The disputed domain names <cleanconfidence.com>, <cleanconfidence.net>, <cleanconfidence.org>, <confidentu.com> are 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 20, 2018. On December 21, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. The Complainant submitted an amendment to the Complaint on December 21, 2018. On December 21, 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 January 4, 2019. The Center received various emails from the Parties between December 21, 2018, and January 22, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 24, 2019. The Response was filed with the Center on January 24, 2019. The Complainant submitted a Supplemental Filing on January 24, 2019, following which the Respondent filed a Motion To Exclude Complainant’s Supplemental Filing on January 26, 2019.

The Center appointed Warwick A. Rothnie as the sole panelist in this matter on February 4, 2019. 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 is a supplier of products for sexual health and well-being. It has been marketing products for sexual health under the trademark CONFIDENTU since May 2017. It also markets a product under the trademark CLEAN CONFIDENCE which is a high fibre bowel cleansing product. Amongst other things, the Complainant markets its products from a website at “www.confidentu.net”.

The Complainant has registered two trademarks in the United Kingdom:

- United Kingdom Trademark No. 3247129 for CONFIDENTU in respect of relevant goods in International Class 5. The trademark application was made on July 30, 2017, and was formally entered on the Register on October 20, 2017.

- United Kingdom Trademark No. 3327055 for CLEAN CONFIDENCE in respect of relevant goods in International Classes 3 and 5. The trademark application was made on July 25, 2018, and formally entered on the Register on October 19, 2018.

In addition, the Complainant has pending applications in the United States for:

- Trademark Application No. 88161321 for CONFIDENTU for a range of dietary supplements in International Class 5; and

- Trademark Application No. 88161351 for CLEAN CONFIDENCE also for a range of dietary supplements in International Class 5.

Both Applications were filed on October 19, 2018, claiming a first use in commerce on August 1, 2017.

The disputed domain names <confidentu.com> and <cleanconfidence.com> were initially registered on April 23, 2014, and November 10, 2014, respectively. The disputed domain names <cleanconfidence.net> and <cleanconfidence.org> were both registered on May 4, 2018. According to the Complainant, the Respondent acquired all four disputed domain names on May 4 or 5, 2018.

The disputed domain names <confidentu.com> and <cleanconfidence.com> resolve to a registrar parking page, while the disputed domain names <cleanconfidence.net> and <cleanconfidence.org> redirect Internet users to the Respondent’s website at “www.doyoutaketwo.com”. At that website, the Respondent offers for sale a range of dietary supplements under the trademark “Take Two”.

5. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:

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

(ii) the 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 in bad faith.

Paragraph 15(a) of the Rules directs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.

A. Supplemental filings

The Complainant has made three supplemental filings: December 21, 2018 correcting a factual error in the Complaint; January 5, 2019 providing additional information about the Respondent; January 24, 2019 responding to a number of matters alleged in the Response; and January 25, 2019 providing a copy of an invoice to corroborate the claimed date of first sale of product by reference to “CLEAN Confidence”.

In response, the Respondent has submitted a Motion to Exclude the Complainant’s supplemental filings essentially on the basis that the Rules do not provide for unsolicited supplemental filings and the matters addressed in the supplemental filings should have been addressed in the Complaint.

Apart from documents requested by the Panel pursuant to paragraph 12 of the Rules, neither the Policy nor the Rules expressly provide for supplemental filings. Their admissibility is therefore in the discretion of the Panel bearing in mind the requirements under paragraph 10 of the Rules to ensure that the proceeding is conducted with due expedition and both parties are treated equally, with each party being given a fair opportunity to present its case.

Where unsolicited supplemental filings are admitted, it is usually because the material corrects some error or addresses something raised in a Response which could not reasonably have been anticipated or which was not otherwise appropriate to deal with until a respondent’s position on a particular point was clear.

