Administrative panel decision black Milk Clothing Pty Ltd V. Whoisguard Protected / Jacky Yip




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ARBITRATION
AND
MEDIATION CENTER




ADMINISTRATIVE PANEL DECISION

Black Milk Clothing Pty Ltd v. Whoisguard Protected / Jacky Yip

Case No. D2014-1333



1. The Parties

The Complainant is Black Milk Clothing Pty Ltd of Newstead, Australia, represented by Holding Redlich, Australia.


The Respondents are Whoisguard Protected of Panama, Panama and Jacky Yip of Hangzhou, China.


2. The Domain Names and Registrar

The disputed domain names , , , , , , , , , , , and are registered with eNom (the “Registrar”).




3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 6, 2014. On August 6, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 7, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for several of the disputed domain names which differed from the named Respondent and contact information in the Complaint. For three of the disputed domain names the Registrar confirmed that it was unable to remove the privacy shield. The Center sent an email communication to the Complainant on August 14, 2014 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 August 21, 2014. This amended Complaint included a new disputed domain name, , also registered with the Registrar. The Center transmitted by email to the Registrar a request for registrar verification in connection with this disputed domain name on August 25, 2014. On August 25, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for this 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 August 14, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant submitted a second amended Complaint on August 28, 2014.

The Center verified that the Complaint together with the first and second amended Complaints 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 29, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 18, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 19, 2014.
The Center appointed Edoardo Fano as the sole panelist in this matter on September 24, 2014. 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.
The Panel has not received any requests from the Complainant or the Respondents regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties.
Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to Respondents”. Therefore, the Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of a response from the Respondents.
The language of the proceeding is English, being the language of the Registration Agreement as per paragraph 11(a) of the Rules.


4. Factual Background

The Complainant is an Australian company operating as an online retailer of fashion garments under the trademark BLACKMILK.


The Complainant owns several trademark registrations for BLACKMILK, including:
- Australian Trademark Registration No. 1177605 for BLACKMILK, registered on May 23, 2007;
- Australian Trademark Registration No. 1499607 for BLACKMILK and design, registered on July 6, 2012;
- International Trademark Registration No. 1179450 for BLACKMILK, registered on August 23, 2013.
The Complainant provided evidence in support of the above.
The disputed domain names , , , , , , , , , , and were registered on March 25, 2014 and the disputed domain name was registered on August 12, 2014. At the time of filing of the Complaint, the disputed domain names , , , , , , and were not active, while the dispute domain names , and resolved to active websites all looking like genuine websites of the Complainant or of an authorized reseller of the Complainant, offering for sale fashion garments which bear identical print and artwork of the Complainant’s products.



5. Parties’ Contentions

A. Complainant

The Complainant states that the disputed domain names , , , , , , , , , , , and are confusingly similar to its trademark BLACKMILK, being a combination of the terms “cheap”, “clothing cheap”, “clothing factory”, “clothing outlet”, “clothing sale”, “clothing wholesale”, “factory”, “leggings”, “leggings sale”, “outlet”, “sale” and “wholesale” with the Complainant’s trademark BLACKMILK.


Moreover, the Complainant affirms that the Respondents have no rights or legitimate interests in respect of the disputed domain names since they have not been authorised by the Complainant to reserve the disputed domain names or to register and/or use its trademark within the disputed domain names.
The Complainant submits that the Respondents have registered and are using the disputed domain names in bad faith.
The use of the disputed domain names that resolve to the three active websites is aimed at obtaining a commercial gain by misleadingly diverting consumers away from the Complainant’s business, not only by reproducing the Complainant’s artwork on the products offered for sale, but also using the same photographs displayed on the Complainant’s website as well as extracting significant content from the Complainant’s website.
Regarding the disputed domain names pointing to inactive websites, the Complainant’s concern is that the Respondents will make of them the same bad faith use as they currently make of the active disputed domain names.

B. Respondent

The Respondents have made no reply to the Complainant’s contentions and are in default. In reference to paragraphs 5(e) and 14 of the Rules, no exceptional circumstances explaining the default have been put forward.


A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, reasonable facts asserted by a complainant may be taken as true, and appropriate inferences by the panel, in accordance with paragraph 14(b) of the Rules, may be drawn (see, e.g., Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441; Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003 0109; SSL INTERNATIONAL PLC v. MARK FREEMAN, WIPO Case No. D2000-1080; ALTAVISTA COMPANY v. GRANDTOTAL FINANCES LIMITED et. al., WIPO Case No. D2000-0848; Confédération Nationale du Crédit Mutuel, Caisse Fédérale du Crédit Mutuel Nord Europe v. Marketing Total S.A., WIPO Case No. D2007 0288).


6. Discussion and Findings

Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:


(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Before advancing to its substantive analysis, as a preliminary procedural matter the Panel briefly notes that it accepts the consolidation of multiple respondents in this administrative proceeding. Despite the fact that the identity of one of the Respondents remains masked by a privacy service, the Panel finds the Complainant has sufficiently stated a case for common control of the disputed domain names.

