The Complainant is Primark Holdings of Dublin, Ireland, represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland.
The Respondent is Ruben Comunas of Murcia, Spain.
The disputed domain name <primark.net> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 14, 2015. On April 14, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 14, 2015, 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 April 17, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 7, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 12, 2015.
The Center appointed Mladen Vukmir as the sole panelist in this matter on May 18, 2015. 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 Panel has determined the following non-contested facts:
(i) the disputed domain name was created on October 17, 2012 (Annex 1 to the Complaint);
(ii) the Respondent is the registrant of the disputed domain name (Annex 1 to the Complaint);
(iii) the disputed domain name is redirected to the domain name <primarkonline.com.es> (Annex 7 to the Complaint);
(iv) the Complainant is the owner of a number of PRIMARK trademark registrations in different classes, including class 25, as listed and evidenced in the Complaint and Annex 5 to the Complaint:
|
Trademark |
Trademark Office |
Reg. no. / Status |
Registration Date |
Class(es) |
|
PRIMARK (word) |
Ireland |
83739 / registered |
08-04-1974 |
25 |
|
PRIMARK (word) |
Sweden |
1901-56760 / registered |
09-10-1976 |
23,24,25,26 |
|
PRIMARK (word) |
USA |
77831826 / registered |
01-02-1999 |
25 |
|
PRIMARK (word) |
OHIM |
117838 / registered |
01-02-1999 |
18,24,25 |
|
PRIMARK (word) |
OHIM |
3672441 / registered |
20-07-2009 |
3,5,14,16,20,21,22,23,26,27,28 |
(v) the Complainant has been using the PRIMARK trademark on its official website available under the domain name <primark.com> and has gained substantial following on its social media pages (Annex 4 to the Complaint).
It should be noted that part of the materials submitted by the Complainant are in Spanish language (e.g. printouts from the Respondent’s website). Although the language of the subject proceedings is English, the Panel was nevertheless in position to review and take into consideration said materials because of the Panel’s knowledge of the Spanish language.
The Complainant, essentially, asserts that:
(i) it is an Irish clothing retailer established in 1969, which has over 250 stores across the UK, Ireland, Europe and United States of America (as of recently), and offers a diverse range of products including: women’s, men’s and children’s clothing; accessories; beauty products; confectionary and home ware;
(ii) it has gained a substantial following on its social media pages with over 4 million likes on Facebook, over 1.3 million followers on Instagram, over 85,000 followers on Twitter and over 16,000 on Pinterest. As such, it is well known over the Internet and a search for “Primark” retrieves results attributed to Complainant and its brand and products;
(iii) it is the owner of a number of PRIMARK trademarks registered for goods and services in numerous classes worldwide, including Europe; which trademarks have received exclusive, extensive and consistent use by the Complainant.
(iv) the disputed domain name is identical or confusingly similar to the Complainant’s PRIMARK trademarks, since the disputed domain name incorporates in its entirety the same trademark, which trademark is wholly visible and recognizable within the same domain name. The only difference between the disputed domain name and the Complainant’s PRIMARK trademark is that the disputed domain name employs lower case letters while the Complainants PRIMARK trademark is generally used in association with entirely capital letters and the addition of the gTLD “.net”, which is not present within the same trademark. However, the latter differences are not of merit since, in previous cases, prior UDRP panels have found that the domain names are not case sensitive and that the gTLD suffix is disregarded under the confusing similarity test.
