The Complainant is Patagonia, Inc., United States of America (the “United States” or “U.S.”), represented by Kilpatrick Townsend & Stockton LLP, United States.
The Respondent is Registration Private, Domains By Proxy, LLC, United States / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.
The disputed domain name <patagoniawornwear.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 19, 2019. On June 19, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 20, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 21, 2019 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 July 2, 2019.
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 July 4, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 24, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 25, 2019.
The Center appointed Tobias Malte Müller as the sole panelist in this matter on August 5, 2019. 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 the registered owner of numerous trademark registrations for PATAGONIA (such as U.S. trademark number 1189402 registered for goods in class 25 on February 9, 1982 with first use of August 1974) and for WORN WEAR (such as U.S. Trademark number 4955520 registered for services in class 35 on May 10, 2016 with first use of October 2012).
As confirmed by the Registrar in its verification response, the Respondent registered the disputed domain name <patagoniawornwear.com> on December 31, 2018. It further results from the Complainant’s documented allegations that the disputed domain name redirects users to a website where both the Complainant’s PATAGONIA products and competing goods are sold.
The Complainant was founded in the late 1960s and commercializes a wide range of sportswear and sports equipment under the brand PATAGONIA worldwide. According to the Complainant’s undisputed allegations PATAGONIA has worldwide consumer recognition. One of the Complainant’s initiatives is the PATAGONIA WORN WEAR program through which consumers can repair or trade in their used Patagonia clothing at a Patagonia store for store credit. Such items will either be recycled (if beyond repair) or washed and made available for purchase on Patagonia’s online store for used Patagonia clothing at <wornwear.patagonia.com>.
The Complainant contends that the disputed domain name is confusingly similar to its trademarks PATAGONIA and WORN WEAR. In particular, the disputed domain name reproduces both of the Complainant’s PATAGONIA and WORN WEAR trademarks in their entirety, thereby leaving no doubt as to confusing similarity.
It further results from the Complainant’s undisputed contentions that the Respondent has no rights or legitimate interests in the disputed domain name. In particular, there is no relationship between the parties and the Complainant has never authorized the Respondent to use the PATAGONIA or WORN WEAR marks or any of its trademarks or trade names. Furthermore, nothing in the record or WhoIs information shows that the Respondent is commonly known by the disputed domain name. According to the Complainant’s non-contested allegations, the Respondent uses the disputed domain name for redirecting users to an online shop where both the Complainant’s PATAGONIA goods and competing goods are sold. However, the Respondent is not an authorized dealer, retailer, or re-seller of PATAGONIA goods, and its unauthorized promotion of sales of those goods alongside sales of competing goods – all in connection with a domain name that reproduces the PATAGONIA and WORN WEAR marks – does not amount to a bona fide offering of goods or services.
Finally, the Complainant contends that the Respondent registered and uses the disputed domain name in bad faith. According to the Complainant’s undisputed allegations, the Respondent must have had knowledge of the Complainant’s trademarks at the time of the disputed domain name’s registration, since the PATAGONIA trademark is widely well-known. The Complainant further contends that the Respondent is clearly trading on its famous PATAGONIA and WORN WEAR arks, attracting and diverting Internet traffic from the Complainant’s own websites in an effort to promote sales also of the Complainant’s competitors’ goods. In addition, according to the Complainant, the Respondent’s use of Patagonia’s trademarks to drive Internet traffic for its own profit is further evidence of bad faith. Finally, the Respondent’s bad faith registration is evidenced by the fact that Respondent is hiding his or her identity through the use of a privacy protection service. Such concealment of contact information, in combination with the Respondent’s blatant exploitation of the Complainant’s trademarks is additional evidence of bad faith.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 15(a) of the Rules instructs this Panel to “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”.
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in order to obtain an order that the disputed domain name should be transferred or cancelled:
(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.
The Panel is satisfied that the registrant of record for the disputed domain name is the Respondent and will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied.
Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must first of all establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
It results from the evidence provided that the Complainant is the registered owner of various trademark registrations for the verbal elements PATAGONIA and WORN WEAR. Reference is made in particular to U.S. trademarks number 1189402 registered for goods in class 25 on February 9, 1982 with first use of August 1974 and number 4955520 registered for services in class 35 on May 10, 2016 with first use of October 2012. These trademarks predate the creation date of the disputed domain name which is December 31, 2018.
Many UDRP panels have found that a disputed domain name is confusingly similar to a complainant’s trademark where the disputed domain name incorporates the complainant’s trademark in its entirety (e.g., F. Hoffmann-La Roche AG v. Jason Barnes, ecnopt, WIPO Case No. D2015-1305; Compagnie Générale des Etablissements Michelin v. Christian Viola, WIPO Case No. D2012-2102; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack, WIPO Case No. D2015-0070; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies, WIPO Case No. D2015-0812; Rhino Entertainment Company v. DomainSource.com, WIPO Case No. D2006-0968; SurePayroll, Inc. v. Texas International Property Associates, WIPO Case No. D2007-0464). This Panel shares this view and notes that the Complainant’s registered trademarks PATAGONIA and WORN WEAR are fully included in the disputed domain name. In addition, it is the view of this Panel that the combination of the two trademarks PATAGONIA and WORN WEAR cannot exclude the confusing similarity between the disputed domain name and the Complainant’s trademarks.