A. Identical or Confusingly Similar

The Panel finds that the Complainant is the owner of the registered trademark BLACKMILK and that the disputed domain names , , , , , , , , , , , and are confusingly similar to the Complainant’s trademark.


Regarding the addition of the generic terms “cheap”, “clothing cheap”, “clothing factory”, “clothing outlet”, “clothing sale”, “clothing wholesale”, “factory”, “leggings”, “leggings sale”, “outlet”, “sale” and “wholesale”, the Panel notes that it is now well established that the addition of generic terms to a trademark in a domain name does not necessarily distinguish that domain name from a trademark but rather enhances the confusing nature of the domain name if descriptive of the Complainant’s business (see, e.g., Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. D2005 0037; Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003 0709; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000 0713). The addition of the terms “cheap”, “clothing cheap”, “clothing factory”, “clothing outlet”, “clothing sale”, “clothing wholesale”, “factory”, “leggings”, “leggings sale”, “outlet”, “sale” and “wholesale” do not therefore prevent the disputed domain names from being confusingly similar to the Complainant’s trademark.
It is also well accepted that Top-Level Domain suffixes, in this case “.com”, “.net” and “.org”, may be ignored when assessing the confusing similarity between a trademark and a domain name (see, e.g., VAT Holding AG v Vat.com, WIPO Case No. D2000-0607).
The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain names are confusingly similar to the Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Respondents have failed to file a Response in accordance with the Rules, paragraph 5.


The Complainant in its Complaint and as set out above has established a prima facie case that the Respondents have no rights or legitimate interests in the disputed domain names. It asserts that the Respondents are not using the disputed domain names for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services.

The prima facie case presented by the Complainant shifts the burden of production to the Respondents to demonstrate that they have rights or legitimate interests in the disputed domain names. However, the Respondents have not presented any evidence of any rights or legitimate interests they may have in the disputed domain names.


Should the products sold on the websites at the disputed domain names be genuine products, legitimately acquired by the Respondents, the question that would arise is whether the Respondents would therefore have a legitimate interest in using domain names that are confusingly similar to the Complainant’s trademark in circumstances that are likely to give rise to initial interest confusion.
According to the majority view in relation to the issue of resellers as summarized in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.3:
“A reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use meets certain requirements. These requirements include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods and the site’s accurately and prominently disclosing the registrant’s relationship with the trademark holder. The respondent must also not try to corner the market in domain names that reflect the trademark.”
This summary is mainly based on the panel decision Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. 
In the present case, the Complainant has provided evidence that the three active Respondents’ websites at the disputed domain names imitate the website of the Complainant and/or of an authorized reseller or distributor of the Complainant. Furthermore, there is no accurate and prominent disclosure of the Respondents’ relationship with the Complainant (or lack thereof) on these websites. Such use does not give rise to any rights or legitimate interests under the Oki Data analysis summarized above.
Since the Complainant’s evidence is sufficient to establish a prima facie case that the Respondents lack rights or legitimate interests in the disputed domain names, the burden of proof shifts to the Respondents to produce evidence to rebut this showing; the Respondents have failed to rebut or deny this showing.

The Panel therefore finds that the Policy, paragraph 4(a)(ii), has been satisfied.



C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that “for the purposes of paragraph 4(a)(iii) of the Policy, 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 the complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the domain name; or
(ii) that [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) that [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site or other on-line 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] web site or location.”
Regarding the registration in bad faith of the disputed domain names, the Complainant’s registered trademark rights have been established and the Panel finds that the Respondents registered the disputed domain names in order to exploit this trademark. The Panel makes this finding because the added generic terms “clothing cheap”, “clothing factory”, “clothing outlet”, “clothing sale”, “clothing wholesale”, “leggings” and “leggings sale”, as well as the content of the Respondents’ three active websites at the disputed domain names , and , all refer to the Complainant’s business activity. Therefore, in this Panel’s opinion, the disputed domain names were registered in bad faith.
Regarding the use in bad faith of the disputed domain names , and pointing to three active webpages, they all refer to the sale of fashion garments reproducing the Complainant’s artworks, and the layout of the three websites is so similar to the layout of the Complainant’s official website that confusion is very likely to occur.
The above suggests to the Panel that the Respondents intentionally registered and are using these disputed domain names in order to attract, for commercial gain, Internet users to their websites in accordance with paragraph 4(b)(iv) of the Policy.
Regarding the use in bad faith of the remaining disputed domain names, all of them pointing to inactive websites, the Panel considers that bad faith may exist even in cases of so-called “passive holding”, as found in the landmark decision Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000 0003. In the circumstances of this case the Panel finds that such passive holding amounts to bad faith use.
The Panel finds that the Complainant has presented sufficient evidence to satisfy their burden of proof with respect to the issue of whether the Respondents have registered and are using the disputed domain names in bad faith.
The Panel therefore finds that the Policy, paragraph 4(a)(iii) has been satisfied.


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, , , , , , , , , , , , and be transferred to the Complainant.



Edoardo Fano

Sole Panelist



Date: October 2, 2014



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