The Complainant is NLY Scandinavia AB of Borås, Sweden, represented by Ports Group AB, Sweden.
The Respondent is Alexander Tchousov, PS Pay Solutions UG of Cologne, Germany.
The disputed domain name <nelly-model.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 6, 2018. On March 6, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 7, 2018, 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 March 21, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 10, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 11, 2018. On April 12, 2018, the Center received an email from the Respondent.
The Center appointed Knud Wallberg as the sole panelist in this matter on April 24, 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.
The Complainant is established in Sweden and began its business under the NELLY brand in 2004. The core of its business is the sale of fashion items, particularly clothing, underwear, shoes and accessories, online.
The Complainant holds several registrations of the NELLY trademark including European Union Trademark No. 010655298, NELLY, which was registered on June 28, 2012, in respect of goods in International Classes 14, 18 and 25.
The Complainant has also registered domain names containing the trademark, including <nelly.com>, which is used for the Complainant’s international website at “www.nelly.com”.
The disputed domain name was registered on May 24, 2013 and resolves to a website containing pictures of and information on a female model entitled Nelly and with a link to the website “Amazing Models”.
The Complainant contents that the disputed domain name is confusingly similar to its NELLY trademark since it includes the mark in its entirety with the addition of the generic term “model”.
The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not been authorized by the Complainant to register the disputed domain name and according to the Complainant there is no evidence that the Respondent is commonly known under the disputed domain name. In addition, the Respondent does not make noncommercial or fair use of the disputed domain name.
The Complainant claims that it is obvious from the content of the website that the Respondent was and is aware of the Complainant’s prior rights and of its business, and that the Respondent’s actions suggest that the disputed domain name was registered and used primarily to capitalize or otherwise take advantage of the Complainant’s trademark rights for commercial gain, with the likely intention of disrupting the Complainant’s business.
The Respondent did not file a formal Response but stated the following in an email dated April 12, 2018 to the Center in which he stated: “I’[m] not sure to understand the issue with this domain. Please explain the problem in more details.”
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(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.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the complainant.
Since all the requirements of paragraph 4(a) of the Policy must be met, the failure on the part of the Complainant to demonstrate one element of the Policy will result in failure of the Complaint in its entirety. Accordingly, in light of the Panel’s below findings regarding the issue of registration and use in bad faith, it is unnecessary for the Panel to decide whether the disputed domain name is identical or confusingly similar to the Complainant’s trademark or whether the Respondent has any rights or legitimate interests in the disputed domain name.
The overall burden of proof for establishing that the Respondent registered and is using the disputed domain name in bad faith lies with the Complainant.
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered, or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location”
The examples listed in paragraph 4(b) of the Policy are not exhaustive of all circumstances from which bad faith registration and use may be found, but in essence a finding of bad faith requires that there is a degree of targeting of the Complainant or its mark, or at the very least that the Respondent must have had the Complainant or its trademark in mind when selecting the disputed domain name. See Intellect Design Arena Limited v. Moniker Privacy Services / David Wieland, iEstates.com, LLC, WIPO Case No. D2016-1349; The Perfect Potion v. Domain Administrator, WIPO Case No. D2004-0743et al.
The disputed domain name resolves to a website that contains pictures of and information on a female model that is called “Nelly” on the website. Since Nelly is a female given name that is also frequently used as a nickname, the name may be used by many others than the Complainant and in many other contexts.
In the view of this Panel there is no evidence that the Respondent was aware of the Complainant or its trademark rights prior to the Respondent’s registration of the disputed domain name. Further, and contrary to the claim made by the Complainant, the content of the website does not suggest any connection between the model that is depicted on the website and the Complainant’s business, and there is no indication that the disputed domain name is used to capitalize or otherwise take commercial advantage of the Complainant’s trademark rights or is used with the intention of disrupting the Complainant’s business.
The Panel thus finds that the Complainant has failed to prove that the disputed domain name was registered and is used in bad faith under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, the Complaint is denied.
Date: May 9, 2018
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