(v) the Respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name and that it has made a prima facie case that the Respondent lacks such rights and interests, for the following reason: the disputed domain name redirects the user to the website under the domain name <primarkonline.com.es> which appears to be a blog style website in Spanish with reviews of current season Primark clothing ranges, but also contains links to the Complainant’s competitors Zara, Stradivarius and Suiteblanco; automatic redirect of the disputed domain name to a website containing links of the Complainant’s competitors cannot be held as legitimate use of the disputed domain name; said website to which the disputed domain name is redirected represents itself as PRIMARK within its posts, and there is no disclaimer stating that the website is not owned by, or affiliated with the Complainant; a page related to “www.primarkjobs” on the same website has many users commenting and requesting information as how they can apply via website for positions within the Complainant’s stores in Spain; for a brief period after the Respondent registered the disputed domain name, it was made available to purchase on the website “www.domainnamesales.com”, an online marketplace that sells domain names; the Complainant has not licensed or otherwise permitted the Respondent to use its PRIMARK trademark; there is no indication that the Respondent is known as the disputed domain name, nor does he own any trademark or service rights in the disputed domain name <primark.net> or PRIMARK, which is an entirely invented word with no general dictionary definition or everyday use; the Respondent cannot argue that he is using the website as fan site as this only applies to fan sites which are clearly active and noncommercial, whereas the use of the disputed domain name is to a site which is commercial in nature.
(vi) the disputed domain name should be considered as having been registered and used in bad faith by the Respondent. To support this assertion, the Complainant states that the Respondent has registered the disputed domain name, knowing of, or likely knowing of the Complainant; the redirection to a website that contains competitors links and products shown an intention to divert the Complainant’s customers to competition products; the Respondent failed to respond to the Complainant’s Cease and Desist letters and has previously attempted to sell the disputed domain name for profit; the Respondent has also had a pattern of domain name registrations which contain third party trademarks.
The Respondent did not reply to the Complainant’s contentions.
The Panel now proceeds to consider this matter on the merits in light of the Complaint, the lack of the Response, the Policy, the Rules, the Supplemental Rules and other applicable legal authority pursuant to paragraph 15(a) of the Rules.
Paragraph 4(a) of the Policy provides that Complainant must prove, with respect to the disputed domain name, each of the following:
(i) the domain name is identical or confusingly similar to a trademark 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.
Primarily, the Panel emphasizes that under the general consensus view, the mere fact of ownership of a registered trademark by the complainant is generally sufficient to satisfy the threshold requirement of having trademark rights (see paragraph 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDPR Questions, Second Edition (“WIPO Overview 2.0”)).
The Complainant has submitted sufficient evidence (Annex 4 to the Complaint) to show that it is the owner of numerous “PRIMARK” trademarks worldwide, including two Community Trademarks, registration of which are valid also in Spain, where the Respondent appears to reside.
Moreover, it is well established that the threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the disputed domain name to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the disputed domain name, with the addition of common, dictionary, descriptive or negative terms typically being disregarded as insufficient to prevent threshold Internet user confusion. Application of the confusing similarity test under the UDRP typically involves a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name (see paragraph 1.2 of WIPO Overview 2.0).
After performing the straightforward visual and aural comparison, it is evident to this Panel that the disputed domain name <primark.net> incorporates the Complainant’s PRIMARK trademark in its entirety without any modifications, and that the same PRIMARK trademark of the Complainant is clearly recognizable as such within the disputed domain name.
Regarding the applicable gTLD “.com” suffix in the disputed domain name, it is a consensus view that it is usually disregarded under the confusing similarity test (see paragraph 1.2 of the WIPO Overview 2.0), as the Complainant also pointed out correctly in its Complaint.
For all the foregoing reasons, the Panel finds that the Complainant has satisfied the requirement set forth in paragraph 4(a)(i) of the Policy, i.e. has proven that the disputed domain name is identical/confusingly similar to its PRIMARK trademark.
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
“(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue. ”
The consensus view of UDRP panels on the onus of proof under paragraph 4(a)(ii) of the Policy, is summarized in paragraph 2.1 of the WIPO Overview 2.0, whereby: “[…] a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. […]”.
In the subject matter case, the Respondent is in default, hence, the Panel has evaluated the arguments and evidence submitted by the Complainant and finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests to the disputed domain name.
Namely, the Complainant has established that it is the owner of a number of PRIMARK trademarks registered in various jurisdictions around the world, as well as that they have used the same trademarks on the market and the Internet (Annex 4 and 5 to the Complaint).
