The Complainant is Maggie Sottero Designs, LLC, United States of America (“United States”), represented by Sparke Helmore, Australia.
The Respondent is NetSupport AskMySite, AskMySite.com LLC, United States.
The disputed domain name <sottero.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2020. On December 21, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 22, 2020, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 29, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 18, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 19, 2021. The Respondent thereafter submitted an email communication to the Center on January 19, 2021, which the Center in reply advised would be treated as the Response unless advised otherwise by the Respondent. The Respondent did not advise the Center otherwise.
The Center appointed William R. Towns as the sole panelist in this matter on January 26, 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, organized as Maggie Sottero Designs L.L.C. in 1997, is a well-known designer, manufacturer, and wholesaler of bridal gowns (“Maggie Sottero Gowns”), sold in bridal salons in over 70 countries. The Complainant has traded under the name “Maggie Sottero Designs” since 1997 and holds trademark registrations for its MAGGIE SOTTERO mark secured in the United States and numerous other jurisdictions, including but not limited to the following:
- United States Reg. No. 2415876, applied for January 21, 2000, and registered December 26, 2000;
- International Reg. No. 0942290, registered on October 17, 2007;
- United Kingdom Reg. No. 2281954, applied for September 28, 2001, and registered March 15, 2002;
- Hong Kong Reg. No. 301946278, registered on June 15, 2011; and
- China Reg. No. 22909149, applied for February 23, 2017, and registered April 21, 2018.
The Complainant and its licensees are the holders of numerous domain names incorporating the Complainant’s MAGGIE SOTTERO mark, including <maggiesottero.com>; <maggiesottero.asia>; <maggiesottero.ca>; <maggiesotterobridal.com>; and <maggiesotterodesigns.com>.
The disputed domain name <sottero.com> was created on November 16, 2003, and updated on November 24, 2020, according to the Registrar’s WhoIs records. The Respondent represents that the disputed domain name was registered some seventeen (17) years ago at the request of an East European customer, whose identity the Respondent has not disclosed. The Complainant registered and had been using the MAGGIE SOTTERO mark in commerce for several years at the time the disputed domain name initially was created and registered. The disputed domain presently name resolves to a parked page with pay-per-click (“PPC”) links to other websites offering wedding dresses, bridal dresses, and other fashion apparel competing with those offered by the Complainant under its MAGGIE SOTTERO mark.
The Complainant submits that the disputed domain name <sottero.com> is identical or confusingly similar to the Complainant’s MAGGIE SOTTERO mark. The Complainant maintains that its well-known MAGGIE SOTTERO mark clearly is recognizable in the disputed domain name, adding that the disputed domain name diverts Internet traffic from the Complainant’s genuine website to an infringing website.
The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant avers that the Respondent has not been authorized to use the Complainant’s well-known MAGGIE SOTTERO mark or other signs identical or confusingly similar to the Complainant’s mark. The Complainant asserts that the Respondent has not used or demonstrated preparations to use the disputed domain name in connection with any bona fide offering of goods or services, is not making a legitimate noncommercial or fair use of the disputed domain name, and has not been commonly known by the disputed domain name. According to the Complainant, the Respondent intentionally is using the disputed domain name to generate PPC links capitalizing on the reputation and goodwill of the Complainant’s MAGGIE SOTTERO mark and otherwise misleading Internet users.
The Complainant ads that “Sottero” is not an ordinary English dictionary word, and has a deeply personal connection to the family name of the great grandmother of Lesley Margaret “Maggie” Steiner, one of the first designers of Maggie Sottero Gowns. The Complainant asserts that no conceivable legitimate noncommercial or other fair use of the disputed domain name could be made by the Respondent in these circumstances.
The Complainant maintains that the Respondent registered and is using the disputed domain name in bad faith. The Complainant notes that the disputed domain name was registered by the Respondent on or about November 16, 2003, and considers it apparent that the disputed domain name since then has been used in bad faith by the Respondent.
The Complainant submits that the Respondent knew or should have known when acquiring the disputed domain name that it was confusingly similar to the Complainant’s MAGGIE SOTTERO mark. The Complainant emphasizes that the MAGGIE SOTTERO mark was a widely known mark by at least 2003 if not earlier, and maintains that the Complainant’s website has been continuously accessible worldwide at <maggiesottero.com> since July 2001.
The Complainant emphasizes that the Respondent has no rights or legitimate interest in either the disputed domain name or “Sottero.” The Complainant reiterates that MAGGIE SOTTERO is a well-known mark, and submits there is no conceivable good faith use of the disputed domain name that could be made by the Respondent, citing Jazzercise, Inc. v. Fundacion Privacy Services LTD, WIPO Case No. D2020-1133. The Complainant calls attention to a reverse WhoIs search reflecting as of December 2020 that the Respondent is the registrant of some 27,111 domain names, including a number of marks of other brand holders.
The Complainant maintains the Respondent registered the disputed domain name to sell it to the Complainant or to a competitor of the Complainant for an excessive amount. According to the Complainant, the Respondent also has attempted for commercial gain to create a likelihood of confusion with the Complainant’s MAGGIE SOTTERO mark as to source, sponsorship, affiliation, or endorsement of the disputed domain name.
The Respondent in an email communication on January 19, 2021, submitted the following response. The Respondent maintains that the disputed domain name <sottero.com> was registered by AskMYSite.com (the Respondent) some 17 years ago in accordance with an “official order-instruction” sent by one of the Respondent’s “valuable East European customers.”
