The Complainant is ShopStyle Inc., United States (“United States”), represented by Greenberg Traurig, LLP, United States.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States / Lisa Weissmuller, Germany.
The disputed domain name <shopstyleaustralia.com> (“Disputed Domain Name”) is registered with NameSilo, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 16, 2020. On November 17, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 18, 2020, 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 November 18, 2020, 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 November 19, 2020.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 10, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 11, 2020.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on December 22, 2020. 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 is a digital shopping platform owned by Ebates, Inc. It was launched in 2007 as a Web search engine for fashion, which was transformed into a fashion marketplace and inspiration engine.
ShopStyle lists products from over 14,000 brands across apparel, accessories, beauty, home furnishings, and children’s items, including athletic shoes and apparel, and specifically, Adidas-branded athletic shoes and apparel.
The Complainant owns several trademark registrations for the term SHOPSTYLE, including, among others:
- United States federal registration no. 3,761,889, registered on March 16, 2010;
- European Union registration no. 6824395, registered on January 21, 2009; and,
- Australian trademark registration no. 1662710, registered on December 5, 2014.
The Respondent registered the Disputed Domain Name <shopstyleaustralia.com> in October 27, 2019. The Disputed Domain Name is currently inactive. However, the Complainant submitted evidence that the Disputed Domain Name resolved to a website which offered similar shopping services and products that were directly in competition with those offered by the Complainant on its SHOPSTYLE websites, including Adidas-branded products.
The Complainant´s contentions can be summarized as follows:
Identical or confusingly similar
The Complainant contends that the Disputed Domain Name is virtually identical to the Complainant’s SHOPSTYLE trademark in that it merely adds the geographical term “Australia” to Complainant’s trademark, along with the generic Top-Level Domain (gTLD) “.com”. The addition of “Australia” does not avoid confusing similarity, but rather adds to the likelihood of confusion.
Rights or legitimate interest
The Complainant states that the Respondent registered the Disputed Domain Name without its prior authorization or consent.
The Complainant further states that the Respondent is not commonly known by the Disputed Domain Name. In addition, the Respondent has not used or prepared to use the Disputed Domain in connection with a bona fide offering of goods or services.
The Complainant alleges that the Respondent registered the Disputed Domain Name on October 27, 2019, which is long after the Complainant established its rights in its SHOPSTYLE trademarks through its prior use and numerous trademark registrations, including in the United States, Australia, and many other countries.
Finally, the Complainant claims that the Respondent’s website located at the Disputed Domain Name offers similar shopping services and products that are directly competitive with those offered by Complainant on its SHOPSTYLE websites.
Registration and use in bad faith
The Complainant states that the Respondent registered and uses the Disputed Domain Name in bad faith in order to intentionally cause consumer confusion and disruption of the Complainant’s business for the Respondent’s commercial gain.
In addition, the Complainant claims that the Respondent was aware of the SHOPSTYLE trademark when registering the Disputed Domain Name.
Finally, the Complainant alleges that the use of privacy service in the registration of the Disputed Domain Name demonstrates the Respondent’s bad-faith use and registration of the Disputed Domain Name.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy lists the three elements which the Complainants must satisfy with respect to the Disputed Domain Name in this case:
“(i) the domain name is identical or confusingly similar to a trademark or service mark in the which the complainant has rights; and
(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.”
Based on the evidence submitted, this Panel finds that the Disputed Domain <shopstyleaustralia.com> is confusingly similar to the Complainants’ registered SHOPSTYLE trademark. The Disputed Domain Name wholly incorporates the Complainants’ SHOPSTYLE trademark.
Furthermore, the Disputed Domain Name contains the Complainant’s SHOPSTYLE trademark in its entirety; the addition of the term “Australia” does not change this finding of confusing similarity.
Therefore, this Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 at issue.
There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the trademark in the Disputed Domain Name.
The Complainant has rights in the trademark, which precede the Respondent’s registration of the Disputed Domain Name. In addition, the Respondent is not known by the Disputed Domain Name.
The Respondent has failed to show that it has acquired any rights with respect to the Disputed Domain Name. Moreover, the Respondent had the opportunity to demonstrate its rights or legitimate interests, but it did not reply to the Complainant’s contentions therefore failing to rebut the Complainant’s prima facie case.1
As such, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The Respondent was aware of the Complainant’s prior rights and business, since the Disputed Domain Name was created on October 27, 2019, while the Complainant had the registration of its trademarks since 2009. Thus, it is very likely that the Respondent was aware of the Complainant’s trademark and business when it registered / acquired the Disputed Domain Name. In addition, the Disputed Domain Name resolved to a website shopping services and offered products that were in direct competition with those offered by the Complainant on its websites, for example, Adidas products.
The Respondent has not denied these assertions because of its default. The Panel is of the view that the Respondent knew of the Complainant’s trademark and prior rights.
Paragraph 4(b)(iv) of the Policy states: “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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”.
In the case at hand, in view of the Respondent’s registration of a domain name identical to the Complainant’s trademark plus a geographical term to offer similar services as the Complainant’s business, the absence of any documented rights or legitimate interests of the Respondent in the Disputed Domain Name, and its failure to respond to the Complaint, constitutes bad faith.
In addition, the Respondent has taken active steps to conceal its true identity through a privacy service. This particularly conduct evidences the Respondent’s bad faith.
Due to this conduct, it is obvious that the Respondent intentionally created a likelihood of confusion with the Complainant’s trademark and websites in order to attract Internets users for its own commercial gain, as required by paragraph 4(b)(iv) of the Policy.
Therefore, taking all circumstances into account and for all the above reasons, the Panel concludes that there is bad faith in the registration and use of the Disputed Domain Name.
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 <shopstyleaustralia.com> be transferred to the Complainant.
Pablo A. Palazzi
Sole Panelist
Date: January 5, 2020
1 See WIPO Overview 3.0 at section 2.1 “While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”