The Complainant is Primitives by Kathy, Inc., of Lancaster, Pennsylvania, United States of America, represented by Panitch Schwarze Belisario & Nadel LLP, United States of America.
The Respondent is Lawrence Roekle, of Crossville, Tennessee, United States of America.
The disputed domain name <primitivesbykathystore.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 7, 2014. On August 7, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 7, 2014, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 13, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 2, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 3, 2014.
The Center appointed Lynda M. Braun as the sole panelist in this matter on September 5, 2014. 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 is a company that was created in 1997 by Kathy Phillips. Specializing in gifts, crafts and home decor, the Complainant registered the domain name <primitivesbykathy.com> on August 13, 1999.
With over one hundred employees, the Complainant sells its products worldwide through its website “www.primitivesbykathy.com”.
The Complainant is the owner of United States Registration No. 4,447,008 for the word mark PRIMITIVES BY KATHY (“PRIMITIVES BY KATHY mark”). The Complainant uses its PRIMITIVES BY KATHY mark and its distinctive logo on its website, products and in its catalogs.
The Respondent registered the disputed domain name on December 16, 2013. After clicking on the Respondent’s website at “www.primitivesbykathystore.com”, one is redirected to “www.goodlifestore.com”, on which the Complainant’s PRIMITIVES BY KATHY mark and logo are prominently displayed.
The following are the Complainant’s contentions:
- The disputed domain name is confusingly similar to the PRIMITIVES BY KATHY mark;
- The Respondent has no rights or legitimate interests in respect of the disputed domain name;
- The Complainant has neither agreed nor consented to Respondent’s use or registration of the disputed domain name;
- The Respondent has used the disputed domain name to intentionally trade on the Complainant’s goodwill and trademark; and
- The disputed domain name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
In order for the Complainant to prevail and have the disputed domain name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)(i-iii)):
(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
(ii) The disputed domain name was registered and is being used in bad faith.
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the disputed domain name identical or confusingly similar to that trademark.
It is uncontroverted that the Complainant has established rights in the PRIMITIVES BY KATHY mark based on its continuous use and United States trademark registration. The disputed domain name <primitivesbykathystore.com> consists of the phrase “primitivesbykathy”, followed by the word “store”, and followed by the generic Top-Level Domain (“gTLD”) “.com”.
The Panel finds that the disputed domain name <primitivesbykathystore.com> is nearly identical, or if not identical, is confusingly similar to the Complainant’s PRIMITIVES BY KATHY mark. The word “store” in the disputed domain name is descriptive and indicates that the website offers products for sale. It is well established that the addition of a descriptive or generic word to a mark does not avoid confusing similarity to a complainant’s trademark. See Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191 (the panel found confusing similarity where the word “shop” was added to the trademark of the complainant in the disputed domain name); PRL USA Holdings, Inc. v. Unasi Management Inc., WIPO Case No. D2005-1027 (descriptive or generic additions do not avoid confusing similarity of domain names and trademarks); International Organization for Standardization ISO v. Quality Practitioners Institute and Website Pros, Inc. and Quality, WIPO Case No. D2005-1028 (same).
Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.
Once a complainant establishes that a respondent’s domain name is identical or confusingly similar to complainant’s mark, and that the complainant has made a prima facie case of lack of rights or legitimate interests, the burden shifts to the respondent to establish some rights or legitimate interests in respect of the domain name.
There is no evidence in the record that the Respondent is in any way associated with the Complainant, that the Respondent is now or was ever known by the disputed domain name, or that the Respondent has any authority, license or permission to use the Complainant’s mark. Rather, the Respondent is using the disputed domain name to offer for sale the Complainant’s products without permission or authorization.
Furthermore, by not submitting a response, the Respondent has failed to invoke any other circumstance that might demonstrate, pursuant to paragraph 4(c) of the Policy, that it holds rights or legitimate interests in the disputed domain name. See Ahead Software AG v. Leduc Jean, WIPO Case No. D2004-0323. See also Nintendo of America, Inc. v. Tasc, Inc. and Ken Lewis, WIPO Case No. D2000-1563 (the respondent’s default is further evidence to conclude that it had no rights or legitimate interests in the domain name).
The Respondent uses the Complainant’s mark and logo, on the website to which the disputed domain name resolves and redirected, which is “www.thegoodlifestore.com”. Therefore, the Panel infers that the Respondent is using the disputed domain name to divert consumers searching for the Complainant’s website to its own website by capitalizing on the fame and goodwill of the Complainant. This use cannot constitute a legitimate interest in a domain name.
Finally, where a party has registered and used a domain name in bad faith (see the discussion below), that party cannot be found to have made a bona fide offering of goods or services.
Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.
First, the registration of a domain name that is confusingly similar to a registered trademark by an entity that has no relationship to that mark may be sufficient evidence of bad faith registration and use. AT&T Corp. v. John Zuccarini d/b/a Music Wave and RaveClub Berlin, WIPO Case No. D2002-0440. In addition, the incorporation of a well-known trademark into a domain name by a registrant with no plausible explanation for the usage is an indication of bad faith. Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273. These factors in this case demonstrate the Respondent’s bad faith registration and use of the disputed domain name.
Second, the Complainant has developed a reputation for the trademark PRIMITIVES BY KATHY for more than ten years and the Complainant’s trademarked products are sold worldwide. The Respondent’s unauthorized sale of the Complainant’s branded products suggests that the Respondent knew of the Complainant’s trademarks prior to registration of the disputed domain name. Thus, it is reasonable to infer from the circumstances of this case that the aim of the registration and use of the disputed domain name is to exploit consumer confusion for commercial gain. This behavior constitutes bad faith registration and use of the disputed domain name under the Policy.
Third, the registration of a domain name identical to the registered trademark of the Complainant is clearly aimed to disrupt the Complainant’s business by diverting Internet users who are searching for the Complainant’s products from the Complainant’s genuine website as well as to prevent the Complainant from registering the domain name. In addition, the use of the Complainant’s distinctive logo on the Respondent’s website may also constitute further evidence of bad faith use.
Fourth, as a reseller of the Complainant’s and others’ goods, the Respondent has not met the requirements for proving that such use is in good faith. To constitute a use in good faith, the Respondent, as a reseller, must, inter alia, use its site to sell the trademarked goods exclusively and must disclose the Respondent’s relationship with the trademark owner. See Daimler AG v. William Wood, WIPO Case No. D2008-1712. The Respondent has not complied with these requirements, and thus registered and is using the disputed domain name in bad faith.
Finally, according to the Complainant’s research, the Respondent has registered numerous domain names that incorporate the brand names and/or trademarks of other companies, and as here, has added the word “store” to the brand name or trademark. Since sufficient instances of bad faith have already been proven by the Complainant, the Panel need not reach the issue of whether this conduct constitutes a pattern of bad faith.
Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant.
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 <primitivesbykathystore.com> be transferred to the Complainant.
Lynda M. Braun
Sole Panelist
Date: September 7, 2014