Furthermore, and according to UDRP panel consensus, the applicable generic Top-Level Domain (“gTLD”) suffix “.com” in the disputed domain name is to be disregarded under the confusing similarity/identity test.
Hence, this Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks pursuant to the Policy, paragraph 4(a)(i).
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests to the disputed domain name. In the Panel’s view, based on the undisputed allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name.
According to the Complaint, which has thus remained unchallenged, the Complainant has not authorized the Respondent’s use of the trademarks PATAGONIA and WORN WEAR, e.g. by registering the disputed domain name comprising said trademarks entirely.
Furthermore, the Panel notes that there is no evidence in the record or WhoIs information showing that the Respondent might be commonly known by the disputed domain name in the sense of paragraph 4(c)(ii) of the Policy.
Finally, it results from the Complainant’s non-contested evidence that the disputed domain name resolves to a website on which both the Complainant’s PATAGONIA goods and competing goods are sold. Since this use is clearly commercial, it cannot be considered a legitimate, noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue pursuant to paragraph 4(c)(iii) of the Policy. Furthermore, such use cannot be qualified a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy and the Oki data jurisprudence as mislead and divert consumers making them erroneously believe that the Respondent is an authorized dealer, retailer, or re-seller of PATAGONIA products, and is authorized to promote sales of PATAGONIA products alongside of competing goods. This is reinforced by the following facts: (1) the Respondent did not add any note, information or disclaimer pointing out that it has actually no relationship with the Complainant; (2) this website is accessible under a domain name that combines the Complainant’s trademarks PATAGONIA and WORN WEAR.
It is acknowledged that once the Panel finds such prima facie case is made, the burden of production shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence, this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant is therefore deemed to have satisfied paragraph 4(a)(ii) of the Policy.
According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith. One of these circumstances is that the Respondent by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location or of a product or service on its website or location (paragraph 4(b)(iv) of the Policy).
It is the view of this Panel that these circumstances are met in the case at hand:
The Complainant’s trademarks have existed for decades and are widely known. In addition, the Panel notes that the disputed domain name is the combination of two of the Complainant’s trademarks and on the website, to which the disputed domain name leads, PATAGONIA products are offered for sale (together with competing products). Therefore, this Panel has no doubt that the Respondent positively knew or should have known that the disputed domain name consisted – at least – of the Complainant’s PATAGONIA trademarks when it registered the disputed domain name. Registration of the disputed domain name in awareness of the reputed PATAGONIA mark (and the PATAGONIA products) and in the absence of rights or legitimate interests in this case amounts to registration in bad faith (see e.g. “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Petra Wirth, WIPO Case No. D2018-0246; KOC Holding A.S. v. VistaPrint Technologies Ltd, WIPO Case No. D2015-1910; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies, WIPO Case No. D2015-0812 and The Chancellor, Masters and Scholars of the University of Oxford v. Almutasem Alshaikhissa, WIPO Case No. D2014-2100; Deutsche Lufthansa AG v. Mustermann Max, Muster AG, WIPO Case No. D2015-1320).
According to the Complainant’s documented allegations – which remained uncontested – the disputed domain name resolves to a website on which both the Complainant’s goods and competing goods are sold. This website therefore benefits from the confusion arising from the similarities between the disputed domain name and the products offered by the Complainant. Therefore, it is highly likely that the Respondent received revenue from Internet users who came across the Respondent’s website by means of confusion with the PATAGONIA trademark (see “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Petra Wirth, WIPO Case No. D2018-0246; F. Hoffmann-La Roche AG v. Jason Barnes, ecnopt, WIPO Case No. D2015-1305; The Chancellor, Masters and Scholars of the University of Oxford v. Almutasem Alshaikhissa, WIPO Case No. D2014-2100; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies, WIPO Case No. D2015-0812) and who purchased products of the Complainant’s competitors. In view of the distinctive quality possessed by the well-known PATAGONIA trademark in the apparel sector, the Respondent’s registration of the disputed domain name containing that mark combined with another of the Complainant’s trademarks is a clear indication of the Respondent’s bad faith.
The finding of bad faith registration and use is supported by the further circumstances resulting from the case at hand which are (i) the high degree of distinctiveness and the worldwide reputation of the Complainant’s mark, (ii) the Respondent’s failure to submit a response or to provide any evidence of actual or contemplated good faith use, (iii) the implausibility of any good faith use to which the disputed domain name may be put, (iv) the Respondent concealing its identity behind a privacy shield (see section 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition).
In the light of the above the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to 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 disputed domain name <patagoniawornwear.com> be transferred to the Complainant.
Tobias Malte Müller
Sole Panelist
Date: August 19, 2019