The Complainant is Pro - Direct Group Limited, United Kingdom, represented by Ashfords LLP, United Kingdom.
The Respondent is Whois Agent, Domain Protection Services, Inc. / Leslie Baumgartner, United States of America.
The disputed domain name <prodirectonline.com> is registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 27, 2021. On May 28, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 30, 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 May 31, 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 amendment to the Complaint on June 2, 2021.
The Center verified that the Complaint together with the amendment to 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 June 3, 2021. In accordance with the Rules, paragraph 5(a), the due date for Response was June 23, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 24, 2021.
The Center appointed Alistair Payne, Gareth Dickson, and David H. Bernstein as panelists in this matter on July 16, 2021. The Panel finds that it was properly constituted. Each member of 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 an e-commerce company that sells a variety of products, particularly athletic apparel. The Complainant owns United Kingdom trademark registrations for the trademarks PRO:DIRECT and PRO-DIRECT, both registered at the UK Intellectual Property Office on October 27, 2017. The Complainant asserts that it has been trading under these marks since 1991. The Complainant also owns multiple domain names with the prefix “prodirect” and the generic Top-Level Domain ("gTLD") “.com”, including <prodirectsoccer.com> and <prodirectselect.com>.
The Respondent registered the disputed domain name, <prodirectonline.com>, on September 19, 2019. The Respondent used the disputed domain name for a website that sold athletic apparel and used branding reminiscent of the Complainant’s website, namely, white text and icons placed over a black banner. After the Complainant contacted the Respondent on April 13, 2021, the Respondent redirected traffic from the disputed domain name to the domain name <prosoccernew.com>. At the time of this writing, the disputed domain name resolves to a landing page with pay-per-click advertising that redirects users to a number of other websites that retail athletic apparel in competition with the Complainant, including <tennisexpress.com> and <zappos.com>.
The Complainant argues that the disputed domain name is identical to the Complainant’s marks because the term “online” and the gTLD “.com” should be disregarded in the assessment of similarity. In the alternative, the Complainant submits that the disputed domain name is confusingly similar to the Complainant’s marks because it differs only by non-distinctive elements, including the absence from the disputed domain name of a hyphen (" - ") or a colon (" : ") between "PRO" and "DIRECT".
Further, the Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name because the Complainant did not give the Respondent permission to use its marks and because the Respondent has no independent right or legitimate interests in respect of the use of the Complainant's mark in the disputed domain name. According to the Complainant, the Respondent’s use of the disputed domain name, coupled with its similar branding and sale of identical product types, was intended to suggest sponsorship or endorsement by the Complainant, contrary to the fact.
Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith because the Respondent deliberately sought to create confusion with the Complainant’s marks in order to attract Internet users to its website for commercial gain.
The Complainant requests that the Administrative Panel transfer the disputed domain name to the Complainant.
The Respondent did not reply to the Complainant’s contentions.1
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order to obtain transfer of the disputed domain name:
(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 with respect to the disputed domain name; and
(iii) the Respondent registered and is using the disputed domain name in bad faith.
As noted above, the Respondent did not submit a Response. Accordingly, pursuant to paragraph 5(f) of the Rules, the Panel may proceed to decision based upon the Complaint, and the Panel may accept as true the uncontested factual allegations in the Complaint. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3. However, the Complainant is still obligated to prove its entitlement to the requested relief by a preponderance of the evidence. Id.
The Complainant has submitted evidence that it owns registrations for the PRO-DIRECT and PRO:DIRECT trademarks in the United Kingdom. Consequently, the Complainant has established that it has rights in these trademarks. Id., section 1.2.1 (“Where the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case.”).
