WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Rufus & Coco Pty Ltd v. PrivacyGuardian.org / Yulin Zhu

Case No. D2019-2421

1. The Parties

The Complainant is Rufus & Coco Pty Ltd, Australia, internally represented.

The Respondent is PrivacyGuardian.org, United States of America / Yulin Zhu, Philippines.

2. The Domain Name and Registrar

The disputed domain name <weekittylitter.com> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2019. On October 7, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 7, 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 8, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint.

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 October 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 14, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default.

The Center appointed Jonathan Agmon as the sole panelist in this matter on November 21, 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 an Australian company involved in the pet industry.

The Complainant is the owner of numerous trademarks worldwide for the WEE KITTY marks, including but not limited to the following:

- WEE KITTY (Registration No. 1513747) registered in Australia on April 18, 2013; and

- WEE KITTY (Registration No. 5352590) registered in the United States of America on December 12, 2017.

The Complainant is also the owner of various domain names, including but not limited to the following:

- <weekittycatlitter.com>; and

- <weekitty.com>; and

- <weekittylitter.com.au>.

The disputed domain name was registered on January 17, 2019 and presently redirects to “http://www.hwin69.com/#/index”, a webpage in Chinese offering gambling services. At the time of filing of the Complaint, the disputed domain name redirected to “www.myw3358.com/index.htm#”, a webpage in Chinese offering gambling services.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions include the following:

The Complainant argues that the disputed domain name is confusingly similar to the Complainant’s registered trademark WEE KITTY.

The Complainant also argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant further argues that the disputed domain name was registered and is being used in bad faith as the disputed domain name was registered due to the Complainant’s inadvertent failure to renew the disputed domain name, and it now simply redirects to a webpage offering gambling services.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant has provided evidence of its trademark registrations in Australia and the United States of America.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The disputed domain name <weekittylitter.com> integrates the Complainant’s WEE KITTY trademark in its entirety (see Wal-Mart Stores, Inc. v. Kuchora, Kal, WIPO Case No. D2006-0033; Hoffmann-La Roche Inc. v. Andrew Miller, WIPO Case No. D2008-1345). The disputed domain name differs from the WEE KITTY trademark by the addition of the word “litter” and the addition of the generic Top-Level Domain (“gTLD”) suffix “.com”.

Firstly, it is well-established where a complainant’s trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8; Novartis AG v. Radu LucaWIPO Case No. D2016-2582). Thus, the addition of the word “litter” in the disputed domain name does not prevent a finding of confusing similarity.

Next, it is established the addition of a gTLD to a disputed domain name does not avoid confusing similarity as the use of a TLD is technically required to operate a domain name (see Accor v. Noldc Inc.WIPO Case No. D2005-0016; F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; WIPO Overview 3.0, section 1.11). Thus, the addition of the gTLD is without significance and does not prevent a finding of confusing similarity.

In the particular circumstances of the present case, the Panel is of the view that the disputed domain name is identical or confusingly similar to the Complainant’s trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

Once the complainant establishes a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the respondent to show that it has rights or legitimate interests in respect to the disputed domain name (See WIPO Overview 3.0, section 2.1).

In the present case, the Complainant has demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.

The Complainant has provided evidence that it owns trademark registrations in Australia and the United States of America before the disputed domain name was registered (See LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138).

In addition, the evidence submitted by the Complainant shows that all the details of the registrant on the WhoIs database are blocked by a privacy shield. Although the WhoIs record is protected by a privacy shield, the Registrar has confirmed that the disputed domain name is registered under the Respondent “Yulin Zhu” which bears no resemblance to the disputed domain name in any way (see Sportswear Company S.P.A. v. Tang Hong, WIPO Case No. D2014-1875; WIPO Overview 3.0, section 2.3).

Finally, the disputed domain name redirects to a webpage offering gambling services. Past UDRP panels have held that this is neither a bona fide offering of goods and services for the purposes of the Policy nor is it a legitimate noncommercial or fair use (Sanofi and Genzyme Corporation v. zhanghui, WIPO Case No. D2018-2926).

In the present case, the Respondent did not submit a Response to the Complaint and did not provide any explanation or evidence to show rights or legitimate interests in the disputed domain name to rebut the Complainant’s prima facie case.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The complainant must also show that the respondent registered and is using the disputed domain name in bad faith (see Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.

The Complainant has submitted evidence which shows that the Respondent registered the disputed domain name long after the Complainant’s trademark registrations. According to the evidence filed by the Complainant, the Complainant has owned registrations for its WEE KITTY trademarks since 2013 and these registrations were active at the time the Respondent registered the disputed domain name in 2019. Therefore, the Panel draws the inference that the Respondent knew or should have known about the Complainant’s WEE KITTY trademark. Furthermore, the Complainant is involved in the pet industry and the products produced under the WEE KITTY trademark include cat litter. The word “litter” included in the disputed domain name thus corresponds to the Complainant’s area of activity and is a further indication that the Respondent likely knew about the Complainant’s trademark at the time of registration (see WIPO Overview 3.0, section 3.2.1; Tyson Foods, Inc. v. R3D HACKCID, WIPO Case No. D2017-0182). The Panel therefore finds it inconceivable that the Respondent could have registered the disputed domain name without knowledge of the Complainant’s trademarks and intention of benefiting from confusion with such trademarks (see Leite’s Culinaria, Inc. v. Gary Cieara, WIPO Case No. D2014-0041; WIPO Overview 3.0, section 3.2.2).

Furthermore, the disputed domain name is confusingly similar to the Complainant’s WEE KITTY trademark which the Panel finds is an attempt by the Respondent to confuse and/or mislead Internet users seeking or expecting the Complainant. Previous UDRP panels ruled that in such circumstances “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (see Edmunds.com, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.

Taking the above into consideration, the Panel finds that under the particular circumstances of this case (the disputed domain name redirects to a webpage offering gambling services) the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant’s trademarks under paragraph 4(b)(iv) of the Policy.

In addition, the Respondent did not submit a Response in this proceeding and used a privacy shield to hide its identity, as shown in the WhoIs database page submitted by the Complainant. These are all further indications of the Respondent’s bad faith, which were considered by the Panel.

Based on the evidence presented to the Panel, including the registration of the disputed domain name after the registration of the Complainant’s trademark, the confusing similarity between the disputed domain name and the Complainant’s trademark, the Respondent’s use of the disputed domain name and the failure of the Respondent to submit a response, the Panel draws the inference that the disputed domain name was registered and is being used in bad faith.

Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.

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 <weekittylitter.com> be transferred to the Complainant.

Jonathan Agmon
Sole Panelist
Date: December 5, 2019