Westmore · UDRP DecisionShopelfontheshelf.com
The Panel ordered transfer of <shopelfontheshelf.com>. It found the domain confusingly similar to the Complainant’s registered THE ELF ON THE SHELF mark, found no evidence rebutting the Complainant’s prima facie showing that the Respondent lacked rights or legitimate interests, and concluded that the Respondent’s passive holding constituted bad-faith registration and use in the circumstances.
The timeline behind shopelfontheshelf.com
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The decision illustrates that an inactive domain can satisfy the bad-faith element where the domain closely targets an established mark, the trademark rights substantially predate registration, the record supports respondent knowledge, and no credible benign explanation is offered. It also shows that replacing a small portion of a mark with the commercially suggestive term “shop” may leave the mark readily recognizable for confusing-similarity purposes.
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 and B, LLC v. above_privacy / Host Master, Transure Enterprise Ltd Case No. D2021-1530 1. The Parties The Complainant is CCA and B, LLC, United States of America (the “United States”), represented by The Sladkus Law Group, United States. The Respondent is above_privacy, United States / Host Master, Transure Enterprise Ltd, United States. 2. The Domain Name and Registrar The disputed domain name <shopelfontheshelf.com> (the “Disputed Domain Name”) is registered with Above.com, Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 17, 2021. On May 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 20, 2021, 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. Likewise, On May 20, 2021, the Center received a communication from the Registrar informing that the Respondent was willing to delete the Disputed Domain Name. On May 25, 2021, the Center contacted the Parties to inform them about the possibility of suspending the proceeding and implementing a settlement agreement. On May 27, 2021, the Center sent an email communication to the Complainant requesting a confirmation regarding the possible suspension of the proceeding. On May 28, 2021, the Complainant formally requested the suspension of the proceeding. The Center sent to the Parties the Notification of Suspension of the proceeding on June 1, 2021, stating that the case would be suspended until June 28, 2021. On June 10, 2021, the Complainant formally requested the reinstitution of the proceeding considering its unsuccessful attempts to contact the Respondent. The proceeding was reinstituted on June 15, 2021. The Center sent an email communication to the Complainant on June 16, 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 amendment to the Complaint on June 16, 2021. 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 June 17, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 7, 2021. The Center sent to the Parties the Commencement of Panel Appointment on July 8, 2021. The Center appointed Colin T. O'Brien as the sole panelist in this matter on August 3, 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 has published a children’s book entitled “The Elf on the Shelf: A Christmas Tradition.” Since 2005 the Complainant has continuously published, marketed, and sold this book alongside a line of Christmas elf dolls, and related products aimed at families with children. The Complainant owns trademark registrations for THE ELF ON THE SHELF in a number of countries, including in the United States, where the Complainant registered the trademark on November 18, 2008 (Registration No. 3533459). The Complainant has authorized distributors based in several countries, offering products for sale worldwide online, and including sales in retail stores in North America, the United Kingdom, Ireland, and Australia. The Complainant’s products, and its officially licensed products are sold in more than 10,000 stores throughout North America and online throughout the world. The Disputed Domain Name was registered on January 2, 2020. 5. Parties’ Contentions A. Complainant The Respondent’s Disputed Domain Name <shopelfontheshelf.com> incorporates the substantial majority of the Complainant’s registered THE ELF ON THE SHELF trademark, everything but the first “The”. Although the Disputed Domain Name includes the additional terms “shop” and “.com”, the addition of these non-distinctive terms does not negate the confusing similarity of the Disputed Domain Name to the Complainant’s registered marks. There is no question that the Complainant’s marks and the Disputed Domain Name, when directly compared, are confusingly similar. By using the word “shop” at the start of the Disputed Domain Name, the Respondent gives the false impression that the Complainant’s authentic products can be legally purchased from the Disputed Domain Name. The Complainant owns the registered THE ELF ON THE SHELF trademark and it did not authorize the Respondent to register the Disputed Domain Name or otherwise use its registered mark in any manner whatsoever. The Complainant has no affiliation, association, or connection, past or present, with the Respondent. The Respondent did not make any preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services prior to receiving notice of this dispute. The Disputed Domain Name was registered