WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Nextten Stauer, LLC v. Registration Private, Domains By Proxy, LLC / I S, ICS INC

Case No. D2017-2432

1. The Parties

The Complainant is Nextten Stauer, LLC of West Burnsville, Minnesota, United States of America (“United States”), represented by ThompsonMcMullan, P.C., United States.

The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States / I S, ICS INC of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <wwwstauervip.com> 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 December 8, 2017. On December 8, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 11, 2017, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 15, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 4, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 5, 2018.

The Center appointed Alistair Payne as the sole panelist in this matter on January 14, 2018. 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 operates a business as an international retailer specializing in jewellery and watches. It owns numerous trade mark registrations for its STAUER mark, including in the European Union, Australia, New Zealand and Thailand and also in the United States. In particular, it owns United States trade mark registration number 78377258 filed on March 2, 2004 and registered on July 4, 2006. It operates a website offering jewellery and watches for sale at “www.stauer.com” which domain name has been registered since May 6, 2003. In addition for its best customers the Complainant registered the domain name <stauervip.com> on January 27, 2016 and has subsequently maintained a website at this domain name aimed at these customers.

The disputed domain name was registered on October 30, 2017 and resolves to a website that features pay- per- click links to sites selling jewellery and watches.

5. Parties’ Contentions

A. Complainant

The Complainant submits that it has traded under the mark STAUER since at least August 2003. It says that it owns registered trade mark rights in its STAUER mark as noted above. It notes that the disputed domain name wholly incorporates its mark which it submits is sufficient to support a finding of confusing similarity. In addition, the Complainant submits that by registering the disputed domain name which only differs from the Complainant’s domain name <stauervip.com> by the addition of a “.”, the Respondent has clearly sought to create a confusingly similar domain name.

The Complainant submits that the Respondent is not known by the “stauer” name or mark and has not made any legitimate or bona fide offering of goods or services from the website at the disputed domain name but rather is diverting Internet users to a page that links to products that directly compete with the Complainant’s goods in order to collect click-through revenue from advertising links. The Complainant says that this does not amount to legitimate noncommercial or fair use and that the Respondent has in effect knowingly and intentionally sought to confuse consumers seeking the Complainant’s websites.

As far as bad faith is concerned the Complainant says 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 mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website at the disputed domain name. The Complainant says that the Respondent’s registration and use of the disputed domain name that differs from the Complainant’s domain name <stauervip.com> only by the omission of a “.” amounts to typosquatting.

The Complainant notes that it sent a cease and desist letter to the Respondent on November 9, 2017 and then again on November 27, 2017 but received no response to either letter. The Complainant also notes that the Respondent has a history of registering domain names in bad faith on numerous occasions, all of which resulted in the transfer or cancellation of the domain name at issue. Finally, the Complainant notes that even if the advertising links on the Respondent’s website are automated the Respondent remains responsible for the uses to which it is put.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has demonstrated that it owns various trade mark registrations for its STAUER mark including United States trade mark registration no. 78377258 filed on March 2, 2004, and registered on July 4, 2006. The Panel finds that the Complainant has shown that it owns trade mark rights in terms of the Policy in its STAUER mark.

The disputed domain name wholly incorporates the STAUER mark and the only difference from the Complainant’s mark is the addition of the common abbreviation “VIP”. The Panel considers that the STAUER mark is the distinctive element of the disputed domain name and that the addition of “VIP”, which is a commonly used abbreviation in English and other languages, does not distinguish it from the Complainant’s mark. In addition, the Panel notes that the Complainant’s customers who are familiar with its website at the domain name <stauervip.com> are at a very significant risk of confusing this domain name with the disputed domain name. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s STAUER mark and that the Complaint succeeds under the first element of the Policy.

B. Rights or Legitimate Interests

The Complainant has submitted that the Respondent is not known by the “Stauer” name or mark and has not made any legitimate or bona fide offering of goods or services from the website at the disputed domain name. It says that the Respondent is rather diverting Internet users to a page that links to products that directly compete with the Complainant’s goods in order to collect click-through revenue from advertising links and that this is not noncommercial or fair use and amounts, in effect, to the Respondent having knowingly and intentionally sought to confuse consumers seeking out the Complainant’s websites.

The Respondent has not rebutted the prima facie case made out by the Complainant under this head and as a result and for the reasons set out under Part C below, the Panel finds that the Complainant also succeeds under this element of the Policy.

C. Registered and Used in Bad Faith

The disputed domain name was only registered on October 30, 2017, many years after the first of the Complainant’s trade mark registrations for STAUER and sometime after the date on which the Complainant started using its domain name <stauervip.com> aimed at its best customers. The Panel notes that the STAUER name and mark is quite distinctive, that there is no evidence that the Respondent is known by or has used this mark. The disputed domain name differs from the Complainant’s pre-existing domain name by the addition of “www” and appears to be calculated to confuse Internet users. Overall, the Panel finds that this is more than a coincidence and infers on the balance of probabilities that the disputed domain name was registered in bad faith.

The disputed domain name resolves to a “pay-per-click” parking site which features links to sites that the Complainant asserts sells competing jewellery and watches. Under paragraph 4(b)(iv) of the Policy, intentionally attempting to attract for commercial gain, Internet users to a website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the respondent’s website amounts to evidence of registration and use in bad faith. This is precisely what the Respondent appears to have done in this case and the Panel finds that the Complainant has made out its case in terms of paragraph 4(b)(iv) of the Policy. The fact that the Respondent failed to respond to the Complainant’s cease and desist letters and the evidence that the Respondent has a history of registering domain names in bad faith, only serves to reinforce the Panel’s view of the Respondent’s bad faith.

As a result, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and the Complaint also succeeds under this 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 <wwwstauervip.com> be transferred to the Complainant.

Alistair Payne
Sole Panelist
Date: January 22, 2018