Complainant is Thule Sweden AB of Hillerstorp, Sweden, represented by CSC Digital Brand Services AB, Sweden.
Respondent is Isaac Goldstein of Hong Kong, China.
The disputed domain name <wwwthule.com> is registered with Dropoutlet, Incorporated (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 12, 2013. On December 12, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 12, 2013, the Registrar transmitted by email to the Center its verification response confirming that 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 20, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 9, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 10, 2014.
The Center appointed Sandra Sellers as the sole panelist in this matter on January 21, 2014. 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.
Complainant is part of the Thule Group, which was founded in 1942. Complainant is the owner of the THULE trademark, which is registered in over 50 countries as well as through various international registrations. Products such as carriers and roof racks, as well as other carrying devices, are sold under the THULE brand all over the world. Complainant also owns over 186 domain names containing the THULE mark, including <thule.com>.
The disputed domain name was created on October 6, 2013. The disputed domain name resolves to a webpage containing links to other providers of storage and carrying devices.
Complainant asserts that it has rights in the THULE trademark. It contends that the disputed domain name is confusingly similar to Complainant’s mark because it consists of Complainant’s THULE mark in its entirety, and that the only difference between Complainant’s mark and the disputed domain name is the addition of “www”. Complainant further alleges that Respondent has no rights or legitimate interests in the disputed domain name, and that it registered and uses the disputed domain name in bad faith.
Respondent did not reply to Complainant’s contentions.
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) 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.
As set forth above, Complainant is the owner of the THULE trademark, which is registered in over 50 countries as well as through various international registrations. Products such as carriers and roof racks, as well as other carrying devices, are sold under the THULE brand all over the world. Complainant therefore has demonstrated that it has rights in the THULE mark.
The disputed domain name is confusingly similar to Complainant’s THULE mark. It contains Complainant’s THULE mark in its entirety. The only difference between Complainant’s mark and <wwwthule.com> is the addition of “www”, and the generic Top Level Domain (gTLD) “.com”. Previous UDRP panels have held that the addition of “www” does not negate confusing similarity. The letters “www” are commonly used to refer to the World Wide Web. The letters are not distinctive. The addition of such generic, non-distinctive letters to the trademark does not distinguish the disputed domain name from Complainant’s trademark. See, e.g., Société Air France v. Vladimir Federov, WIPO Case No. D2003-0639; Wal-Mart Stores, Inc. v. Longo, WIPO Case No. D2004-0816; Public Service Electric & Gas Company and its affiliates and subsidiaries v. The Whois Privacy Service/ Adjaele Global Internet Ltd, WIPO Case No. D2011-1799. Similarly, many UDRP panels have found that the addition of the gTLD “.com” does not distinguish a domain name from a complainant’s mark.
Accordingly, the Panel finds that Complainant has rights in the THULE mark and that the disputed domain name is confusingly similar to Complainant’s mark. Complainant has established the first element under paragraph 4(a) of the Policy.
Because it is generally difficult for a complainant to prove that a respondent does not have any rights or legitimate interests in a disputed domain name, previous UDRP panels have found it sufficient for a complainant to make a prima facie showing of its assertion where there has been no response.
Complainant has exclusive rights in the THULE mark and has not authorized Respondent to register and use the disputed domain name <wwwthule.com>. Respondent is not affiliated with or related to Complainant, nor is Respondent licensed or authorized to use the THULE mark. Respondent has made no showing that it has any rights or legitimate interests in the disputed domain name. On the evidence before the Panel, Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name.
The Panel is satisfied that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in the disputed domain name.
Respondent is in default, and has not provided any evidence in its own favor.
The Panel finds that the evidence in the record is sufficient to establish that Respondent has no rights or legitimate interests in the disputed domain name, and thus Complainant meets the second criterion of paragraph 4(a) of the Policy.
Paragraph 4(b) of the Policy states that:
“for the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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 complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
Registration in Bad Faith
It is difficult to conceive that Respondent did not know of Complainant’s marks and products when Respondent registered the disputed domain name. As set forth above, THULE products are protected by various trademark registrations worldwide. Complainant has used the THULE mark on its THULE products since 1942. All of this occurred well before Respondent registered <wwwthule.com> on October 6, 2013. Further, the disputed domain name resolves to a web page containing links to other companies that sell carriers and other storage products. Based on these facts, this Panel infers that Respondent was aware or must have been aware of Complainant’s mark when Respondent registered the disputed domain name, and therefore registered it in bad faith. See, e.g., Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574, in which the panel found it “inevitable that [r]espondent registered the domain names in full knowledge of [c]omplainant’s rights and interests”.
Use in Bad Faith
The Respondent has used the disputed domain name in violation of all of the factors set forth in paragraph 4(b) of the Policy.
The evidence shows that Respondent is offering the disputed domain name for sale through SEDO for USD 1,525, which considerably exceeds its out-of-pocket costs to purchase the disputed domain name. This violates paragraph 4(b)(i) of the Policy. See, e.g., The Wiggles Touring Pty Ltd v. Thompson Media Pty Ltd, WIPO Case No. D2000-0124.
Respondent has engaged in a pattern of conduct evidencing that he has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name. Respondent has been named in several previous UDRP decisions, all of which have ordered transfer of the disputed domain names to the complainants. A pattern of conduct as required in paragraph 4b(ii) of the Policy typically involves multiple domain names directed against multiple complainants, but may involve multiple domain names directed against a single Complainant. See Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046, and cases cited therein. Respondent’s conduct, in the Panel’s view, violates paragraph 4(b)(ii) of the Policy.
The Panel finds that Respondent also has used the disputed domain name in bad faith under paragraphs 4(b)(iii) and (iv) of the Policy. Respondent has attempted to disrupt Complainant’s business by confusing Internet users into believing that they have reached Complainant’s website. Respondent’s website intentionally attracts Internet users for commercial gain by linking to other websites through which Complainant’s competitors sell similar goods and services. It has long been held that this type of click-through revenue violates the Policy. See, e.g., Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267. Further, “typosquatting” has consistently been found to constitute bad faith. See, e.g., Neuberger Berman Inc. v. Alfred Jacobsen, WIPO Case No. D2000-0323.
Additionally, Complainant sent Respondent a cease and desist letter on October 23, 2013, and reminders on October 31 and November 7, 2013. Respondent therefore was made aware of Complainant’s rights in the THULE mark and Complainant’s demand that it transfer the disputed domain name to Complainant. A failure of a respondent to respond to a cease and desist letter has been considered relevant in finding bad faith. See News Group Newspapers Limited and News Network Limited v. Momm Amed Ia, WIPO Case No. D2000-1623; Nike, Inc. v. Azumano Travel, WIPO Case No. D2000-1598; and America Online, Inc. v. Antonio R. Diaz, WIPO Case No. D2000-1460).
This Panel therefore finds that Respondent has registered and is using the disputed domain name in bad faith in violation of paragraphs 4(b)(i-iv) 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 <wwwthule.com> be transferred to the Complainant.
Sandra Sellers
Sole Panelist
Date: January 28, 2014