In this proceeding, the matters raised in the Complainant’s proposed supplemental filings are directly relevant to matters in issue between the parties. To an extent, they correct errors or respond to arguments made in the Response or are matters that appear to have come to the Complainant’s attention after the Complaint was filed. Some of the material, relating to the Respondent and his activities was filed before the Response was submitted. Moreover, the Respondent does not point to any particular disentitling prejudice which he would suffer by the admission of the material. On the contrary, he has had sufficient time for his attorneys to prepare and submit a carefully reasoned Motion to Exclude.

Having regard to the direct relevance of the material and the absence of any prejudice to the Respondent, therefore, the Motion to Exclude is denied and the Complainant’s various supplemental filings are admitted.

B. Identical or Confusingly Similar

The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.

There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.

The Complainant has proven ownership of the two trademarks registered in the United Kingdom for, respectively, CONFIDENTU and CLEAN CONFIDENCE.

The Panel notes that the Respondent contends the Complainant has deliberately sought to mislead the Panel about the status and ownership of its trademarks. What the Complainant actually claimed in the Complaint was as follows:

“Confidentu is registered U.K Trademark No. 3247129 and CLEAN Confidence is registered U.K Trademark No. 3327055. Parallel trademark applications have been filed in the United States, viz Ser. Nos. 88161321 and 88161351 respectively. The ConfidentU and CLEAN Confidence Trademark registrations in the U.K. were completed in August 2017.”

It is not strictly correct that the Complainant’s United Kingdom registration for CONFIDENTU was “completed in August 2017”. Unlike what the Panel understands is the position in the United States, trademarks registered in the United Kingdom take effect from the filing date. Nor was the application for CLEAN CONFIDENCE even filed by August 2017. The basis for the Complainant’s claim to have commenced using that trademark before registration is addressed in section 5C below where the issue is directly relevant.

The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain (“gTLD”) as a functional aspect of the domain name system. See e.g. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), sections 1.7 and 1.11. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy.

Disregarding the gTLD “.com”, the fourth disputed domain name <confidentu.com> is identical to the Complainant’s registered trademark for CONFIDENTU.

Disregarding the respective gTLDs “.org”, “.net”, and “.com”, the first three disputed domain names differ from the Complainant’s registered trademark for CLEAN CONFIDENCE by the immaterial omission of the space between the two words “clean” and “confidence” and the reduction of “clean” to lower case. The Complainant’s relevant trademark is clearly visible as such in the case of all four disputed domain names.

Accordingly, the Panel finds that the Complainant has established that the disputed domain names are identical with the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied.

C. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:

(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable 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; or

(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or

(iii) [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 or service mark at issue.

These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.

The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See, e.g, WIPO Overview 3.0., section 2.1.

It is plain from the documents submitted by the parties that the Complainant and the Respondent are not associated in any way and the Respondent is not authorised to use the Complainant’s trademarks.

The disputed domain names are plainly not derived from the Respondent’s name or the names of any of the companies he is associated with.

The Respondent also points out that there are numerous trademarks registered in the United States for the relevant products which include the word “confident”. For example, there are registrations for “The Confident Life”, “Alpha Confident”, “Cardio Confidence”, “The Shield of Confidence” and so on. As can be seen from these examples, however, none of them are for the particular combination of terms found in the Complainant’s trademarks. The Respondent says further that “Confidentu” is a simple and common variation on “confident you” and “Clean Confidence” is just a combination of two ordinary words. As the range of registrations which include “confidence” advanced by the Respondent shows, however, it is the particular combination of elements which confers distinctiveness.

The Respondent points out that the Complainant does not have registered trademarks in the United States; having filed its pending applications there only after the Respondent registered the disputed domain names. The Respondent also points out that the Complainant did not apply to register its trademark for CLEAN CONFIDENCE in the United Kingdom until July 2018.

The Complainant provides evidence in the form of a “deducted” [sic] invoice that it in fact commenced using the trademark CLEAN CONFIDENCE from around August 2017. The Complainant says it has had sales to over 15,000 individual customers on Amazon since then.

