WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Ross Stores, Inc. v. Domain Admin, Privacy Ltd. Disclosed Agent for YOLAPT / Whois Privacy Services Pty Ltd.

Case No. D2014-1569

1. The Parties

The Complainant is Ross Stores, Inc. of Dublin, California, United States of America, represented by Kilpatrick Townsend & Stockton LLP, United States of America (US).

The Respondent is Domain Admin, Privacy Ltd. Disclosed Agent for YOLAPT of Isle of Man, United Kingdom of Great Britain and Northern Ireland / Whois Privacy Services Pty Ltd. of Fortitude Valley, Queensland, Australia.

2. The Domain Name and Registrar

The disputed domain name <rosstores.com> is registered with Fabulous.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 12, 2014. On September 12, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 15, 2014, 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 September 25, 2014 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 September 30, 2014.

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 October 7, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 27, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 28, 2014.

The Center appointed Johan Sjöbeck as the sole panelist in this matter on November 3, 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.

4. Factual Background

The Complainant has submitted evidence that it is the owner of a number of trademark registrations consisting of or containing the term “Ross”:

ROSS, US trademark registration No. 2866767, first used September 1, 1957 and registered July 27, 2004.

ROSS (design), US trademark registration No. 2866768, first used November 2, 1982 and registered July 27, 2004.

ROSS DRESS FOR LESS, US trademark registration No. 1896618, first used October 31, 1982 and registered May 30, 1995.

ROSS DRESS FOR LESS (design), US trademark registration No. 2871679, first used October 31, 1982 and registered August 10, 2004.

ROSS DRESS FOR LESS (design), US trademark registration No. 3092798, first used October 31, 1982 and registered May 16, 2006.

The disputed domain name <rosstores.com> was registered on December 12, 2001.

5. Parties’ Contentions

A. Complainant

The Complainant was founded in 1950 and has grown to be the largest off-price retailer in the United States, operating over 1,140 retail department stores in 33 states under the trademarks ROSS and ROSS DRESS FOR LESS. Fiscal year revenues for the Complainant exceeded USD 10 billion in 2013. The Complainant’s advertising costs fiscal years 2013, 2012, and 2011 were USD 70.2 USD million, USD 67.7 million, and USD 59.9 million, respectively.

The Complainant operates the website “www.rossstores.com” which is used for advertising, gift card sales, store information, employment information and as a tool to keep its consumers informed of the company’s news and developments. The Complainant offers discounted apparel items, including clothing, footwear, and accessories, as well as common household items and furniture. By using the Complainant’s trademark ROSS in combination with the generic term “stores”, the Respondent is almost literally reproducing the Complainant’s website “www.rossstores.com”.

The Respondent has no business relationship with the Complainant. The Respondent is using the Complainant’s trademarks without any conceivable legitimate interests or rights, for the sole purpose of precluding the Complainant from registering and using the disputed domain name <rosstores.com>. The Respondent is capitalizing on consumer confusion, diverting online traffic from the Complainant’s website to the Respondent’s website and obtaining illicit pecuniary gain.

It is well established that the likelihood of confusion between a trademark and a domain name is not eliminated, or even necessarily reduced, by the addition of terms, particularly when those terms refer to or suggest a connection with the complainant, its products, or its brand. Here, because the Complainant operates a famous chain of retail stores and operates under the trade name Ross Stores, Inc., the addition of the generic term “stores” actually increases the likelihood of confusion by eliciting association with the Complainant’s trademark and making the disputed domain name practically indistinguishable from that of the Complainant’s. Consumers who encounter <rosstores.com> will believe that this domain name belongs to the Complainant.

Not only is the disputed domain name confusingly similar to the Complainant’s ROSS trademark, it is practically identical to the Complainant’s trade name and its long standing domain name <rossstores.com>, differing only by one letter “s” - a difference hardly of consequence, as the disputed domain name remains, for the most part, phonetically, visually and conceptually indistinguishable from the Complainant’s. Such common typosquatting tactics as adding, deleting, transposing, or substituting one letter for another are not sufficient to create a distinct mark and leads to likely confusion.

The Respondent’s website deceives visitors into thinking they have reached a website for applying for jobs at Ross Stores, by providing links to various employment services - all unaffiliated with the Complainant - that collect private information and charge for their services. The website also provides links to other third party advertisers offering goods akin to those offered by the Complainant. The sole purpose of the disputed domain name is to generate revenue from third party advertising. The Respondent knowingly and intentionally seeks to confuse Internet users seeking the Complainant and its website in order to facilitate this advertising revenue generation. In so doing, the Respondent diverts customers from the Complainant.

