WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Care of Carl AB v. Melvin Aslamy, Arbetsklader A and O

Case No. D2018-0786

1. The Parties

The Complainant is Care of Carl AB of Borås, Sweden, represented by Ports Group AB, Sweden.

The Respondent is Melvin Aslamy, Arbetsklader A and O of Stockholm, Sweden.

2. The Domain Name and Registrar

The disputed domain name <careofcarl.shop> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 9, 2018. On April 9, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 9, 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 April 19, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 9, 2018. The Respondent submitted an email communication to the Center on May 2, 2018. On May 11, the Center transmitted an email to the Parties, notifying them of the commencement of panel appointment process.

The Center appointed Johan Sjöbeck as the sole panelist in this matter on June 4, 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 has submitted evidence that it is the owner of a number of trade trademark registrations, including the following:

Swedish trademark CARE OF CARL (word) with registration number 506442 for goods and services in class 25 and 35. The trademark was applied for on February 24, 2012, and registered on August 24, 2012.

European Union trademark CARE OF CARL (word) with registration number 011182491 for goods and services in class 18, 25 and 35. The trademark was applied for on September 12, 2012, and registered on February 27, 2013.

Norwegian trademark CARE OF CARL (word) with registration number 268516 for goods and services in class 18, 25 and 35. The trademark was applied for on September 13, 2012, and registered on November 30, 2012.

Swedish trademark C/O CARL CAREOFCARL.COM (device) with registration number 506443 for goods and services in class 25 and 35. The trademark was applied for on February 24, 2012, and registered on August 24, 2012.

European Union trademark C/O CARL CAREOFCARL.COM (device) with registration number 011184249 for goods and services in class 18, 25 and 35. The trademark was applied for on September 13, 2012, and registered on January 28, 2013.

Norwegian trademark C/O CARL CAREOFCARL.COM (device) with registration number 278908 for goods and services in class 18, 25 and 35. The trademark was applied for on June 16, 2014, and registered on November 17, 2014.

The disputed domain name <careofcarl.shop> was registered on July 23, 2017, and resolves to a website offering for sale work clothes.

5. Parties’ Contentions

A. Complainant

The Complainant is a Swedish company operating in the fashion industry selling clothes, underwear, shoes and accessories for men. The Complainant’s core business is to sell fashion items online including reselling international brands. Currently, the Complainant sells clothes online in Sweden, Norway and Denmark. The Complainant’s official website is “www.careofcarl.com”.

The disputed domain name <careofcarl.shop> consists of the Complainant’s trademark CARE OF CARL with the addition of the Top-Level Domain (TLD) “.shop” which increases the risk of confusion since selling clothes through a web shop is the Complainant’s primary business.

The Respondent is using the disputed domain name to provide goods in the fashion industry. The Complainant has not given the Respondent permission to register the Complainant’s trademark CARE OF CARL as a domain name or to offer goods and services under its trademark. Internet users searching for “Care of Carl” may be confused and believe that the Respondent’s products either belong to the Complainant or are in some way connected to the Complainant. The Complainant’s trademark CARE OF CARL was registered at least five years prior to the registration of the disputed domain name. Given that the Respondent is active in the same type of business, selling clothes, the Respondent must have been aware of the Complainant’s trademark and business when registering the disputed domain name. Thus, the Respondent registered the disputed domain name <careofcarl.shop> with the Complainant’s trademark CARE OF CARL in mind in order to commercially profit from the confusion.

The Complainant sent a cease and desist letter to the Respondent on August 11, 2017, and a reminder in February 2018. The Respondent did not reply.

B. Respondent

The Respondent claims that the phrase “care of carl” can be used as part of an address. The Respondent lived with a person called Carl and the Respondent’s mail arrived at his address, hence the choice of the disputed domain name.

The Respondent argues that it sells different types of clothes than the Complainant as the Respondent sells work wear and the Complainant sells fashion clothing. Customers who intend to purchase fashion clothing do not purchase work wear by accident.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in the disputed domain name; and

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

A. Identical or Confusingly Similar

The Complainant is, according to the submitted evidence, the owner of the registered trademark CARE OF CARL. The disputed domain name <careofcarl.shop> comprises the Complainant’s trademark CARE OF CARL in its entirety.

