The Complainant is Euromarket Designs, Inc. d/b/a Crate & Barrel, United States of America (“United States”), represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf, Iceland, / Pulor ogum, United States.
The disputed domain name <crateandbarrel.careers> is registered with NameCheap, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 21, 2021. On October 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 22, 2021, 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 October 22, 2021, 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 October 26, 2021. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on November 9, 2021.
The Center verified that the Complaint together with the amended Complaints 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 November 10, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 30, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 2, 2021.
The Center appointed Andrew J. Park as the sole panelist in this matter on December 13, 2021. 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, Euromarket Designs, Inc. d/b/a Crate and Barrel is a global company with more than 100 store locations in 12 countries across three continents, offering not only a wide range of unique home furnishings and home decor items, but also international shopping and shipping to its online customers through its website linked to its primary domain name <crateandbarrel.com>. The Complainant was first founded in 1962 in Chicago, Illinois, United States, and, in 1998, became part of Otto Group of Hamburg, Germany, the second largest online retailer worldwide. The Complainant is the owner of trademark registrations across various jurisdictions, European Union Intellectual Property Office (“EUIPO”), the United States Patent and Trademark Office (“USPTO”), and the Canadian Intellectual Property Office (“CIPO”).
|
Trademark |
Jurisdiction/TM Office |
Registration No. |
Registration Date |
IC Class |
|
CRATE & BARREL |
EUIPO |
102145 |
June 11, 1998 |
20, 21, 24 |
|
CRATE & BARREL |
EUIPO |
1337427 |
November 30, 2000 |
7, 8, 11, 27 |
|
CRATE&BARREL |
USPTO |
1469514 |
December 15, 1987 |
42 |
|
CRATE AND BARREL |
USPTO |
1469515 |
December 15, 1987 |
42 |
|
CRATE & BARREL |
CIPO |
TMA290590 |
May 4, 1984 |
35 |
The Complainant’s official domain name <crateandbarrel.com> was registered on March 23, 1998.
The disputed domain name <crateandbarrel.careers> was created on July 19, 2021.
The Complainant sent a takedown notice to the host and registrar for the disputed domain name notifying them about the Respondent’s possible fraudulent registration and use of the disputed domain name. The website to which the disputed domain name resolves is currently suspended and is not being actively used.
The Complainant contends that the disputed domain name should be transferred to the Complainant for the following reasons.
(a) The disputed domain name is confusingly similar to the Complainant’s trademark CRATE & BARREL in which the Complainant has rights. The disputed domain name incorporates the Complainant’s trademark CRATE & BARREL in its entirety, rendering it identical to the Complainant’s trademark. The applicable Top-Level Domain (“TLD”) “.careers” in the disputed domain name can be viewed as a standard registration requirement and therefore, should be disregarded for the purpose of determining whether it is identical or confusingly similar to the Complainant’s trademark. In addition, the fact that the website, to which the disputed domain name resolves, redirects online customers to the Complainant’s official website, <crateandbarrel.com> reinforcing the impression that the Respondent intended the disputed domain name to be confusingly similar to the Complainant’s trademark as a means of furthering consumer confusion.
(b) The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant contends that the Respondent is not sponsored by or affiliated with the Complainant in any way and the Complainant has not licensed, authorized, or permitted the Respondent to register the disputed domain name incorporating the Complainant’s trademark. The Respondent is not commonly known by the disputed domain name, which evinces a lack of rights or legitimate interest. Further, the Complainant claims that the Respondent has registered the disputed domain name to use it for its website and email address and to attract, confuse and profit from Internet users seeking job opportunities with the Complainant by giving them the overall impression that there is an official connection between the Respondent and the Complainant. Such use of the disputed domain name and its website by the Respondent does not constitute a bona fide offering of goods or services. The Complainant also claims that there is no evidence that the Respondent is currently making a legitimate and fair use of the disputed domain name and the Complainant even reported the Respondent’s suspected phishing schemes to the host and Registrar, along with its redirecting activity.
(c) The disputed domain name was registered and is being used in bad faith. The Complainant claims that the Respondent must have been well-acquainted with the Complainant’s trademark when it registered the disputed domain name in 2021, because the Complainant started its business since 1962, which predates – by almost 60 years - the registration date of the disputed domain name. Further, the Complainant has been an international company with trademark registrations across numerous countries and has a worldwide reputation in its trademarks. The disputed domain name incorporates the Complainant’s trademark in its entirety and the Respondent even used the TLD, “.careers” to give the impression that its business is related to the Complainant’s recruiting activity, a definite indication of the Respondent’s bad faith intention to use the disputed domain name for commercial gain from Internet users who are seeking job opportunities with the Complainant. Furthermore, the Respondent used the disputed domain name to redirect Internet users back to the Complainant’s official website, thus making it clear that the Respondent was targeting the Complainant’s brands and business at the time of the registration of the disputed domain name. Lastly, the Respondent, at the time of initial filing of the Complaint, had employed a privacy service to hide its identity, which can be additional evidence of bad faith registration and use of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
This element consists of two parts: first, whether the Complainant has rights in a relevant trademark and, second, whether the disputed domain name is identical or confusingly similar to that trademark.