The Respondent further points out that two of the disputed domain names, <cleanconfidence.com> and <confidentu.com> were created before the Complainant acquired any trademark rights: <confidentu.com> being created on April 23, 2014, and <cleanconfidence.com> on November 10, 2014. The Complainant, however, contends that the Respondent was not the registrant of those domain names at that time, but acquired them on or about May 4, 2018.

The Complainant first made this claim in its Complaint. It was not directly addressed in the Response. Instead, the Respondent simply stated that the domain names in question were created before the Complainant acquired its trademarks and contended that the Complainant had not satisfied its burden of proof. It invokes several panel decisions in support of the proposition that ordinarily the complainant must demonstrate (not simply allege) that the respondent had actual knowledge of the complainant’s trademark and sought to take advantage of it. For example, Kellwood Company v. Onesies Corporation, WIPO Case No. D2008-1172; and Zeca S.p.A. v. Whois Privacy Protection Service, Inc. / Domain Vault LLC, WIPO Case No. D2017-0158.

In its supplemental filing on January 24, 2019, the Complainant provided evidence of communications its principal had to purchase the disputed domain name <confidentu.com> from a different entity than the Respondent in May 2017. Once again, the Respondent did not address this specific allegation, choosing instead to advance its Motion to Exclude arguing that it was not appropriate to admit the supplemental filings in proceedings of this nature in the circumstances of this case.

Further, the Complainant also contends that the Respondent is the managing partner of a firm called CMVI Holdings which markets a product “Pure For Men” which, like “Take Two”, is a direct competitor with the Complainant’s products and, according to the Complainant, is in fact the main competitor for the Complainant’s “Clean Confidence” product.

The Complainant first made this allegation in the supplemental filing on January 5, 2019. That is, well before the Response was filed. The Respondent has not disputed those allegations.

The undisputed fact is that the Complainant and the Respondent’s businesses are direct competitors. Moreover, the Respondent has not just coincidentally registered one of the Complainant’s trademarks as a domain name, but both of them. In its very carefully drawn Response and equally carefully drawn subsequent Motion to Exclude, the Respondent did not directly address the Complainant’s contention that the Respondent acquired all disputed domain names around May 4 and 5, 2018, and did not directly deny knowledge of the Complainant’s trademarks. Taken together and in the absence of a credible denial of knowledge, the Panel considers that the inference is clearly available that the Respondent did know the disputed domain names were the Complainant’s trademarks when he became the registrant.

The redirection of at least two of the disputed domain names to the Respondent’s own website selling competing goods is likely to divert custom from the Complainant. It does not constitute a good faith offer of goods or services under the Policy. See e.g. Paris Convention article 10bis. The Complainant alleges that all four disputed domain names redirected to the Respondent’s competing website. When the decision was being prepared, however, two of the disputed domain names redirected to the Registrar’s parking page with an invitation to “Get this Domain”. This kind of passive holding in these circumstances also does not qualify as a good faith offer of goods or services under the Policy. See e.g.WIPO Overview 3.0, section 2.9.

Accordingly, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain names.

D. Registered and Used in Bad Faith

Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see, e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey LtdWIPO Case No. D2010-0470.

Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.

The Panel has already accepted the Complainant’s contentions that the Respondent was well aware of the Complainant’s trademarks when the Respondent registered the disputed domain names in section 5C above.

The reasons for that finding also lead to findings that the Respondent registered and is using the disputed domain names in bad faith. In particular, the redirection of at least two disputed domain names to the Respondent’s website where competing goods are being offered for sale is evidence of bad faith use as described under paragraph 4(b)(iv) of the Policy. As is the passive holding of the currently parked pages in the circumstances of this case.

Accordingly, the Panel finds that the disputed domain names were registered and are being used in bad faith.

6. 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 names, <cleanconfidence.com>, <cleanconfidence.net>, <cleanconfidence.org> and <confidentu.com> be transferred to the Complainant.

Warwick A Rothnie
Sole Panelist
Date: March 4, 2019