Westmore · UDRP DecisionElfontheshelfalternative.com
The Panel ordered transfer of <elfontheshelfalternative.com>. It found the domain confusingly similar to Complainant’s THE ELF ON THE SHELF mark, found no rights or legitimate interests on the unrebutted record, and concluded that Respondent registered and used the domain in bad faith with an apparent intention to attract users interested in alternatives to Complainant’s products for commercial gain.
The timeline behind elfontheshelfalternative.com
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
The decision illustrates how a domain combining a distinctive mark with “alternative” may still be confusingly similar and may signal intended commercial diversion. The result also depended materially on the mark’s prior reputation, the absence of any plausible legitimate use in the record, the inactive website, and Respondent’s failure to provide an explanation.
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 CCA&B, LLC, v. Contact Privacy Inc. Customer 1243158618 / Chris Cunningham Case No. D2018-2302 1. The Parties Complainant is CCA&B, LLC, of Atlanta, Georgia, United States of America (“United States”), represented by The Sladkus Law Group, United States. Respondent is Contact Privacy Inc. Customer 1243158618 of Toronto, Ontario, Canada / Chris Cunningham of Los Angeles, California, United States of America (“United States”). 2. The Domain Name and Registrar The disputed domain name <elfontheshelfalternative.com> is registered with Google Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 10, 2018. On October 11, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 12, 2018, 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 Complainant on October 15, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 19, 2018. 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 Respondent of the Complaint, and the proceedings commenced on October 25, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 14, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 19, 2018. The Center appointed Lawrence K. Nodine as the sole panelist in this matter on November 30, 2018. 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 Since 2005, Complainant has published the book “The Elf on the Shelf: A Christmas Tradition” and sold the book as well as Christmas elf dolls and related products. Complainant’s book has appeared on the best‑selling book lists of magazines and periodicals such as USA Today, Publisher’s Weekly, and The Wall Street Journal’s since 2009. The kit containing the Complainant’s book and Christmas Scout Elf doll is sold in at least seven countries around the world and, with more than 12 million kits sold, is one of the best-selling products of the winter holiday season. Complainant owns trademark registrations for THE ELF ON THE SHELF in a number of countries, including in the United States, where Complainant registered the trademark on November 18, 2008 (Registration No. 3533459). Respondent registered the disputed domain name <elfontheshelfalternative.com> on August 30, 2018. Close to the filing of the Complaint, the disputed domain name resolved to a website with a message inviting visitors to blog. Currently, the website to which the disputed domain name resolves displays an error message. 5. Parties’ Contentions A. Complainant Complainant asserts that the disputed domain name is confusingly similar to THE ELF ON THE SHELF trademark, in which Complainant has rights by virtue of its trademark registrations, because it incorporates a substantial portion of the mark and the addition of the non-distinctive “alternative” does not negate the confusing similarity. According to Complainant, it did not authorize Respondent’s registration of the disputed domain name and Respondent is not making a bona fide use of the disputed domain name as the disputed domain name has never hosted an active website. Complainant posits that Respondent intends to compete directly with Complainant by launching a website selling either counterfeit or low-quality alternatives of Complainant’s products during the holiday season. Respondent’s actions, according to Complainant, do not give rise to rights or legitimate interests in the disputed domain name. Moreover, Complainant argues that Respondent acted in bad faith because Respondent knew or should have known of Complainant’s famous trademark and the goods sold under it at the time of Respondent’s registration of the nearly identical disputed domain name, Respondent concealed its identity by using a privacy service, and because there is no conceivable good faith use that Respondent can make of Complainant’s THE ELF OF THE SHELF mark or the confusingly similar disputed domain name. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Panel finds that the disputed domain name <elfontheselfalternative.com> is confusingly similar to THE ELF ON THE SHELF trademark, in which Complainant has established rights. The disputed domain name incorporates the dominant features of the mark and the inclusion of “alternative” does not negate the confusing similarity. Accordingly, the Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Complainant has established a prima facie case of Respondent’s lack of rights or legitimate interests in the disputed domain name. The disputed domain name currently resolves to an inactive website. Nothing in the record indicates that Respondent is using or seeking to use the disputed domain name in connection with the sale of bona fide goods or services. Indeed, the Panel is at a loss to identify a bona fide use Respondent could make of the disputed domain name. In view of the unrebutted record, the Panel finds that Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Complainant’s mark was well-known long before Respondent registered the disputed domain name. Considering Respondent’s nearly wholesale incorporation of Complainant’s distinctive mark into the disputed domain name, Respondent was obviously aware of Complainant’s trademark rights at the time it registered the disputed domain name. Respondent, thus, registered the disputed domain name in bad faith. THE ELF ON THE SHELF mark has no obvious non-trademark value, and there is no plausible legitimate use for the disputed domain name. Respondent has certainly not put forward any explanation supporting a legitimate use or negating the inference that it seeks to take advantage of the trademark value of Complainant’s mark. Where, as here, there is no plausible legitimate use that Respondent could make of the disputed domain name, the Panel exercises its discretion to draw adverse inferences from Respondent’s failure to explain its conduct in a responsive pleading. The signs here point to an apparent intention on Respondent’s part to use the disputed domain name to support the marketing of THE ELF ON THE SHELF alternatives. On balance, the record evidence supports the conclusion that Respondent intends to attract Internet users to its website by creating a likelihood of confusion with Complainant’s mark for its own commercial gain. The Panel, thus, finds that Complainant has satisfied 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 name <elfontheshelfalternative.com> be transferred to Complainant. Lawrence K. Nodine Sole Panelist Date: December 14, 2018
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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