The Complainant is Spy Optic Inc. of Carlsbad, California, United States of America represented by Stetina Brunda Garred & Brucker, United States of America (“United States” or “US”).
The Respondent is Mitchell or Frederick Mitchell of San Diego, California, United States.
The disputed domain name <cheapspysunglasses.net> (the “Domain Name”) is registered with eNom (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 9, 2013. On September 10, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and providing 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 20, 2013. In accordance with paragraph 5(a) of the Rules, the due date for Response was October 10, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 11, 2013.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on October 18, 2013. 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 paragraph 7 of the Rules.
The Complainant subsequently reported that the Domain Name now redirects to another website, attaching a Declaration by counsel dated October 22, 2013. The Complainant submitted an Amended Complaint dated October 23, 2013 including this information and attaching supporting documents.
The Complainant is a California business corporation headquartered in Carlsbad, California, United States. The Complainant designs, produces, and sells “technical eyewear” — sunglasses, eyeglasses, and goggles optimized for various sports and outdoor activities — as well as sports apparel. According to the Complaint, the Complainant has sold such products branded with the mark SPY continuously since “at least 1996”.
The Complainant holds two United States trademark registrations for SPY as a standard-character mark: US Registration No. 1981513 (registered June 18, 1996) and US Registration No. 3750166 (registered February 16, 2010).
The Complaint otherwise furnishes little information about the Complainant’s sales or advertising under the SPY brand. The Panel notes that SPY products are sold online by many national retailers, as well as through the Complainant’s own website at “www.spyoptic.com”.
The Domain Name was registered on August 21, 2013. The Registrar identified the registrant with the organization name “Mitchell” and the personal name “Frederick Mitchell”. This appears to be an individual residing in San Diego, California, United States. However, on September 25, 2013 the Center and the Complainant’s counsel received an email from the email address shown in the contact information for the Domain Name stating that the sender (identified only as “Surf Side”) did not “file for” the Domain Name and had nothing to do with it. Counsel for the Complainant, in a signed Declaration, reports that Mr. Mitchell telephoned the same day and said that he had no idea why his name was associated with the Domain Name and that this was done without his permission.
Screen shots of the website associated with the Domain Name dated September 6 and 20, 2013 both show that the website was headed “Cheap Spy Optics Sunglasses Sale, Discount Spy Eyewear Outlet” and displayed the Complainant’s trademarked design logo. The website consisted largely of photographs and descriptions of many of the Complainant’s models of SPY sunglasses, listing discounted prices for each, with a shopping cart function for online orders and payments. According to the Complaint, the Respondent has no relationship with the Complainant, and the advertised products “appear to be counterfeit products, or unauthorized sales of products manufactured for Complainant.”
Since this proceeding commenced, the Domain Name has been redirected to a website at “www.oneclshoes.com”. This website features designer sunglasses with well-known brands such as ARMANI, OAKLEY, and RAYBAN, for purchase at heavily discounted prices through the website. The featured sunglasses do not include any carrying the Complainant’s SPY mark. The Registrar’s WhoIs database shows that the domain name <oneclshoes.com> was registered with patently false and offensive registrant and contact information: the registrant is named as “Fuck Track me” of the organization “whoare I”, with an address at “wo shi ni mama bu dong weng alibaba ma yun” in the city of “FL” in California. The registration shows a Los Angeles postal code and a telephone number that does not correspond to any assigned area codes in the United States.
The Complainant argues that the Domain Name is confusingly similar to the Complainant’s SPY mark and that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant concludes that the Domain Name was registered and used in bad faith, in an effort to disrupt the Complainant’s business.
The Respondent did not submit a formal Reply to the Complainant’s contentions. In communications with the Center and with the Complainant’s counsel, the Respondent denied having registered or used the Domain Name.
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(i) the disputed 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 disputed domain name; and
(iii) the disputed 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.”
The Policy contemplates prompt, efficient resolution of domain name disputes on a narrow range of issues and with only two limited remedies: the transfer or cancellation of a domain name. Accordingly, the Rules and Supplemental Rules provide only for a complaint and response, within strict time and word limits. There is no explicit provision for additional filings except for further statements or documents provided in response to a request from the Panel itself (Rules, paragraph 12). Paragraph 10 of the Rules directs the Panel to conduct the proceeding “with due expedition” and empowers the Panel to “determine the admissibility, relevance, materiality and weight of the evidence.”
Panels are consequently reluctant to countenance delay through additional rounds of pleading and require some showing of “exceptional circumstances.” They typically accept supplemental filings only to consider new evidence or provide a fair opportunity to respond to new arguments. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.2, and cases cited therein. These “exceptional circumstances” involve matters that arise after the initial pleading was filed and which could not reasonably have been anticipated at that time. See, e.g., Digital Ceramic Systems Limited v. Baltea SRL, WIPO Case No. D2012-1198; Mani Brothers, LLC v. Lincoln Gasking, WIPO Case No. D2008-0097.