The Panel finds that the Complainant has established registered rights in the trademark CRATE AND BARREL and that the disputed domain name is identical to the Complainant’s trademark. The disputed domain name incorporates the Complainant’s trademark in its entirety, and the use of the TLD extension “.careers” does nothing to avoid a finding of confusing similarity to the Complainant’s trademark and may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11).
For these reasons, pursuant to the Policy, paragraph 4(a)(i), the Panel finds that the disputed domain name is identical to the Complainant’s trademark.
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the burden of production on this element shifts to the Respondent to come forward with relevant evidence demonstrating its rights or legitimate interests in the disputed domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
Here, the Panel finds that the Complainant has made out a prima facie case.
The Complainant has asserted that the Respondent has no relationship with or authorization from the Complainant to use its trademarks. There is nothing in the record to suggest that the Respondent has made a legitimate noncommercial or fair use of the disputed domain name or has been commonly known by the disputed domain name.
The Respondent registered the disputed domain name, created a website using the disputed domain name and used the TLD, “.careers” redirecting the Internet users who visited the Respondent’s website to the Complainant’s official website. The Respondent even used the Complainant’s trademark in its email address offering job opportunities with the Complainant to Internet customers who were seeking job opportunities with the Complainant, all in an effort to confuse Internet users or consumers about the relationship between the Respondent and the Complainant, and all without the Complainant’s permission or authorization, demonstrating that the Respondent never had an intention to use the disputed domain name in connection with a bona fide offering of goods and or services. Moreover, the nature of the disputed domain name carries a risk of implied affiliation with the Complainant (see WIPO Overview 3.0, section 2.5.1).
The Panel finds that the Respondent is improperly using the disputed domain name to create a false impression that the Respondent is affiliated with the Complainant. Also, the Panel notes that the use of a domain name for illegal activity such as phishing, impersonation/passing off, or other types of fraud can never confer rights or legitimate interests on a respondent (see WIPO Overview3.0, section 2.13.1)
The Panel finds that these facts may be taken as true in the circumstances of this case and in view of the use of the disputed domain name. Further, the Panel is unable to find any reasonable basis upon which the Respondent could be said to have any rights or legitimate interests in respect of the disputed domain name, and the Respondent has not filed a formal Response.
Accordingly, the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following is sufficient to support a finding of bad faith:
(i) circumstances indicating that the respondent has registered or 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 the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent 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 the respondent’s website or location or of a product or service on the respondent’s website or location.
The Complainant claims that the Respondent registered and is using the disputed domain name in bad faith in violation of the Policy, paragraph 4(a)(iii).
As already mentioned, the Respondent did not file any formal Response to the Complaint, failing thereby to rebut the Complainant’s allegations of the Respondent’s bad faith registration and use of the disputed domain name.
Nevertheless, the Panel still has the responsibility of determining which of the Complainant’s assertions are established as facts, and whether the conclusions asserted by the Complainant can be drawn from the established facts (see Harvey Norman Retailing Pty Ltd v. Oxford-University, WIPO Case No. D2000-0944).
The Panel finds the Respondent intentionally registered the disputed domain name - which is identical or confusingly similar to the Complainant’s trademarks - in bad faith for two main reasons.
First, the Complainant’s commencement of its business and its first use of the CRATE AND BARREL trademark since 1998 by far predate the registration date of the disputed domain name in 2021. The Respondent must have full knowledge of the Complainant and its brand from the fact that by the time the Respondent registered the disputed domain name, the Complainant already had a worldwide reputation in its trademark which is entirely incorporated in the disputed domain name.
Second, the website to which the disputed domain name resolves redirected Internet users to the Complainant’s official website, demonstrating that the Respondent targeted the Complainant and its business with full knowledge of the Complainant. Also, the Respondent not only used the TLD, “.careers” for the disputed domain name, but also used the Complainant’s trademark in its email address to confuse Internet users who were seeking job opportunities with the Complainant and pretending to be engaged in some recruiting activities for the Complainant. The Complainant has received complaints from third party victims of this phishing scam alerting it to the Respondent’s fraudulent activities in association with the disputed domain name.
These facts clearly show that the Respondent had knowledge of the Complainant’s trademark and business when it registered the disputed domain name and that it tried to show that there was a business relationship or affiliation between the Respondent and the Complainant. Furthermore, the Respondent’s fraudulent use of the disputed domain name in an attempt to represent itself as the Complainant and to perpetuate a fraud/phishing scam constitutes bad faith (see WIPO Overview 3.0, section 3.4). As submitted by the Complainant, there is no reason for the Respondent to have registered the disputed domain name and to have used it for fraudulent purposes other than to trade off the reputation and goodwill of the Complainant’s marks.
Accordingly, the evidence shows that the Respondent likely knew the Complainant’s trademark and has sought to take unfair advantage of the confusing similarity between the disputed domain name and the Complainant’s trademark to perpetuate a fraud/phishing scam.
Accordingly, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith pursuant to the Policy, paragraph 4(a)(iii).
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, <crateandbarrel.careers> be transferred to the Complainant.
Andrew J. Park
Sole Panelist
Date: December 27, 2021