The Complainant is WagJag Ltd. of Toronto, Canada, represented by Deeth Williams Wall, LLP, Canada.
The Respondent is Oneup Media of Toronto, Canada.
The disputed domain name <wagjagtoronto.com> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 29, 2011. On August 1, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On August 2, 2011, GoDaddy.com, Inc. 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 August 3, 2011 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 August 8, 2011.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 9, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 29, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 30, 2011.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on September 2, 2011. 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 operates an online business promoting the goods and services of others by providing a website featuring coupons, price comparison information, product and service reviews, links to retail websites of others and discount information. The Complainant owns a Canadian trademark application (Serial No. 1,502,323) for the trademark WAGJAG. The Complainant has used the trademark WAGJAG since December 20, 2009 in connection with their online business. The Complainant’s domain name <wagjag.com> was registered on August 19, 2003 and has been actively used for a website promoting the goods and services of others by offering coupons, price comparison information, product and service reviews and links to other retail websites since December 20, 2009. The Complainant also owns the domain name <wagjag.ca> since October 6, 2009, and that domain name has been active since December 20, 2009.
The Respondent registered the disputed domain name on November 19, 2010. At the time the Complaint was filed, the disputed domain name reverted to a website that provided links to other e-commerce websites that feature coupons, price comparison information, product and service reviews, links to retail websites of others and discount information through tags such as: wagjag, wagjag daily deals, wagjag Toronto and wagjag Toronto deals, all of which revert to an e-commerce website operated by a third party.
At the time the Complainant was filed, the Complainant owned a Canadian trademark application for the mark WAGJAG (Serial No. 1,502,323), and common law rights in the WAGJAG trademark since December 20, 2009. The Respondent has registered the disputed domain name which is identical to the Complainant’s registered trademark, except for the addition of the geographical indicator “Toronto”. The Complainant contends that the addition of a geographical descriptor to a trademark does not distinguish the disputed domain name from the Complainant’s trademark.
The Respondent is not publicly known by the “Wagjag” name, and the Complainant submits that the Respondent cannot have any rights or legitimate interests in the disputed domain name, because the Complainant has exclusive rights to the trademark WAGJAG in Canada. The Respondent has no past or current business relationship with the Complainant, and the Respondent was never licensed or otherwise authorized to use the Complainant’s trademark. Further, the Respondent is not making a bona fide use of the disputed domain name, and has used the disputed domain name in connection with a website which provides links to third party websites belonging to direct competitors of the Complainant.
The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith for the following reasons: (i) the Respondent must have known about the Complainant’s rights in the trademark WAGJAG when it registered a confusingly similar domain name; (ii) the Respondent’s addition of the geographical descriptor “Toronto” actually increases the risk of confusion among interested users, and is a deliberate attempt to trade on the goodwill and reputation of the Complainant; (iii) the Respondent did not respond to the cease and desist letter sent by the Complainant; and (iv) the Respondent registered and is using a confusingly similar domain name which reverts to a website that provides links to websites of direct competitors of the Complainant.
The Respondent did not reply to the Complainant’s contentions.
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(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.
The Panel finds that the Complainant does have trademark rights in the mark WAGJAG by virtue of Canadian trademark application (Serial No. 1,502,323) and the common law rights dating back to December 20, 2009. The Panel notes that at the time the Complaint was filed, the subject Canadian trademark application had been advertised for opposition purposes, and no opposition was initiated. The application issued to Registration under Registration No. TMA 805,304, on August 25, 2011.
The Panel further finds that the disputed domain name is identical to the Complainant’s registered trademark WAGJAG, except for the addition of the geographical descriptive word “Toronto”. The addition of such a descriptive word does not serve to distinguish the disputed domain name from the Complainant’s trademark. The Panel notes that the dominant element of the Complainant’s trademark and the disputed domain name is the coined word “wagjag”, and the Panel therefore agrees with the Complainant’s contention that the mark and the disputed domain name are confusingly similar.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a) of the Policy.
The Panel notes that the Respondent did not file any response to the Complaint and accordingly did not contest any of the facts stated in the Complaint. The Panel is therefore prepared to accept the Complainant’s contention that its trademark and its online services have developed a reputation in Canada.
The Panel notes that the Respondent had two opportunities to assert rights in the WAGJAG trademark prior to this Complaint and it chose not to do so. The Respondent failed to respond in any manner to the Complainant’s cease and desist letter dated February 22, 2011. Furthermore, the Respondent did not oppose the Complainant’s trademark application Serial No. 1,502,323 before the Canadian Trademarks Office when it had two months to do so. The Respondent at no time asserted any rights in the WAGJAG trademark. The Panel is therefore prepared to infer that the Respondent likely knew it had no rights to own or use the confusingly similar disputed domain name.
The Panel finds no evidence that the Respondent is commonly known by the name “Wagjag”, or that the Respondent was licensed or authorized by the Complainant to use the trademark WAGJAG, or has any other form of legitimate interest in the “Wagjag” name.
The Complainant has therefore satisfied the requirements under paragraph 4(b) of the Policy.
The Panel, upon review of the evidence filed in the Complaint, and taking into consideration that the Respondent did not file any response contesting the facts contained therein, finds that the Respondent likely registered and has used the disputed domain name in bad faith.
The Panel finds that the Respondent was most likely aware of the Complainant’s trademark rights when the Respondent registered the confusingly similar disputed domain name, and when it began operating a website in connection with the disputed domain name which provides tags and links to other websites operated by direct competitors of the Complainant. The Panel is led to this conclusion by the fact that “wagjag” is a coined word, with a business operation in Toronto. It cannot be coincidence that the Toronto-based Respondent chose to copy this coined name in its own place of operation. The Panel finds that the use of the confusingly similar disputed domain name in association with a website that provides tags and links to a Complainant’s competitors’ websites for the purposes of monetary gain is an evidence of bad faith under the Policy.
Accordingly, the Panel finds that the Complainant has satisfied the requirements under paragraph 4(c) under 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 <wagjagtoronto.com> be transferred to the Complainant.
Christopher J. Pibus
Sole Panelist
Dated: September 16, 2011