A difference between the disputed domain name <careofcarl.shop> and the CARE OF CARL trademark is the addition of the TLD suffix “.shop”. However, it is standard practice to disregard the top-level suffix under the confusingly similar test as the top-level suffix is merely considered a standard registration requirement. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) paragraph 1.11.

Having the above in mind, the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s trademark and that the Complainant has proven the requirements under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests with respect to the disputed domain name. The Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

(i) that it has made 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 prior to the dispute; or

(ii) that it is commonly known by the disputed domain name, even if it has not acquired any trademark rights; or

(iii) that it intends to make 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.

The Complainant’s use of the trademark CARE OF CARL predates the Respondent’s registration of the disputed domain name <careofcarl.shop> by nearly five years. The Complainant’s trademark is, among other things, registered for various types of clothing in class 25. The Complainant has not licensed or otherwise consented to the Respondent’s use of the trademark in connection with the disputed domain name, which is identical or confusingly similar to the Complainant’s trademark.

The Respondent has stated that the phrase “care of carl” lacks distinctiveness and that the phrase can be used as part of an address. However, the submitted evidence indicates that the Respondent is using the disputed domain name <careofcarl.shop> commercially to offer goods for sale that are similar, if not identical, to those protected by the Complainant’s older registered trademark CARE OF CARL. Having regard to all of the relevant circumstances in this case, the Panel finds that the Respondent’s use of the disputed domain name invokes a suggestion of affiliation with the trademark owner and does not constitute use in connection with a bona fide offering of goods or services within the contemplation of paragraph 4(c)(i) of the Policy.

Furthermore, there is no evidence in the case record indicating that the Respondent is the owner of any trademark rights or that the Respondent is commonly known by the disputed domain name. There is no evidence in the case record indicating that 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.

The Respondent has failed to invoke any circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy or otherwise, any rights or legitimate interests in respect of the disputed domain name <careofcarl.shop> and consequently the Panel finds that the Respondent has not successfully rebutted the Complainant’s prima facie case. Given that there is no evidence in the case record that refutes the Complainant’s submissions, the Panel concludes that the Complainant has also satisfied the requirement under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include without limitation:

(i) circumstances indicating the disputed domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain name; or

(ii) circumstances indicating that the disputed domain name was registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding disputed domain name, provided there is a pattern of such conduct; or

(iii) circumstances indicating that the disputed domain name was registered primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the disputed domain name has intentionally been used in an attempted to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on that website or location.

The Complainant has submitted evidence demonstrating that the Complainant’s trademark CARE OF CARL was registered approximately five years prior to the disputed domain name <careofcarl.shop>. It has been argued by the Complainant that the Respondent intentionally registered the disputed domain name in order to take advantage of the Complainant’s trademark by creating an association with the Complainant’s online clothing shop. On the website, to which the disputed domain name resolves, the Respondent offers work clothes for sale. The disputed domain name in combination with the TLD suffix “.shop” may increase the risk of confusion as Internet users may more easily be misled into believing that the disputed domain name and the website it resolves to are in some way associated with the Complainant’s online shop. Furthermore, the Panel notes that the Respondent ignored the Complainant’s cease and desist letter and continued to use the disputed domain name to sell clothes. Considering that the Respondent is using the disputed domain name for the same type of goods that the Complainant’s trademark is registered for and in the absence of any evidence to the contrary, the Panel agrees with the Complainant that the Respondent knew or should have known of the Complainant’s trademark CARE OF CARL when registering and using the disputed domain name <careofcarl.shop>.

Thus, the evidence in the case before the Panel indicates that the disputed domain name has intentionally been used in an attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the websites or of a product or service on the website.

There is no evidence in the case that refutes the Complainant’s submissions and the Panel concludes that the Complainant has proved the requirements under paragraph 4(b) of the Policy and that the disputed domain name <careofcarl.shop> has been registered and is being used in bad faith.

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 <careofcarl.shop> shall be transferred to the Complainant.

Johan Sjöbeck
Sole Panelist
Date: June 15, 2018