January 2, 2020 but has never hosted an active website. The Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Respondent likely intends to commercially benefit from the Disputed Domain Name by diverting consumers from the Complainant. The Disputed Domain Name conveys a false association or connection with the Complainant. The Respondent is likely warehousing the Disputed Domain Name waiting for the holiday season to approach. The Respondent will likely then launch a website selling either counterfeit imitations of the Complainant’s THE ELF ON THE SHELF products or low-quality alternatives intended to compete with the Complainant’s products. By using “shop” at the start of the Disputed Domain Name, the Respondent’s intent to financially benefit from its use of the Complainant’s registered trademarks is clear. Each holiday season the Complainant faces similar scenarios, as infringers attempt to capitalize on the goodwill associated with the Complainant’s registered marks during the Christmas season. The Respondent has also not been commonly known by the Disputed Domain Name. The Complainant has never encountered another person or company validly claiming to have rights in the mark THE ELF ON THE SHELF. There is no conceivable good faith use of the Complainant’s marks or the Disputed Domain Name by the Respondent. The Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The Respondent knew or should have known that the Disputed Domain Name was either identical or confusingly similar to the Complainant’s internationally known and registered trademarks due to the notoriety of the Complainant’s goods sold under the marks. The Complainant’s mark was well known long before the Respondent registered the Disputed Domain Name. Considering the Respondent’s nearly wholesale incorporation of the Complainant’s distinctive mark into the Disputed Domain Name, the Respondent was obviously aware of the Complainant’s trademark rights at the time it registered the Disputed Domain Name. The Respondent, thus, registered the Disputed Domain Name in bad faith B. Respondent The Registrar informed the Center that the Respondent offered to delete the Disputed Domain Name. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant has demonstrated it owns registered trademark rights in the well-known THE ELF ON THE SHELF mark. The Disputed Domain Name incorporates substantially the entirety of THE ELF ON THE SHELF mark merely substituting the first “THE” for the word “shop”. This change does not prevent a finding of confusing similarity between the mark and the Disputed Domain Name. See sections 1.7, 1.8, and 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions Third Edition (“ WIPO Overview 3.0 ”). Accordingly, the Disputed Domain Name is confusingly similar to a mark in which the Complainant has rights. B. Rights or Legitimate Interests The Complainant has presented a prima facie case that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Dame and has not at any time been commonly known by the Disputed Domain Name. After a complainant has made a prima facie case, the burden of production shifts to the respondent to present evidence demonstrating rights or legitimate interests in the domain name. See, e.g. , Croatia Airlines d.d. v. Modern Empire Internet Ltd ., WIPO Case No. D2003-0455 . Here, the Respondent has provided no evidence of any rights or legitimate interests in the Disputed Domain Name; rather, the evidence suggests that it was registered to make an undue profit based on the Complainant’s rights. See, e.g ., Bottega Veneta SA v. ZhaoJiafei , WIPO Case No. D2013-1556 . Moreover, the Registrar indicated that the Respondent offered to delete the Disputed Domain Name. In the absence of any evidence rebutting the Complainant’s prima facie case indicating the Respondent’s lack of rights or legitimate interests in respect of the Disputed Domain Name, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Disputed Domain Name was registered many years after the Complainant first registered and used its THE ELF ON THE SHELF trademark. The evidence on the record provided by the Complainant with respect to the extent of use of its THE ELF ON THE SHELF trademark, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy the Panel that, at the time the Disputed Domain Name was registered, the Respondent undoubtedly knew of the Complainant’s THE ELF ON THE SHELF mark, and knew that it had no rights or legitimate interests in the Disputed Domain Name. There is prima facie no benign reason for the Respondent to have registered the Disputed Domain Name with the word ”shop” next to ELF ON THE SHELF trademark without the authorization of the Complainant. While the Disputed Domain Name does not resolve to an active website, UDRP panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. See section 3.3 of the WIPO Overview 3.0 . In the circumstances of this case, the Panel finds that the Respondent’s non-use of the Dispute Domain Name does not prevent a finding of bad faith. Accordingly, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith, and that the 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, <shopelfontheshelf.com> be transferred to the Complainant. Colin T. O'Brien Sole Panelist Date: August 6, 2021
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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