WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

SPRD.NET AG v. Kabir S Rawat

Case No. D2020-0655

1. The Parties

The Complainant is SPRD.NET AG, Germany, internally represented.

The Respondent is Kabir S Rawat, India, self-represented.

2. The Domain Name and Registrar

The disputed domain name <spreadshirts.com> (the “Doman Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 17, 2020. On March 18, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 19, 2020, 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 March 30, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 19, 2020. The Response was filed with the Center on April 19, 2020.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on May 27, 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.

4. Factual Background

The Complainant is a private stock corporation registered in Leipzig, Germany. Founded in 2002, the Complainant is an e-commerce print-on-demand enterprise that allows customers to create their own designs or access licensed designs for clothing, as well as accessories such as tote bags and phone cases, which are then produced and shipped globally.

The Complainant operates a website at “www.spreadshirt.com” (the “Complainant’s website”) and owns several other domain names that link or redirect to that website, including <spreadshirt.de>, <spreadshirt.net>, and <sprd.net>. Affiliate sites also link to the Complainant’s website. The Complainant’s website has pages tailored for national audiences in many countries, in at least a dozen languages. The record indicates that the Complainant’s e-commerce business grew quickly into one of Europe’s largest retailers of custom-printed hoodies, T-shirts, and other items of clothing and merchandising articles and received several awards, such as the 2005 German Internet Prize of the Federal Ministry of Economics, while expanding as well into North America and other markets.

The Complainant holds the following registered trademarks, among others:

The Registrar reports that the Domain Name was created on February 16, 2005 and is registered to the Respondent, and individual in India not listing an organization.

The Internet Archive’s Wayback Machine includes archived screenshots showing that the Domain Name was formerly used (for example, in June 2017 and November 2019) for a pay-per-click (“PPC”) advertising portal, with links to third-party advertisers of “Custom printed T-shirts”, “Spreadshirt designer”, and other clothing. The Complaint attaches a screenshot of the Sedo auction site to which the Domain Name resolved in March 2020, advertising the Domain Name for sale at USD 50,000. At the time of this Decision, the Domain Name does not resolve to an active website but rather to a landing page developed by “Dan.com” announcing that the Domain Name has been “deleted” and offering the sale of other domain names.

Since November 21, 2019, the Complainant received sixteen emails from the Respondent offering to sell the Domain Name to the Complainant, initially for USD 50,000. (The record also includes copies of two emails from the Respondent seeking to acquire the domain name <spreadshirt.net> in January 2020, possibly to offer that domain name for sale to the Complainant as well, although the name of the recipient is not included in the copies attached to the Complaint.)

The Response attaches an email to the Complainant in December 2019 asking the Complainant to ignore all previous emails about the Domain Name “and sorry for the confusion”, as the Domain Name “is not for sale”.

The Response also attaches a Wix.com invoice from November 2019 for an annual website hosting plan for the Domain Name, along with a draft landing page for the website headed with the Domain Name, the tagline “Building Gateways to Blockchains”, and the message “Coming Soon”. It does not appear that this landing page was published.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the Domain Name is nearly identical to its fanciful SPREADSHIRT trademark and observes that there is no evidence that the Respondent is known by such a name or has done business under a corresponding name. The Respondent has not used the Domain Name for its own business or for a legitimate noncommercial purpose. Instead, it has been used for PPC advertising or to offer the Domain Name for sale for a price clearly in excess of the Respondent’s out-of-pocket costs.

The Complainant cites the Respondent’s efforts to sell the Domain Name to the Complainant for an exorbitant price and its misdirection of Internet users for commercial gain as evidence of bad faith, as described in the Policy, paragraph 4(b). The Complainant also argues that the Respondent registered the Domain Name to deprive the Complainant of a domain name corresponding to its trademark, consistent with a pattern of such conduct, citing five other UDRP proceedings against the same Respondent. In each of these proceedings, the Respondent failed to submit a Response, and in four of them the panel ordered the transfer of the disputed domain name. See for example:

Cantor Fitzgerald Securities v. Kabir S Rawat, WIPO Case No. D2013-1257, <cantorfitzgeraldsecurities.com>, transfer;

Frey Wille GmbH & Co. KG v. Kabir S Rawat, WIPO Case No. D2018-1925, <freywille.org>, transfer.

B. Respondent

The Respondent does not challenge the Complainant’s trademark and does not address the issues of the Respondent’s prior awareness of the Complainant and its trademark or the date when the Respondent acquired the Domain Name.

The Respondent states that his email address was compromised and that he is not the party that communicated with the Complainant about selling the Domain Name in November 2019. The Respondent denies any interest in selling the Domain Name and explains his plans for the Domain Name as follows:

“I had a plan to develop this website for my personal use and for that reason I also purchased one year plan with wix to develop basic website which is still valid till November 28, 2020.”