The Panel observes that there is neither any relation, disclosed to the Panel or otherwise apparent from the records, between the Respondent and the Complainant, nor evidence that the Respondent has been commonly known by the disputed domain name or has been using the disputed domain name in connection with a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers.
Furthermore, from the records, it does not arise that the Complainant has ever licensed or otherwise permitted the Respondent to use its PRIMARK trademark, or to apply for or use any domain name incorporating the same trademark. On the contrary, the Complainant has presented evidence (Annex 10 to the Compliant) that it has sent at least two Cease & Desist notifications to the Respondent, informing him about the Complainant’s rights in PRIMARK trademark and the infringing nature of the disputed domain name and its content; however it appears that the Respondent never replied to said letters.
After having inspected the materials delivered by the Complainant (Annex 6 to the Compliant), as well as by inspecting the website to which the disputed domain redirects, this Panel established that there is no evidence that the Respondent or some other party which controls the same website has done anything to distinguish itself from the Complainant and its “PRIMARK” trademark in any way (e.g. by including a disclaimer or similar). To the contrary, the same website represents itself as the Complainant or affiliate to the Complainant. What is more, under section “PRIMARK EMPLEO” (PRIMARK JOBS in English), there is a number of website users’ posts commenting and requesting information as to how they apply for positions within the Complainant’s stores in Spain. The latter posts appear to be genuine, and in the Panel’s view represent good evidence of confusion on the part of the users.
In addition to representing itself as the Complainant and/or one of its affiliates, the website that the disputed domain name is redirected to, contains links named “ZARA ONLINE”, “STRADIVARIUS” and “SUITEBLANCO”. Zara, Stradivarius and Suiteblanco are all international clothing fashion brands, and as such can be in the Panel’s view considered as the Complainant’s competitors. By following said links, the user is redirected to other websites, all containing information about said competitors of the Complainant, with the information like where and how to buy Zara clothing etc. In addition to said links, by inspecting the website to which the disputed domain redirects, the Panel has established that the same website also contains different automated advertising and PPC links to various third party websites.
This Panel is of the opinion that using the disputed domain name as the portal to the website which impersonates itself as the Complainant or an affiliate to the Complainant cannot be considered as legitimate or fair use of the same domain name. Especially, since such use of the disputed domain name has caused a number of instances of user confusion, as explained above.
In addition, using the disputed domain name as the portal to third party websites, including the websites containing the information about the Complainant’s competitors does not constitute a bona fide offering of goods and services. This is in line with views taken by earlier UDRP panels. See Canadian Tire Corporation, Limited v. Texas International Property Associates, WIPO Case No. D2007-1407; and Interflora, Inc. v. Whois Privacy Protection Service, Inc. NAF Claim No. 0796384.
In this Panel’s view, it can be safely concluded that the Respondent deliberately chose to include the Complainant’s “PRIMARK” trademark in the disputed domain name, in order to achieve commercial gain by misleadingly diverting consumers. Especially if one takes into the account that there is no indication that the term “PRIMARK” would be a generic / dictionary term in Spanish, where the Respondent appears to reside, and that therefore, it is not likely at all that the Respondent’s choice of words in the disputed domain name was random.
The Respondent’s earlier intention to sell the disputed domain name as evidenced in Annex 7 to the Complaint, is in the Panel’s view also an indication that the Respondent never actually intended to use the same for a legitimate or fair purposes, especially when all other circumstances of this particular case are taken into the account.
Accordingly, the Panel finds that the requirements set forth in paragraph 4(a)(ii) of the Policy have been fulfilled by the Complainant’s making the prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name and by the Respondent’s failing to produce any arguments or evidence to the contrary.
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular, but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:
(i) circumstances indicating that the holder has registered or has 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 the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has 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 the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s 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 the holder’s website or location or of a product or service on the holder’s website or location.
