Westmore · UDRP DecisionCartersoshkosh.com
The Panel ordered transfer of <cartersoshkosh.com>. It found the domain confusingly similar because it combined the Complainants’ registered OSHKOSH and CARTER’S marks, found no rights or legitimate interests after the Respondent failed to rebut the Complainants’ prima facie case, and found bad-faith registration and use based on a USD 10,000 sale offer and use of the domain for a PPC parking page with sponsored links to competitors.
The timeline behind cartersoshkosh.com
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
Westmore reconstructs the full history behind cartersoshkosh.com — from public RDAP and the Internet Archive — as part of UDRP Intelligence:
The case illustrates a straightforward UDRP application where a domain combines two marks belonging to the same complainant group and is then monetized through a sale offer and competitor-linked PPC advertising. The combination of the marks supported confusing similarity, while the commercial use supplied direct evidence supporting bad faith.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION OshKosh B’Gosh, Inc. and the William Carter Company v. Hulmiho Ukolen / Domain Admin, Whois protection, this company does not own this domain name s.r.o. Case No. D2016-1099 1. The Parties The Complainant is OshKosh B’Gosh, Inc. of Atlanta, Georgia, United States of America (“United States”) and the William Carter Company of Atlanta, Georgia, United States, represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland. The Respondent is Hulmiho Ukolen of Helsinki, Finland / Domain Admin, Whois protection, this company does not own this domain name s.r.o. of Prague, Czech Republic. 2. The Domain Name and Registrar The disputed domain name <cartersoshkosh.com> is registered with Hebei Guoji Maoyi (Shanghai) LTD aka HEBEI INTERNATIONAL TRADING (SHANGHAI) CO., LTD dba HebeiDomains.com (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 1, 2016. On June 1, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 6, 2016, 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 June 6, 2016 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 June 6, 2016. 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 proceeding commenced on June 16, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 6, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 7, 2016. The Center appointed Tuukka Airaksinen as the sole panelist in this matter on July 14, 2016. 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, a children’s apparel and goods company, is owner of various trademark registrations for the trademarks OSHKOSH and CARTER’S. The trademark OSHKOSH is registered, inter alia , as a United States federal trademark No. 0511479 on June 10, 1948. The trademark CARTER’S is also registered in the United Stated federal register under No. 65969 as of November 5, 1907. The disputed domain name was registered on June 25, 2015. 5. Parties’ Contentions A. Complainant The language of the proceeding should be English, even if the registration agreement of the disputed domain name is in Finnish. The Complainant asserts that no prejudice would be caused to the Respondent in accepting the Complaint in English as the majority of decisions involving the Respondent included English language domain names and were conducted in English. The disputed domain name consists of the Complainant’s trademarks OSHKOSH and CARTER’S. Combining the Complainant’s two trademarks in insufficient to exclude likelihood of confusion. The Respondent has no rights or legitimate interest to the disputed domain name. The Respondent has not been authorized by the Complainant to use its trademarks or register the disputed domain name. The disputed domain name is being offered for sale for USD 10,000 and resolved to a website offering links to the Complainant’s competitors. Hence the disputed domain name has been registered and is being used in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In order to obtain the transfer of a domain name, a complainant must prove the three elements of paragraph 4(a) of the Policy, regardless of whether the respondent files a response to the complaint. The first element is that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. The second element a complainant must prove is that the respondent has no rights or legitimate interests in respect of the domain name. The third element a complainant must establish is that the domain name has been registered and is being used in bad faith. A. Language of the Proceeding The language of the proceeding is the language of the registration agreement, unless both parties agree otherwise, or the panel determines otherwise under paragraph 11 of the Rules. In this case, the language of the Registration Agreement is Finnish. The website to which the disputed domain name resolves is in English. The Respondent has not objected for English to be the language of the proceeding. Accordingly, in view of the circumstances of this case, the Panel determines that the language of the proceeding shall be English. B. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy requires that the Complainant establishes that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Consequently, the Complainant must prove that it has rights to a trademark, and that the disputed domain name is identical or confusingly similar to this trademark. The Complainant has shown that it owns rights to the registered trademarks OSHKOSH and CARTER’S as indicated above. The disputed domain name consists solely of the Complainant’s two trademarks. The Panel finds that such a combination is insufficient to exclude confusing similarity to the Complainant’s trademarks. C. Rights or Legitimate Interests Paragraph 4(a)(ii) of the Policy requires that the Complainant establish that the Respondent has no rights or legitimate interests to the disputed domain name. The consensus view among UDRP panels is that once a complainant has made a prima facie showing indicating the absence of the respondent’s rights or legitimate interests in a disputed domain name the burden of production shifts to the respondent to come forward with evidence of such rights or legitimate interests. If the respondent fails to do so, the complainant is deemed to have satisfied the second element of the Policy. See, e.g ., Document Technologies, Inc. v. International Electronic Communications Inc ., WIPO Case No. D2000-0270 and paragraph 2.1 of the WIPO Overview 2.0 . The Complainant has credibly submitted that the Respondent is not a licensee of the Complainant, nor has the Respondent been otherwise allowed by the Complainant to use the Complainant’s trademark in a domain name or otherwise. The Respondent has not rebutted these arguments. Accordingly, the Panel finds that the Complainant has made a prima facie case that has not been rebutted by the Respondent. In light of the Panel’s findings below, the Panel finds there are no other circumstances which provide the Respondent with any rights or legitimate interests in the disputed domain name. Therefore, the Panel finds that the second element of the Policy is fulfilled. D. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy requires that the Complainant establishes that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy provides that 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 [the respondent has] registered or has 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 [the respondent’s] documented out-of-pocket costs directly related to the domain name; or (ii) [the respondent has] 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 [the respondent has] engaged in a pattern of such conduct; or (iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business or competitor; or (iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.” The Respondent has offered the disputed domain name for sale for the sum of USD 10,000. Such a sum is valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name and as such evidence that the disputed domain name was registered and is being used in bad faith. Furthermore, the disputed domain name resolves to a pay-per-click (“PPC”) parking page displaying sponsored links to the websites of the competitors of the Complainant. When an Internet user clicks such links, the Respondent, or someone else, will be paid for it. Based on the above, the Panel finds that the disputed domain name was registered and is being used in bad faith. Therefore, the Panel finds that the third element of the Policy has been fulfilled. 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, <cartersoshkosh.com>, be transferred to the Complainant. Tuukka Airaksinen Sole Panelist Date: July 28, 2016
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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