The Respondent represents that it carries out only technical control, management and support of the disputed domain name. The Respondent submits that the disputed domain does not conflict with the Complainant’s “business-theme”, asserting it is the “company name of our customer/domain owner.” According to the Respondent, its “principal” will consider reasonable proposals to “reduce this contradiction zone […]”
Paragraph 1 of the Rules defines the Respondent as “the holder of a domain name registration against which a complaint is initiated”. Paragraph 4(b) of the Rules provides that updates to the Respondent’s data, including a request by a privacy or proxy provider to reveal the underlying customer data, must be made before the two business day period concludes or before the Registrar verifies the information requested and confirms the lock to the UDRP Provider, whichever occurs first. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.4.
There is no indication in the record that the Respondent timely disclosed to the Registrar any underlying customer data within the time periods provided in either paragraph 4(b) of the Rules or paragraph 3.7.7.3 of the Registrar Accreditation Agreement (RAA). In view of the foregoing, and taking into consideration the totality of the facts and circumstances in the record, the Panel considers that the Respondent is the Registered Name Holder and WhoIs-listed registrant of the disputed domain name against which the instant Complaint was initiated, and as such properly named as the WhoIs-listed registrant in the Complaint. See WIPO Overview 3.0, sections 4.4.5 & 4.4.6; RAA paragraph 3.7.7.3.
The Panel further notes, in reference to RAA paragraph 3.7.7.3, that as a WhoIs-listed registrant, the privacy or proxy service may be subject to liability for any use of the disputed domain name when electing not disclose the contact information of the underlying beneficial registrant.1 See WIPO Overview 3.0, section 4.4.6 and cases cited therein. See also Monster Energy Company v. Registration Private, Domains By Proxy, LLC, WIPO Case No. D2018-2817; Facebook, Inc., Instagram, LLC, WhatsApp Inc. v. Osbil Technology, Osbil Technology Ltd, WIPO Case No. D2018-2906.
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the 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 with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, previous UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the view is that the burden of production shifts to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See WIPO Overview 3.0 , section 2.1. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The Panel finds that the disputed domain name <sottero.com> is confusingly similar to the Complainant’s MAGGIE SOTTERO mark, in which the Complainant has established rights through registration and use in commerce since as early as 1997. In considering identity and confusing similarity, the first element of the Policy serves essentially as a standing requirement.2 The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the Complainant’s trademark and the disputed domain name.
The Complainant’s MAGGIE SOTTERO mark is recognizable in the disputed domain name.3 The Panel considers “Sottero” the dominant element of the Complainant’s mark, and the Respondent’s use of the disputed domain name with PPC websites clearly reflects targeting of the Complainant’s mark.4 Generic Top Level Domains (“gTLDs”) generally are disregarded when evaluating the identity or confusing similarity of the complainant’s mark to the disputed domain name under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the gTLD.5
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant’s MAGGIE SOTTERO mark. Nonetheless, the Respondent has registered the disputed domain name, which is confusingly similar to the Complainant’s MAGGIE SOTTERO mark, and which the Respondent has used to generate PPC links to third-party websites featuring wedding dresses, bridal dresses, and other fashion apparel competing with or similar to those offered by the Complainant under its MAGGIE SOTTERO mark.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a 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 disputed domain name in connection with a bona fide offering of goods or services; or
(ii) 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.
The Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy. The Panel concludes from the record that the Respondent was aware of the Complainant and had the Complainant’s MAGGIE SOTTERO mark in mind when registering the disputed domain name. The record is convincing that the Respondent registered the disputed domain name with the aim of exploiting and profiting from the Complainant’s mark through the generation of revenue from PPC advertising. UDRP panels consistently have found that the use of a domain name to host a parked page comprising PPC links does not constitute a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users. See WIPO Overview 3.0, section 2.9. See,e.g., Limit, LLC and Newman’s Own, Inc. v. Lisa Katz, Domain Protection LLC, WIPO Case No. D2020-0685; Paris Hilton v. Deepak Kumar, WIPO Case No. D2010-1364.
Having regard to all of the relevant circumstances in this case, the Panel concludes that the Respondent has neither used nor demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services, and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Further, there is no indication that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a finding of the Respondent’s rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt 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 its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. As previously noted, the Panel concludes that the Respondent was aware of the Complainant and had the Complainant’s MAGGIE SOTTERO mark in mind when registering the disputed domain name. The record is convincing that the Respondent registered the disputed domain name seeking to capitalize on the reputation and goodwill of the Complainant’s mark in order to mislead Internet users and profit from the generation of PPC advertising revenues.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of 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 <sottero.com> be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: February 9, 2021
1 Paragraph 3.7.7.3 of the RAA provides as follows:
3.7.7.3 Any Registered Name Holder that intends to license use of a domain name to a third party is nonetheless the Registered Name Holder of record and is responsible for providing its own full contact information and for providing and updating accurate technical and administrative contact information adequate to facilitate timely resolution of any problems that arise in connection with the Registered Name. A Registered Name Holder licensing use of a Registered Name according to this provision shall accept liability for harm caused by wrongful use of the Registered Name, unless it promptly discloses the identity of the licensee to a party providing the Registered Name Holder reasonable evidence of actionable harm.
2 See WIPO Overview 3.0 , section 1.7.
3 See WIPO Overview 3.0, sections 1.7, 1.8, and relevant decisions.
4 See WIPO Overview 3.0, section 1.15.
5 See WIPO Overview 3.0, sections 1.11 , 1.12, and relevant decisions.