The Complainant has also demonstrated that the disputed domain name is confusingly similar to the Complainant’s trademarks in that the disputed domain name includes the entirety of the trademark (other than a hyphen or a colon, the latter of which cannot be represented in a domain name in any event), and adds only the word “online” and the gTLD “.com.” Id., section 1.7 (“in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”); Id., section 1.8 (“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”). As for the gTLD “.com,” that is a standard registration requirement not generally considered for purposes of assessing confusing similarity except in those circumstances where the first- and second-level domains, together, contributed to the confusing similarity (which is not the case here). Id., section 1.11.1.
Accordingly, the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
The Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Complainant has alleged that it has not given the Respondent permission to use the PRO-DIRECT or PRO:DIRECT trademarks.
Further, there is no evidence that the Respondent has been commonly known by the disputed domain name.
Nor is there any basis for finding rights or legitimate interests based on the content of the Respondent’s website, especially given the Respondent's efforts to ensure that its website copied and mimicked the Complainant's website for the purpose of misleading Internet users as to the origin of goods and services offered thereunder.
Given that the Complainant’s prima facie showing is unrebutted, the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that may constitute evidence of a respondent’s bad faith. The Complainant argues that, by using the disputed domain name, the Respondent intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s marks 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. See Policy, paragraph 4(b)(iv).
The record supports a finding that the Respondent registered the disputed domain name in bad faith. Here, the Respondent registered a domain name that incorporates in its entirety the distinctive and reproducible elements of the Complainant’s mark, adding only the word “online” that easily could confuse Internet users into believing that the disputed domain name is the Complainant’s online store. See e.g., WIPO Overview 3.0 section 2.5.1. The Respondent registered the disputed domain name in 2019, two years after the Complainant registered its trademarks and nearly thirty years after it had begun using them in trade. The fact that the content of the Respondent’s website mimicked elements of the Complainant’s website supports a finding that the Respondent must have known of the Complainant’s mark or website when it registered the disputed domain name. These facts are indicative of an effort to create and capitalize on consumer confusion between the Complainant’s trademark and the Respondent’s disputed domain name.
The record also supports a finding that the Respondent is using the disputed domain name in bad faith. Registering a domain name to redirect to a website that competes with the owner of the trademark is “frequently seen as evidence of use in bad faith.” NVIDIA Corporation v. Brent Angie/Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtection.org, WIPO Case No. D2014-1171. Originally, the Respondent used the disputed domain name for a website at which it sold the same types of goods as those sold by the Complainant, notably football boots.
The website bore an identical mark to the Complainant’s mark and was similarly designed with white text and icons placed over a black banner.
After the Complainant contacted the Respondent, the Respondent began using the disputed domain name as a landing page that linked to <prosoccernew.com>, a website that competes directly with the Complainant by selling similar products on a web page that is also visually similar to the Complainant’s website. This only exacerbated the potential for consumer confusion.
More recently, the Respondent has used the disputed domain name as a landing page with pay-per-click links to a number of other websites, many of which also compete with the Complainant. These websites include <tennisexpress.com> and <zappos.com>. Each of these uses represented a bad faith attempt to confuse consumers. See generally WIPO Overview 3.0, section 3.1.4; see also Id., section 2.9 (“the use of a domain name to host a parked page comprising PPC links does not represent 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”).
Accordingly, 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, <prodirectonline.com>, be transferred to the Complainant.
Alistair Payne
Presiding Panelist
Gareth Dickson
Panelist
David H. Bernstein
Panelist
Date: July 30, 2021
1Given the absence of a Response, the Panel has carefully reviewed the record to ensure that Respondent received the opportunity for fair notice of this proceeding. Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000‑1415. The Center sent notification of the Complaint to the Respondent by email, courier, and facsimile. The email was sent to two email addresses, and neither was bounced back. The Written Notice was sent by DHL (courier), but not delivered because the recipient’s premises were closed. The facsimile was successfully transmitted. Thus, it appears that the Respondent received actual notice of the Complaint, but even if it did not, the Panel finds that the Center has discharged its obligation to provide fair notice to the Respondent as required by the Rules, paragraph 2(a).