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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Primitive Company v. Private by Design, LLC / Hoang Son

Case No. D2021-0612

1. The Parties

The Complainant is Primitive Company, United States of America (“United States”), represented by Brutzkus Gubner, United States.

The Respondent is Private by Design, LLC, United States / Hoang Son, Viet Nam.

2. The Domain Names and Registrar

The disputed domain names <primitive-skate.com> and <primitiveskates.co> are registered with Porkbun LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2021. On March 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 1, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 2, 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 amended Complaint on March 3, 2021.

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 March 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 28, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 29, 2021.

The Center appointed David Taylor as the sole panelist in this matter on April 7, 2021. 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 is a company based in California, United States, engaged in the sale of skateboard products and accessories, and clothing products. For use in connection with the Complainant’s business, the Complainant is the owner of the following trademarks:

- United States Trademark Registration No. 4837448, PRIMITIVE SKATEBOARDING, registered on October 20, 2015; and
- United States Trademark Registration No. 4486924, PRIMITIVE APPAREL, registered on February 25, 2014.

The Complainant is also the owner of the domain name <primitiveskate.com>, from which it operates a consumer-facing website and online store.

The disputed domain name <primitive-skate.com> was registered on January 22, 2021. The disputed domain name <primitiveskates.co> was registered on January 27, 2021.

On February 12, 2021, the disputed domain names resolved to websites (the “Respondent’s websites”) that reproduced the layout, color scheme, logos, and product images, as displayed on the Complainant’s website at “www.primitiveskate.com”. The Respondent’s websites purported to offer the Complainant’s goods for sale. The Respondent’s websites both contained the notice “© 2021 PRIMITIVE SKATEBOARDING” in the respective website footers. The Respondent’s websites were taken down pursuant to a request submitted by the Complainant to the Registrar. At the time of this decision, the disputed domain names resolve to landing pages that state “Sorry, this shop is currently unavailable.”

5. Parties’ Contentions

A. Complainant

The Complainant asserts rights in the PRIMITIVE SKATE and PRIMITIVE APPAREL trademarks. The Complainant submits that the disputed domain names are confusingly similar to its trademarks.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant asserts that there is no relationship between the Complainant and the Respondent, and that the Complainant has never licensed or authorized the Respondent to make use of the Complainant’s trademarks. The Complainant submits that the Respondent is not commonly known by the disputed domain names, or by the Complainant’s trademarks. The Complainant further submits that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names. Rather, the Complainant argues that the Respondent has attempted to mislead consumers into believing that the Respondent’s websites are affiliated with, sponsored by, or endorsed by the Complainant.

The Complainant submits that the disputed domain names were registered and are being used in bad faith. The Complainant notes that it has been using its trademarks in connection with its skateboarding and clothing products for several years. The Complainant submits that the Respondent was undoubtedly aware of the Complainant’s trademarks when registering the disputed domain names, and did so in bad faith in an attempt to trade upon the goodwill associated with those trademarks. The Complainant asserts that the Respondent has used the disputed domain names to resolve to websites containing counterfeit copies of the Complainant’s website content and trademarks. The Complainant submits that by using the disputed domain names in such a manner, the Respondent has attempted to attract, for commercial gain, Internet users to the Respondent’s websites, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites and the products and services offered for sale therein, in bad faith. The Complainant submits that the Respondent’s actions were plainly intended to trade upon the recognition of the Complainant’s trademarks, and were designed to deceive and defraud the public.

The Complainant requests transfer of the disputed domain names.

B. Respondent

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

6. Discussion and Findings

In order to prevail, the Complainant must demonstrate, on the balance of probabilities, that it has satisfied the requirements of paragraph 4(a) of the Policy:

(i) the disputed domain names are 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 in respect of the disputed domain names; and
(iii) the disputed domain names were registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established rights in the trademarks PRIMITIVE SKATEBOARDING and PRIMITIVE APPAREL, the registration details of which are provided in the factual background section above.