The Respondent is exploiting the ROSS trademark to lure the Complainant’s existing and potential customers. The website, to which the disputed domain name resolves, displays “rosstores.com” on top, suggests links such as “Ross Store Application”, “Ross Stores”, “Ross Department Stores”, “Ross Clothing” and others that prominently use the Complainant’s trademarks. To visitors, these links certainly appear to be either authentic websites of the Complainant or websites affiliated with the Complainant. In truth, however, none of the links direct users to the Complainant’s authentic website.

The Complainant has identified nine UDRP proceedings in which Privacy Ltd. Disclosed Agent for Yolapt appears as the respondent. These UDRP proceedings clearly establish the Respondent’s pattern of registering domain names containing trademarks for commercial gain, largely utilizing a third party advertising scheme.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant is, according to the submitted evidence, the owner of the registered trademark ROSS. Save for one single “s” letter, the disputed domain name <rosstores.com>comprises the Complainant’s trademark ROSS in its entirety with the addition of the term “stores”, which is a descriptive and generic term. The ability for a generic term, such as “stores”, to distinguish the disputed domain name from the trademark of the Complainant is limited, especially when considering that the Complainant operates a large number of stores under the trade name Ross Stores, Inc. Consequently, the addition of the term “stores” to the trademark may lead Internet users to believe that the Complainant operates and sells products through the Respondent’s website or that the Complainant is associated with the Respondent.

Having the above in mind, the Panel concludes that the disputed domain name <rosstores.com> is confusingly similar to the Complainant’s trademark ROSS and that the Complainant has proved the requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests with respect to the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

(i) that it has made preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services prior to the dispute; or

(ii) that it is commonly known by the disputed domain name, even if it has not acquired any trademark or service mark rights; or

(iii) that it intends to make a legitimate, noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

The Complainant has not licensed or otherwise consented to the Respondent’s use of the ROSS trademark in connection with the disputed domain name <rosstores.com>. From the submitted evidence in this case, it is clear that the Respondent’s website, to which the disputed domain name resolves, contains numerous sponsored commercial links to third-party websites offering goods and services similar or identical to those sold by the Complainant. The Respondent’s use of the disputed domain name serves the purpose of generating revenue via advertised pay-per-click products and links and it has been held in previous cases that such use does not represent a use in connection with a bona fide offering of goods and services.

The Respondent is not making a legitimate, noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark. The Respondent has not submitted any evidence in this case indicating that the Respondent is the owner of any trademark rights similar to the disputed domain name or that the Respondent is or has been commonly known by the disputed domain name.

By not submitting a Response, the Respondent has failed to invoke any circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in respect of the disputed domain name. Thus, there is no evidence in the case that refutes the Complainant’s submissions, and the Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include:

(i) circumstances indicating the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the domain name was registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided it is a pattern of such conduct; or

(iii) circumstances indicating that the domain name was registered primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the domain name has intentionally been used in an attempted to attract, for commercial gain, Internet users to a website or other on-line location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on a website or location.

The circumstances in the case before the Panel indicate that the Respondent must have been aware of the Complainant's trademarks when registering and using the disputed domain name <rosstores.com>. The website to which the disputed domain name <rosstores.com> resolves, promotes commercial links such as “Ross Store Application”, “Ross Stores”, “Ross Department Stores” and “Ross Clothing”. Since the Respondent’s website contains numerous references to the Complainant’s trademark and trade name, the Respondent is clearly seeking to profit from the confusion of Internet users searching for the Complainant. In addition, the Respondent’s website contains numerous commercial links to websites promoting third parties offering goods and services similar or identical to those sold by the Complainant. Such exploitation of the reputation of trademarks to obtain click-through commissions from the diversion of Internet users is an indication of bad faith according to previous case law. See e.g., L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc., WIPO Case No. D2005-0623and F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451.

In addtion to the above, the Panel notes that the Respondent has been a respondent in a large number of prior UDRP cases where decisions have been made in favor of the respective complainants. Thus, it is established that the Respondent has engaged in a pattern of registering third party trademarks in which it has no rights or legitimate interests, in order to confuse Internet users and to attract them to websites to which those domain names resolve and thereby profit commercially.

Thus, the submitted evidence in the case before the Panel indicates that the disputed domain name <rosstores.com> has intentionally been and is being used in an attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on a website.

There is no evidence in the case that refutes the Complainant’s submissions.

The Panel concludes that the Complainant has proved the requirements under paragraph 4(b)(iv) of the Policy and that the disputed domain name <rosstores.com> has been registered and is being used in bad faith.

7. Decision

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 <rosstores.com> be transferred to the Complainant.

Johan Sjöbeck
Sole Panelist
Date: November 17, 2014