in respect of the domain name is as follows:

“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […]. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.” (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO Overview 2.0”), paragraph 2.1.)

In the present case the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests (See, e.g. Barbara Brennan Inc. v. Texas International Property Associates, WIPO Case No. D2008-0351; Sanford Winery Company v. Matt Geiser,WIPO Case No. D2008-0210).

By not submitting a Response, the Respondent has failed to invoke any circumstances, which could demonstrate any right or legitimate interest in the disputed domain name.

The Complainant has adduced evidence that the disputed domain name is used solely for commercial gain. As such, the website located at the disputed domain name <shockabsorbersportsbra.org> appears to indicate that the Respondent is using the website to promote the sale of competing goods, with no evidence of rights or legitimate interests as being a bona fide offering of goods and services, a business name, or use of the disputed domain name in the normal course of business.

However, when the Panel tried to type in the disputed domain name prior to drafting this decision, it discovered that the content of the website for which the Complainant provided evidence of use (for what seems to be an offer of competing products) has changed in the sense that an error occurred when trying to enter the website and the requested URL could not be retrieved.

The Respondent has not demonstrated any reason as to why the content of the website appears to have been changed following the filing of the Complaint.

Irrespective of such change, as other UDRP panels have held, there is no evidence in the record that the Respondent is in any way associated with the Complainant, that the Respondent is now or was ever known by the disputed domain name, that the Respondent possesses any trademark or service mark rights in the disputed domain name, or that the Respondent has other authority or permission to use the Complainant’s marks. Indeed, the Complainant states expressly that the latter is not the case. See, e.g., Calvin Klein Trademark Trust and Calvin Klein, Inc. v. Jonathan Dardashti, WIPO Case No. D2001-1158 (finding no legitimate interest because, inter alia, the complainant had not licensed mark to the respondent). Furthermore, by not submitting a response to the Complaint, the Respondent has failed to invoke any other circumstance that might demonstrate, pursuant to paragraph 4(c) of the Policy, that it holds some rights or legitimate interests in the disputed domain name. Ahead Software AG. v. Leduc Jean, WIPO Case No. D2004-0323; see also Nintendo of America, Inc. v. Tasc, Inc. and Ken Lewis, WIPO Case No. D2000-1563 (respondent’s default alone sufficient to conclude that it had no rights or legitimate interests in the domain name). See V&V Supremo Foods, Inc. v. [email protected], WIPO Case No. D2006-1373.

The failure of the Respondent to reply to the Complainant’s contentions and the evidence adduced by the Complainant lead the Panel to find that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel could not find any justification, rights or legitimate interests on the part of the Respondent to the words comprising the disputed domain name. See in this respect Hermes International v. Yang Fen, WIPO Case No. D2010-2272.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

To fulfill the third requirement, the complainant must prove that the domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out a number of circumstances that shall, in particular but without limitation, be evidence of registration and use of a domain name in bad faith:

(i) Circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant who is the owner of the trademark, or to a competitor of the complainant, for a valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name.

(ii) Circumstances indicating that the respondent has registered the domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct.

(iii) Circumstances indicating that the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor.

(iv) By using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to his website 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 the said website location or of a product or service on that website location.

The Panel agrees with the contention alleged by the Complainant that the Respondent had knowledge of the Complainant’s trademarks when it registered and started using the disputed domain name. The factors that were taken into account to conclude that the date of registration of the disputed domain name which was only as recent as end of 2011, compared to the date when the Complainant started using and registered the SHOCK ABSORBER trademark, or the widespread use of the SHOCK ABSORBER trademark by the Complainant.

The disputed domain name does not feature any active content. However there is no evidence in the record to indicate that the Respondent has used the disputed domain name or intends to use the disputed domain name in connection with a bona fide offering of goods and services distinct from the goods provided by the Complainant under the SHOCK ABSORBER trademarks. As established in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the passive holding of a domain name following its bad faith registration can satisfy the requirements of paragraph 4(a)(iii) of the Policy if the circumstances of respondent’s behaviour are indicative of bad faith.

Other factors which were considered by the Panel as indicative of bad faith registration and use of the disputed domain name are:

- The Respondent’s lack of response to the Complaint. See Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications, WIPO Case No. D2001-0210.

- The Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name as per paragraph 4(b) of the Policy.

- The apparent change of the content of the website after the Notification of Complaint. The change to the Respondent’s websites further supports a finding of bad faith. See Maplin Electronics Limited v. Lee Jeongsoon, WIPO Case No. D2006-0011 (change in website after receiving complaint was evidence of bad faith) or V&V Supremo Foods, Inc. v. [email protected], WIPO Case No. D2006-1373.

- Any use of the disputed domain name would lead the public to the conclusion that it is, together with its connecting website, associated with the Complainant.

- Also, as noted above, the Panel has concluded that the Respondent had knowledge of the Complainant’s trademark at the time of registration of the disputed domain name. The Respondent provided no explanations for which it registered the disputed domain name.

This Panel finds that the disputed domain name has been registered and is being used in bad faith, in accordance with the Policy. The third requirement of said Policy has been met.

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 <shockabsorbersportsbra.org> be transferred to the Complainant.

Mihaela Maravela
Sole Panelist
Dated: March 12, 2012