The Complainant is Closed Holding GmbH of Hamburg, Germany, represented by Nesselhauf Rechtsanwälte, Germany.
The Respondent is Name Redacted.1
The disputed domain name <closedoutletonlineshop.com> (“Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 9, 2019. On January 9, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 10, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 11, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on January 14, 2019.
The Center verified that the Complaint together with the amendment to 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 21, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 10, 2019. The Respondent did not submit any formal response. Accordingly, the Center notified the Parties about the commencement of panel appointment process.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on February 13, 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.
The Complainant is a German company which offers and distributes clothing.
The Complainant is the owner of, inter alia; the European Union Trademark CLOSED Registration No. 000298406, registered on November 26, 1999.
Moreover, the Complainant operates an online shop under the domain name <closed.com>.
The Disputed Domain Name <closedoutletonlineshop.com> was registered on March 28, 2018.
The Disputed Domain Name resolves to an online shop which offers clothes.
The Complainant’s contentions can be summarized as follows:
The Complainant alleges that the Disputed Domain Name consist of its trademark CLOSED combined with the terms “outlet” and “online shop”. Thus, these additions do not prevent the existence of confusing similarity between the Disputed Domain Name and the Complainant’s trademark.
The Complainant states that Internet users will be misled to believe that the website is operated by the Complainant.
The Complainant submits that the Respondent has no license agreement or any other right or legitimate interest that could justify the use of the Disputed Domain Name.
In addition, the Complainant states that the online shop evokes the impression to be the official outlet store of the Complainant.
The Complainant alleges that the Respondent created the website to lure users in making payment to an unknown party while putting their trust in the good name of the Complainant.
The Complainant alleges that the Respondent intentionally attempted and attempts to attract for commercial gain, Internet users to its website.
The Respondent did not reply to the Complainant’s contentions. However, the Respondent has sent an email to the Center stating that he had never created or used the Disputed Domain Name.
Paragraph 4(a) of the Policy lists the three elements which the Complainant must satisfy with respect to the Disputed Domain Name in this case:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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.
Based on the evidence submitted, the Panel finds that the Disputed Domain Name is confusingly similar to the Complaint’s trademark CLOSED. The Disputed Domain Name wholly incorporates the Complainant’s trademark and is clearly recognizable in it.
Furthermore, the Disputed Domain Name also contains the descriptive terms “outlet” and “online shop”, but these additions do not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”).
Therefore, the Panel concludes that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the Disputed Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 at issue.
There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the trademark in the Disputed Domain Name. The Complainant has prior rights in the trademark, which precede the Respondent’s registration of the Disputed Domain Name. In addition, the Respondent is not commonly known by the Disputed Domain Name.
The Respondent has failed to show that it has acquired any rights with respect to the Disputed Domain Name. Moreover, it had the opportunity to demonstrate its rights or legitimate interests, but it did not reply to the Complainant’s contentions.
As such the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The fact the Disputed Domain Name fully incorporates the Complainant’s trademark is clear evidence that the Respondent was well aware of the Complainant’s trademark at the time of the registration of the Disputed Domain Name. The Disputed Domain Name is comprised of the CLOSED trademark with addition of the descriptive terms “outlet” and “online shop”. Thus, Internet users would assume that the Disputed Domain Name had been registered by the Complainant or an affiliate of the Complainant to promote an official outlet store.
Moreover, the Respondent had created a website using the Complainant’s CLOSED trademark. In the website, the Respondent offers clothes for sale at a very low cost, with references to Ted Baker a competitor of the Complainant. This clearly shows that the Respondent registered and is using the Disputed Domain Name in bad faith.
Paragraph 4(b)(iv) of the Policy states that: “By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location”.
The Panel is of the view that by registering the Disputed Domain Name and populating the website with competitor’s clothes, the Respondent is using the Disputed Domain Name in bad faith.
Therefore, taking all the circumstances into account and for all the above reasons, the Panel concludes that the Respondent has registered and used the Disputed Domain Name in bad faith.
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, <closedoutletonlineshop.com> be transferred to the Complainant.
Pablo A. Palazzi
Date: February 20, 2019
1 In light of the potential identity theft revealed by the correspondence, the Panel has redacted the Respondent’s name from this decision. However, the Panel has attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of the registrant according to the Registrar’s WhoIs database. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated that Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.
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