Westmore · UDRP DecisionTkmaxx-australia.com
The Panel ordered transfer of <tkmaxx-australia.com>. It found the domain confusingly similar to the Complainant's T.K. MAXX trademark because it incorporated “tkmaxx” with the geographic term “Australia.” The Respondent lacked rights or legitimate interests because there was no evidence of authorization, affiliation, or that the Respondent was commonly known by the mark, while the associated pay-per-click use capitalized on the mark and created a misleading impression of affiliation. The Panel also found registration and use in bad faith under paragraph 4(b)(iv), based on the well-known character of the mark and the circumstances indicating an intention to create a false impression of affiliation for commercial gain.
The timeline behind tkmaxx-australia.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 tkmaxx-australia.com — from public RDAP and the Internet Archive — as part of UDRP Intelligence:
The case illustrates a common UDRP pattern in which a trademark is combined with a geographically relevant term and used for a pay-per-click site. The geographic addition strengthened rather than dispelled the apparent connection because the Complainant operated stores in Australia. The decision also shows that default was treated as a supporting circumstance, not as an automatic basis for finding 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 NBC Fourth Realty Corp. v. Jakub Radil Case No. D2019-1505 1. The Parties The Complainant is NBC Fourth Realty Corp., United States of America, represented by Simmons & Simmons, United Kingdom. The Respondent is Jakub Radil, Czech Republic. 2. The Domain Name and Registrar The disputed domain name <tkmaxx-australia.com> (“Domain Name”) is registered with Gransy, s.r.o. d/b/a subreg.cz (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 27, 2019. On June 28, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 1, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name. The Center sent an email communication to the Complainant on July 2, 2019 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 amendment to the Complaint on July 3, 2019. The Center verified that the Complaint together with the amendment to the 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 July 5, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 25, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 26, 2019. The Center appointed Willem J. H. Leppink as the sole panelist in this matter on August 5, 2019. 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 following facts are undisputed. The Complainant is part of the TJX Companies, Inc. and is a world famous retailer of clothing and home goods. The Complainant has over 500 stores in Europe and 51 stores in Australia. Its website can be found at “www.tkmaxx.com”. The domain name for this was registered in 1996. The Complainant owns various trademark registrations consisting of or containing “T.K. Maxx”, including the European Union Trade Mark T.K. MAXX with registration number 007088991, applied for on July 10, 2008, registered on May 30, 2009, and covering goods and services in classes 18, 24 and 35. This trademark registration will be referred to as the “Trademark”. The Domain Name was registered on September 3, 2018. The Domain Name resolved to a website (the “Website”) that contains links to pay-per-click sites that are related to the Complainant and/or its business. 5. Parties’ Contentions A. Complainant The following is a summary of the Complainant’s contentions. The Domain Name is confusingly similar to the Trademark. The Domain Name includes the Trademark, to which the geographical designation “Australia” is added. The Respondent has no rights to or legitimate interests in the Domain Name. The Respondent is not a licensee of the Complainant and the Respondent is not commonly known by the Domain Name. The Domain Name was registered and is being used in bad faith. The Respondent has intentionally attempted to attract for commercial gain, Internet users to the Website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Website. The Website displays links to sites which are affiliated to the Complainant or its business, those links are likely to confuse people into believing that the Domain Name is connected with the Complainant. It is highly likely that those links generate pay-per-click revenue. Moreover, the Respondent has consistently used the Trademark throughout its website and has utilized the same color scheme as the websites of the Complainant and has used also device marks that are being used by the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements: (i) the Domain Name is 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 Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant must demonstrate that it has rights in a trademark or service mark and, if so, the Domain Name must be shown to be identical or confusingly similar to that mark. The Complainant has sufficiently shown that it has rights in the Trademark. As set out in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7 , the first element functions primarily as a standing requirement. The threshold test for confusing similarity between the Domain Name and the Trademark involves a relatively straightforward comparison. In light of the foregoing, the Panel finds that the Domain Name is confusingly similar to the Trademark. The Domain Name consists of the elements “tkmaxx” and “Australia”. The element “tkmaxx” is identical to the Trademark. The element “Australia” is merely a geographic term that refers to the country Australia, where the Complainant has many stores. In addition, with regard to the suffix “.com” (which indicates that the Domain Name is registered in the “.com” generic Top-Level Domain (“gTLD”)), as it was established in many previous UDRP decisions (see A.P. Møller v. Web Society , WIPO Case No. D2000-0135 ; Rollerblade, Inc. v. Chris McCrady , WIPO Case No. D2000-0429 ; Arab Bank for Investment And Foreign Trade (ARBIFT) v. Mr. Kenn Wagenheim / 07@usa.net , WIPO Case No. D2000-1400 ; Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447 ; and Crédit Industriel et Commercial S.A v. Name Privacy , WIPO Case No. D2005-0457 ), it does not generally affect the analysis under the first element of the Policy for the purpose of determining whether a domain name is identical or confusingly similar; indeed, the suffix is a necessary component of a domain name and does not give any distinctiveness. For all the foregoing reasons, the Panel is satisfied that the first element of the Policy is met. B. Rights or Legitimate Interests The Respondent did not reply to the Complainant’s contentions. For that reason, the Panel has carefully considered the factual allegations that have been made by the Complainant and are supported by the submitted evidence. The Respondent does not seem to be affiliated with the Complainant in any way. There is no evidence that TK Maxx is the Respondent’s name or that the Respondent is commonly known as “TK Maxx”. There is also no evidence that the Respondent is, or has ever been, a licensee of the Complainant or that the Respondent has ever asked or has ever been permitted in any way by the Complainant to register or use the Complainant’s marks, or to apply for or use any domain name incorporating the Trademark. Furthermore, the use of the Domain Name cannot be considered a bona fide offering of goods or services. As brought forward by the Complainant, the pay-per-click links compete with and capitalize on the reputation and goodwill of the Trademark. See in this regard section 2.9 of WIPO Overview 3.0 . Moreover, the Website, gives the Internet public the impression that it is affiliated to the website of the Complainant. Hence, the Panel finds that the Website is clearly misleading, which contributes to the lack of rights or legitimate interests. Finally, given the circumstances of this case, the Panel finds that the Respondent’s lack of rights or legitimate interests in the Domain Name may also be inferred by the fact that no Response was filed by the Respondent. According to earlier UDRP panels, “non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights” (see GA Modefine S.A. and Giorgio Armani S.p.A. v. Yoon-Min Yang , WIPO Case No. D2005-0090 ; and Pomellato S.p.A. v. Richard Tonetti , WIPO Case No. D2000-0493 ). Therefore, based on the evidence, the Panel is satisfied that the second element of the Policy is met. C. Registered and Used in Bad Faith In light of the evidence filed by the Complainant, the Panel finds that the Trademark and the Complainant’s activities are well-known throughout the world. Based on the facts of the matter, several unrebutted circumstances indicate that the intention behind the registration and use of the Domain Name seems to be to create the false impression that the Domain Name is affiliated with the Complainant (paragraph 4(b)(iv) of the Policy). Finally, although the lack of a response by the Respondent as such cannot by itself lead to the conclusion that there is use in bad faith, the cumulative circumstances as outlined in the Decision are sufficient for the Panel to find that the use of the Domain Name by the Respondent is in bad faith. In light of the above circumstances, the Panel is satisfied that the third element of the Policy is met and that the Domain Name was 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 Domain Name <tkmaxx-australia.com> be transferred to the Complainant. Willem J. H. Leppink Sole Panelist Date: August 19, 2019
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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