The Complainant is Venus Fashion, Inc., United States of America (“United States”), represented by Akerman LLP, United States.
The Respondent is Registration Private, Domains By Proxy, LLC, United States / Peng Zhang, China.
The disputed domain name <venuswims.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 7, 2020. On February 10, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 11, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 12, 2020, 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 February 13, 2020.
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 February 25, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 16, 2020. The Center received several email communications from the Respondent on February 13 and 25, 2020, however, the Respondent did not submit any formal response. Accordingly, the Center notified the Parties that it was proceeding to panel appointment on March 17, 2020.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on March 20, 2020. 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 operates in the field of woman fashion and sells its products from “www.venus.com” and catalogs. Since at least as early as 1982, the Complainant has regularly promoted its VENUS trademarks in a variety of advertising campaigns across all available platforms.
The Complainant owns several trademark registrations for different trademarks such VENUS and VENUS SWIMWEAR in the United States, including:
- United States trademark registration No. 1372695 for VENUS SWIMWEAR, registered on November 26, 1985; and
- United States trademark registration No. 3122353 for VENUS, registered on August 1, 2006.
The Complainant owns and operates the website at “www.venus.com” since February 1999.
According to the Complainant, the Respondent registered the Domain Name on January 6, 2020. At the time of submission of the Complaint and the time of drafting the Decision, the Domain Name resolved to a website where the Respondent offers purported knock-off products in competition with the Complainant. The website to which the Domain name resolves, uses images from the Complainant’s website.
The Complainant provides evidence of trademark registrations. The Complainant argues that the Complainant’s trademarks are well-known, and that Domain Name is confusingly similar to the Complainant’s trademarks. The Domain Name incorporates the Complainant’s VENUS trademark with the addition of the misspelled word “wims” (i.e.,a misspelling of “swims” for swimwear).
The Complainant argues that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent is not known by the Domain Name or making a legitimate noncommercial or fair use of the Domain Name within the meaning of paragraph 4(c) of the Policy. The Domain Name resolves to a website that offers knock-off products in competition with the Complainant. The website consists predominantly of images stolen from the Complainant. The Respondent's use of the Domain Name is not and cannot be a bona fide offering of goods or services.
The Complainant argues that the Respondent has already established himself as a serial cybersquatter that registers domain names in bad faith through three prior UDRP decisions. According to the Complainant, it is a case of obvious typosquatting in bad faith.
The Respondent did not formally reply to the Complainant’s contentions. The Respondent’s emails to the Center offer no credible explanation as to why the Respondent registered the Domain Name.
The Complainant has established that it has rights in the trademarks VENUS and VENUS SWIMWEAR.
The test for confusing similarity involves comparison between the trademarks and the Domain Name. In this case, the Domain Name includes the Complainant’s entire trademark, with the addition of the term “wims” (i.e., a misspelling of “swims” for swimwear). The addition does not prevent a finding of confusing similarity. For the purpose of assessing under paragraph 4(a)(i) of the Policy, the Panel may ignore the generic Top-Level Domain (“gTLD”) “.com”; see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.
The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
Based on the evidence, the Respondent is not affiliated or related to the Complainant in any way. There is no evidence that the Respondent has registered the Domain Name as a trademark or acquired common law or unregistered trademark rights. There is no evidence of the Respondent’s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services. The use of the Domain Name, and the unauthorized use of the Complainant’s images, is rather evidence of bad faith, see below.
The Panel finds that the Complainant has made out an unrebutted prima facie case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy.
The Panel concludes that the Respondent was aware of the Complainant when the Respondent registered the Domain Name. The Respondent’s use of the Domain Name seems to be to attract Internet users to the Respondent’s website under the belief that the website is authorized by or associated with the Complainant. Moreover, the Complainant has established a pattern of bad faith conduct of the Respondent through prior UDRP decisions. The bad faith is further underlined by the fact that the Respondent has used, without permission, images from the Complainant’s webpage.
For the reasons set out above, the Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <venuswims.com> be transferred to the Complainant.
Date: April 3, 2020
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