The redirection of the Domain Name to another website of unknown affiliation occurred shortly after the Complaint was filed in this proceeding. The facts surrounding this post-filing development are relevant to the second and third elements of the Complaint. The Panel therefore accepts the Complainant’s Declaration, Amended Complaint, and attachments (including screen shots before and after the redirection of the Domain Name) as part of the record in this proceeding. The Panel does not find it necessary to amend the Complaint, but instead treats the materials submitted as supplemental filings that are appropriate for consideration in this case.
The Complainant holds registered SPY trademarks, and the Domain Name incorporates this mark in its entirety. “Spy” is a dictionary word in English, and the Complaint does not establish the fame of the SPY mark. It is possible to conceive of domain names including this word that would not be confusingly similar to the Complainant’s mark. However, in the present case, the addition of the generic term “sunglasses” in the Domain Name reinforces rather than eliminates the likelihood of confusion, as sunglasses are among the Complainant’s leading SPY-branded products.
UDRP panels customarily treat the first element of a UDRP complaint as a standing requirement, which simply requires “a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name”; some panels refer as well to the “overall impression” created by the domain name. See WIPO Overview 2.0, paragraph 1.2. The Panel finds that these tests are met in this case, where the “spysunglasses” portion of the Domain Name creates an overall impression of referring to SPY sunglasses — which was exactly the subject of the website formerly associated with the Domain Name.
The Panel concludes that the Complainant has established the first element of the Complaint.
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.
Well-established UDRP jurisprudence holds that a complainant may establish the second element of the complaint by making a prima facie showing that a respondent lacks rights or legitimate interests. See WIPO Overview 2.0, paragraph 2.1 (after a complainant makes a prima facie case, the burden of production to show rights or legitimate interests in the domain name shifts to the respondent). It is undisputed that the Complainant in this proceeding did not give permission to use the SPY mark in the Domain Name. Nothing in the record of this proceeding, including screen shots of the websites associated with the Domain Name, indicates that the Respondent (or whoever registered the Domain Name and published the websites) was known by a corresponding name or used the Domain Name in connection with a bona fide offering of goods or services. The Domain Name has clearly been used for commercial purposes, but the evidence (as discussed further below) suggests something other than a legitimate business making lawful use of the trademarks of others. In any event, the Respondent, in communications with the Center and with the Complainant’s counsel, denied any interest or involvement in the Domain Name. Thus, there has been no rebuttal of the Complainant’s prima facie case against legitimacy.
The Panel concludes on this record that the second element of the Complaint has been established.
The Policy’s non-exhaustive list of instances of bad faith in paragraph 4(b) includes the following:
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
The Complainant cites paragraph 4(b)(iii), but it is not entirely apt. The Respondent simply denied any involvement with the Domain Name and declined to submit a Response, and no other party has come forward to claim responsibility for the Domain Name and the websites to which it has resolved. On the present record, then, it would be difficult to conclude that the real party in interest was one of the Complainant’s competitors, which registered the Domain Name “primarily” to disrupt the Competitor’s business.
The Panel finds, instead, that this case squarely fits the circumstances described in paragraph 4(b)(iv). The Domain Name refers to “spysunglasses”, and the websites associated with the Domain Name first advertised what purported to be steeply discounted SPY sunglasses and then other discounted brand-name sunglasses. Whoever was behind the Domain Name registration and the associated websites plainly sought to attract consumers interested in SPY sunglasses, for commercial gain: the websites were set up to take orders and payments online. The website to which the Domain Name now redirects ostensibly sells the products of the Complainant’s direct competitors.
The operator(s) of the original website associated with the Domain Name and the website to which users are now redirected may, in fact, deliver imitations of SPY and other trademarked products, if they deliver anything at all after accepting payment online. Several facts point to the likelihood that neither website has been operating as a legitimate business:
- The registrant denies any knowledge of the Domain Name but has submitted no statements or Response to the Center with the required certification of accuracy and completeness (Rules, paragraph 5(b)(viii)). On this record, the Panel must conclude that either the Domain Name registration itself was performed fraudulently by an unknown person (which does not speak well of the legitimacy of the registrant’s business) or that the Respondent was indeed responsible but is now, suspiciously, seeking to avoid being connected to the Domain Name and the associated websites.
- The registration details for the domain name of the website to which the Domain Name now redirects are false and contemptuous, which is uncharacteristic of a legitimate business enterprise.
- The “name brand” products featured on both websites are listed at prices that the websites represent as discounts of up to 80% of retail value, an improbable level of discount for a legitimate reseller.
- The websites feature the Complainant’s and others’ trademarked logos but include no information identifying the company or individual that operates the website.
The Panel concludes on this record that the Domain Name was registered and used in bad faith, in an attempt to misdirect Internet users for commercial gain, and that the third element of the Complaint is therefore well founded.
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 <cheapspysunglasses.net> be transferred to the Complainant.
W. Scott Blackmer
Sole Panelist
Date: October 31, 2013