The Respondent denies bad faith and contends that the Respondent could not have registered the Domain Name in contemplation of the Complainant’s trademark, as the Domain Name was registered on February 16, 2005 and “they have a live trademark for ‘SpreadShirt’ with a registration date in 2014.”

6. Discussion and Findings

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

(i) the 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 domain name; and

(iii) the domain name has been registered and is being used in bad faith.

Under paragraph 15(a) of the Rules, “[a] Panel shall decide a 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. Identical or Confusingly Similar

The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The Domain Name is nearly identical to the Complainant’s registered SPREADSHIRT trademark, adding only a final “s” that appears to make the mark plural. The generic Top-Level Domain (“gTLD”) “.com” “is viewed as a standard registration requirement” and as such is disregarded under the first element of the Policy. See WIPO Overview 3.0, section 1.11.2.

The Panel concludes, therefore, that the first element of the Complaint has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:

(i) before any notice to it of the dispute, 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; or

(ii) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Because a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. The Complainant in this proceeding has demonstrated trademark rights and a lack of permission to use the Complainant’s mark in the Domain Name. The Respondent has not advanced rights or legitimate interests, and none are evident from a perusal of the record or the use of the Domain Name for a PPC landing page and advertising the Domain Name for sale. The term “spreadshirt” is not a dictionary word or common phrase, and the Respondent has not explained a generic interest in the term or demonstrated such in its draft for an unpublished “coming soon” landing page, which does not suffice as demonstrable preparations to use the Domain Name “in connection with a bona fide offering of goods or services” (see WIPO Overview 3.0, section 2.2).

The Panel concludes that the Complainant prevails on the second element of the Complaint.

C. Registered and Used in Bad Faith

The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name):

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iv) 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 Complainant’s mark is fanciful and distinctive, combining two English words that would not normally be joined. The Domain Name is nearly identical, simply adding a final “s” in an apparent plural version of the mark. The Complainant has had an e-commerce business associated with the mark since 2002, with quickly growing international sales, and the Domain Name was registered in 2005. The ultimate issue for this element of the Complaint is the probability that the Respondent selected the Domain Name to target the Complainant’s mark.

The Respondent does not actually state that he was the original registrant of the Domain Name in February 2005, and the record is silent on that point. The Complainant did not submit an historical WhoIs record using domain tools, and the Registrar did not indicate when this Respondent acquired the Domain Name. The Respondent does not deny prior awareness of the Complainant, however, but makes the misleading argument that the Domain Name was first “registered” in 2005, while the Complainant has “a live trademark” with “a registration date in 2014”, contending that the Complainant cannot, therefore, establish bad faith. But this overlooks the fact that the Complainant had registered German and International Trademarks by 2003, before the Domain Name registration.

The Panel considers it unlikely that the Respondent held the Domain Name for nearly 15 years before suddenly paying for website hosting, communicating with the Complainant, seeking to purchase a similar domain name, and then offering the Domain Name for sale on an auction website. More likely, the Domain Name is a relatively recent acquisition. Even if the Respondent were the original registrant, however, the fact remains that the Domain Name was created after the Complainant was becoming internationally known for its e-commerce website and had obtained registered trademark rights in 17 countries. Moreover, the Respondent has a history of registering domain names clearly based on trademarks that are not simply dictionary words or common phrases, as evidenced by the UDRP decisions cited above, so there is a “pattern” of conduct as envisioned by the Policy, paragraph 4(b)(ii).

The Panel finds further support for an inference of bad faith in the suspicious string of emails offering to sell the Domain Name to the Complainant for as much as USD 50,000 (given the lack of evidence by the Respondent of its expenses), many times more than out-of-pocket registration costs (followed by a retraction and an unsupported statement in this proceeding that the email account was “compromised”); it is consistent with subsequently offering the Domain Name for sale on Sedo.com for USD 50,000. Such advertisement on Sedo.com should be viewed as likely targeting the Complainant, considering that the Domain Name is not a descriptive or generic phrase and is valuable principally to the Complainant. Meanwhile, the Respondent has at other times profited, or allowed others to profit, from the use of the Domain Name for PPC advertising including links to competitors of the Complainant, using a domain name that is nearly identical to the Complainant’s mark and its own domain name.

Thus, the Respondent’s conduct aligns with the illustrations of bad faith found in the Policy, paragraphs 4(b)(i),(ii), and (iv). The Panel concludes that the Complainant has established bad faith within the meaning of the Policy and prevails on the third element of the Complaint.

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 Domain Name, <spreadshirts.com>, be transferred to the Complainant.

W. Scott Blackmer
Sole Panelist
Date: May 29, 2020