Owing to a lack of the Response or any other evidence to the contrary, the Panel accepts the Complainant’s arguments substantiated by evidence (Annexes 4 and 5 to the Complaint) that, at the time of registration of the disputed domain name, the Respondent knew or should have known about the Complainant’s PRIMARK trademark, because of numerous PRIMARK trademark registrations worldwide and use of the same trademark on the market and Internet by the Complaint. Especially, and as already stated earlier, if one takes into the account that there is no indication that the term “primark” would be a generic / dictionary term in Spanish, where the Respondent appears to reside, and that therefore, it is not probable that the Respondent’s choice of words in the disputed domain name was random. Earlier UDRP panels have found bad faith registration based in part on proof that the respondent “knew or should have known” about the existence of the complainant’s trademark (see paragraph 3.4 of WIPO Overview 2.0).
Moreover, the Respondent must have been aware of the risk of deception and confusion that would result from the registration of the disputed domain name and redirection of the same to the website that represents itself as the Complainant. As elaborated earlier, there is no evidence in the record that the Respondent or some other party which controls the same website to which the disputed domain name is redirected has done anything to distinguish itself from the Complainant and its PRIMARK trademark in any way. The operator of the same website has failed to do so even after obvious confusion has occurred (e.g. when the website users posted comments on how to apply for positions in the Complainant’s stores), as well as after the Respondent received the Complainant’s Cease & Desist notices.
Therefore, the Panel finds that, by using the disputed domain name, the Respondent has intentionally attempted to attract Internet users to the website to which the disputed domain name redirects, for commercial gain by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the same website.
For that reason, the Panel finds the provisions of paragraph 4(b)(iv) of the Policy to be applicable in this case, since that the Respondent’s registration and use of the disputed domain name interferes with the Complainant’s business and Internet users might be misled about the source, sponsorship, affiliation, or endorsement of the website to which the disputed domain name is redirected. See, e.g., the following decisions issued by panels in some of earlier UDRP proceedings:
(i) Sanofi v. PrivacyProtect.org / ICS Inc., WIPO Case No. D2012-1293 (<sanofiadventis.com>): “[…] previous UDRP decisions have found bad faith at the time of registration to exist where a domain name is so obviously connected with such a well-known trademark that its very use by someone with no connection with the trademark suggests opportunistic bad faith (LEGO Juris A/S v. Reiner Stotte, WIPO Case No. D2010-0494; and Sanofi-aventis v. Nevis Domains LLC, WIPO Case No. D2006-0303)”;
(ii) Royal Bank of Canada v Henry Chan, WIPO Case No. D2003-0031 (<rbcroyal.com>, <rbccenturabank.com> and <rbcrewards.com>): “The Panel also believes that in using the disputed domain names to redirect Internet users to websites that host links to external websites, including websites of Complainant’s competitors, the Respondent has registered and used the domain names in bad faith. Said use of the contested domain names shows the intention of disrupting the Complainant’s business and/or for the purpose of intentionally attempting to attract, for commercial gain, internet users to its websites, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of its websites.”;
(iii) PepsiCo, Inc. v Ali Khan, WIPO Case No. D2004-0292 (<pepsistrawberry.com>): “The fact that the Respondent elected to register a domain name substantially comprising the “PEPSI” trademark indicates that it was a deliberate act to mislead consumers into believing there was a connection with the Complainant.”
Additionally, the fact that the Respondent has registered a number of domains incorporating the “Whats App” mark and variants thereof which are known in association with a cross-platform mobile messaging application (e.g. <whatsappweb.co>, <wasap.net>, <wasap.web>, etc.) as evidenced by Annex 8 to the Complaint, indicates that the Respondent is likely involved in pattern of registering the domain names with the purpose of preventing the trademark owner from reflecting their marks in the respective domains. This reinforces the Panel’s belief that the Respondent acted in bad faith in the matter at hand.
Given the above, the Panel determines that the disputed domain name has been registered and is being used in bad faith and that the Complainant fulfilled the third element under paragraph 4(a) 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 disputed domain name <primark.net> be transferred to the Complainant.
Mladen Vukmir
Sole Panelist
Date: June 1, 2015