The disputed domain name <primitive-skate.com> comprises a variation of the Complainant’s PRIMITIVE SKATEBOARDING trademark, whereby the space following the word “primitive” has been substituted for a hyphen, and the word “skateboarding” has been abbreviated in the disputed domain name to the word “skate”. Similarly, the disputed domain name <primitiveskates.co> also comprises the word “primitive”, omitting the space altogether, and includes the word “skates”. The Panel finds that such alterations do not prevent a finding of confusing similarity with the Complainant’s PRIMITIVE SKATEBOARDING trademark, the dominant elements of which remain recognizable in the disputed domain names.

The Panel finds the disputed domain names to be confusingly similar to the Complainant’s PRIMITVE SKATEBOARDING trademark. The Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Prior to the filing of the Complaint, the disputed domain names resolved to websites that closely resembled the contents of the Complainant’s website, and purported to offer the Complainant’s skateboarding products, accessories, and clothing products for sale. Prior UDRP panels have recognized that resellers using a domain name containing a complainant’s trademark to undertake sales related to the complainant’s goods or services may be making a bona fide offering of goods or services and thus have a legitimate interest in such a domain name; see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.8; see also Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.

Even if Panel takes the view that the offering of goods via the Respondent’s websites was genuine, the Respondent’s websites did not contain any notice or disclaimer that accurately and prominently disclosed the Respondent’s lack of affiliation with the Complainant. In light of the high degree of visual similarity between the Respondent’s websites and the Complainant’s official website, the Respondent’s websites gave the misleading impression of being websites operated by the Complainant. The Panel further notes that the Respondent’s websites appear to have included product images that had been misappropriated from the Complainant’s website. The fact that the Respondent saw it fit to make use of a privacy service when registering the disputed domain name supports the inference that the Respondent wished to avoid being identified or contacted, from which it may be inferred that the Respondent’s websites were not in fact being used for the genuine resale of the Complainant’s goods. The Respondent’s failure to file a Response in this proceeding, further supports such a finding. The Panel finds that the Respondent has not made use of the disputed domain names in connection with a bona fide offering of goods or services as contemplated by paragraph 4(c)(i) of the Policy.

There is no evidence that would support a finding that the Respondent is commonly known by the disputed domain names within the meaning of paragraph 4(c)(ii) of the Policy.

The Respondent’s use of the disputed domain names was clearly intended to be commercial in nature. Paragraph 4(c)(iii) of the Policy cannot reasonably be said to apply.

The Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent has not come forward with any evidence to rebut the Complainant’s case against it. The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The registration of the Complainant’s trademarks predates the registration of the disputed domain names by several years. It is clear from the contents of the Respondent’s websites that the Respondent was well aware of the Complainant and its trademark rights when registering the disputed domain names.

The Panel finds that the Respondent registered the disputed domain names, having no authorization from the Complainant to make use of its trademarks or any variation thereof in a domain name or otherwise, in order to create a misleading impression of association between the disputed domain names and the Complainant’s trademarks. The Panel further finds that the disputed domain names are composed in such a manner that they also create confusion with the Complainant’s official domain name <primitiveskate.com>. The Panel finds that the disputed domain names were registered in bad faith.

In light of the Respondent’s use of the disputed domain names, as described above, the Panel accepts the Complainant’s submission that the Respondent has intentionally attempted to attract, for commercial gain, Internet users its websites, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites, and the goods offered for sale therein, in bad faith pursuant to paragraph 4(b)(iv) of the Policy. The fact that the disputed domain names currently resolve to landing pages does not prevent a finding of bad faith.

For reasons set out above, the Panel finds that the disputed domain names were registered and have been used in bad faith. The Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

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 names <primitive-skate.com> and <primitiveskates.co> be transferred to the Complainant.

David Taylor
Sole Panelist
Date: April 21, 2021

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