WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

AB Stenströms Skjortfabrik v. Mark Joe

Case No. D2019-2390

1. The Parties

The Complainant is AB Stenströms Skjortfabrik, Sweden, represented by Ports Group AB, Sweden.

The Respondent is Mark Joe, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <stenstr0ms.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 1, 2019. On October 1, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 3, 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 October 3, 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 amended Complaint on October 8, 2019.

The Center verified that the Complaint together with the amended 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 October 9, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 29, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 30, 2019.

The Center appointed Charles Gielen as the sole panelist in this matter on November 1, 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 Swedish company that, since 1899, is well-known for its shirt designer industry. The Complainant contends its products can be found around Europe but also in the United States of America (“United States”) and China and that it also sells products via distributors and directly to customers all over the world. For more than twenty years the Complainant owns numerous trademark registrations for the wordmark STENSTRӦMS as well as for the word STENSTRӦMS in special script in several countries in the world, among others in the United States, Canada and China as well as in different countries in the European Union. All registrations were made for goods in class 25.

The disputed domain name was created on July 11, 2019, and does not result in a webpage.

5. Parties’ Contentions

A. Complainant

The Complainant contends it is a well-known company designing and selling shirts in many countries of the world. Its products can be found around Europe but also in United States and China. These products are sold via distributors and directly to customers all over the world.

The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark, since the disputed domain name consists of the Complainant’s entire trademark. The only difference between the Complainant’s trademarks and the disputed domain name is the exchange of the “o” for “0”, which is a form of typo squatting, and the Top-Level Domain (“TLD”) “.com”.

Furthermore, the Complainant contends that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Complainant gives the following reasons for this. Firstly, the disputed domain name was created long after the first registration of the trademark. Secondly, the Complainant has not given the Respondent any permission to register the trademark as a domain name or to use any of the Complainants trademarks. Thirdly, there is no evidence that the Respondent has been commonly known by the disputed domain name or is making a legitimate noncommercial or fair use of the disputed domain name.

Finally, the Complainant argues that the Respondent registered and is using the disputed domain name in bad faith. First of all, the Complainant argues that its trademarks were registered well before the Respondent became the owner of the disputed domain name. It is obvious that the Respondent was well aware of the Complainant’s trademark and business when registering the disputed domain name. Moreover, the disputed domain name includes the Complainant’s entire trademark STENSTRÖMS only by the slight difference of exchanging the “o” for “0”. Furthermore, when searching for the disputed domain name the web server generates the following question: “Did you mean http://stenstroms.com/?”, which is the Complainant’s official website. This implies that the Respondent has knowledge of the Complainant’s trademark and business. It is therefore obvious that the Respondent was well aware of the Complainant’s trademarks and business when registering the disputed domain name. The usage of the disputed domain name strongly suggests that the disputed domain name was registered with the trademark STENSTRÖMS in mind and to commercially profit from misleading consumers searching for information about the Complainant’s business. Therefore, the Complainant submits that the disputed domain has been registered to commercially profit from the likelihood of confusion between the trademark and the disputed domain name or at least to use the disputed domain name in a way that is detrimental to the Complainant and its business. The Complainant finally points out that the mere fact that it concerns an inactive domain name does not prevent a finding that the registration and use were made in bad faith. According to the Complainant it is relevant in this respect that the trademark of the Complainant is globally well known, that no response to the Complaint has been filed, and that the registrant concealed its identity.

B. Respondent

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

6. Discussion and Findings

The Panel is of the opinion that the Complainant’s contentions are reasoned and that the disputed domain name should be transferred to the Complainant pursuant to the Policy.

A. Identical or Confusingly Similar

The Complainant proves that it has rights in the trademark STENSTRÖMS based on a number of registrations in the world. The term “stenstr0ms” is almost identical to the trademark STENSTRÖMS and should be considered as a clear misspelling of that mark. So, the Panel finds that the disputed domain name is confusingly similar to the trademark of the Complainant. The added suffix “.com” does not change the finding that the disputed domain name is confusingly similar, since the suffix “.com” is understood to be a technical requirement. In making the comparison between the trademark and the disputed domain name, the TLD “.com” is disregarded. The Panel is of the opinion that applying these principles to this case, the disputed domain name is confusingly similar to the trademark.

Therefore, the requirement under paragraph 4(a)(i) of the Policy is met.

B. Rights or Legitimate Interests

The Panel is of the opinion that the Complainant made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The first reason is that the Complainant’s trademark is not a term one would choose as a domain name without having specific reasons to choose such a term. Furthermore, the disputed domain name was registered long after the Complainant started to use and registered the trademark STENSTRÖMS. The Panel is convinced that the term “stenstr0ms” in the disputed domain name, which contains a misspelling of the letter “ö”, has no other meaning except to refer to the Complainant and its business. Proof for this can be found in the fact that, when searching for the disputed domain name, the following question is generated: “Did you mean http://stenstroms.com/?” which is the official website of the Complainant. Finally, the Respondent has not come forward claiming any rights or legitimate interests and the Panel does not find so in the present record.

In view of the aforementioned, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met.

C. Registered and Used in Bad Faith

The Panel is of the opinion that the disputed domain name was registered and is being used in bad faith.

The main reasons for this conclusion are as follows. It is obvious that the intention of the Respondent is to mislead consumers in believing that the disputed domain name is in one way or the other connected to the Complainant and its business. The Respondent is undoubtedly trying to attract, for commercial gain, Internet users and consumers by creating a likelihood of confusion with the Complainant and its business or at least with the intention to disrupt the business of the Complainant. This follows from the fact that the disputed domain name is identical to the earlier trademark of the Complainant except for the letter “ö” which is misspelled in the disputed domain name by the sign “0”. The result of this is that when one searches for the disputed domain name, the following reply is generated: “Did you mean http://stenstroms.com/?” which is the official web address of the Complainant. The Panel agrees with the Complainant that the usage of the disputed domain name strongly suggests that the disputed domain name was registered with the trademark STENSTRÖMS in mind and to mislead consumers searching for information about the Complainant’s business. Therefore, the disputed domain has been registered to commercially profit from the likelihood of confusion between the trademark and the disputed domain name or at least to use the disputed domain name in a way that is detrimental to the Complainant and its business. The fact that the disputed domain name is inactive does not change the conclusion that registration and use of the disputed domain name as described in this decision constitutes bad faith under the Policy. The Panel finds that the trademark of the Complainant is a distinctive trademark that is well known in a number of countries in the world. Under those circumstances the registration and use of the domain name, which except for a misspelling, is identical to the trademark constitutes bad faith.

The Panel therefore considers the requirement of paragraph 4(a)(iii) of the Policy to be met.

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 <stenstr0ms.com> be transferred to the Complainant.

Charles Gielen
Sole Panelist
Date: November 12, 2019