W.L. Gore & Associates Inc v. WhoisGuard, Inc. et al.
Claim Number: FA1711001758178
Complainant: W.L. Gore & Associates Inc of Newark, United States of America.
Complainant Representative: TaylorWessing of Munich, Germany.
Respondent: WhoisGuard, Inc. of Panama, International, PA.
Respondent Representative: «cFirstName» «cMiddle» «cLastName»
REGISTRIES and REGISTRARS
Registries: Bitter Fields, LLC
Registrars: NameCheap, Inc.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Examiner in this proceeding.
Luz Helena Villamil-Jimenez, as Examiner.
Complainant submitted: November 13, 2017
Commencement: November 16, 2017
Default Date: December 1, 2017
Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules") .
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
The case at hand refers to the domain name <goretexgiyim.world>. The owner of the domain is WhoisGuard, Inc. of Panama, which means that the real owner is not known.
Complainant argues that the domain name is confusingly similar to the trademark GORE-TEX registered in the United States as well as at the European Union Intellectual Property Office and the Turkish Trademark Office.
Complainant explains that it developed the wellknown GORETEX material. GORETEX is the Complainant’s most famous brand and it has been used for decades worldwide in connection with fabrics, laminates and consumer products. Millions of GORETEX branded products, mainly textile and textile laminates as well as outdoor and functional and protective clothing, shoes, and gloves have been sold world-wide, and as a result, GORE-TEX has become one of the most well-known outdoor brands.
It is also mentioned in the Complaint that the Registrant has no link with the Complainant and that the Respondent is not an affiliate or licensee of GORE-TEX, and therefore it is not entitled to use the mark GORE-TEX as a part of a domain. The Complainant also contends that the Registrant is operating an unauthorized online shop on the website <goretexgiyim.world> declaring that the page is operated by GORE-TEX itself, and therefore both, the domain and the related online shop infringe the Complainant’s rights in the wellknown GORETEX trademark. The Registrant’s online shop uses the Complainant’s wellknown trademark not only in the disputed domain name, but also in connection with every product offered on the homepage of the online shop. The Complainant adds that all the products offered on the website <goretexgiyim.world> are deemed to be counterfeit since the Registrant is not a customer of the Complainant and yet it offers a wide range of products bearing the trademark GORETEX. In light of this, according to the Complainant the domain <goretexgiyim.world> creates a likelihood of confusion with the famous “GORETEX” trademarks. Moreover, the term “giyim” is the Turkish word for “clothing/ gear” and therefore is a descriptive term. Thus, <goretexgiyim.world> means that the domain is related to “GORETEX” apparel.
In light of the foregoing, the Complainant asserts that the domain name <goretexgiyim.world> was registered with the intent of misleading internet users as to the commercial origin of the products and the website. And since it is not clarified on the website that the trademark GORE-TEX is owned by a third party and not by the Registrant, nor that the website is not an offer of the Complainant or licensed by the Complainant, the impression created by is that the Registrant’s website is an original online shop of the Complainant with even more convenient prices but offering counterfeit products. By using the domain name Registrant attempts to attract for commercial gain, Internet users to Registrant’s web site and products by creating a likelihood of confusion with the complainant’s trade mark as to the source of the Registrant’s web site and products
Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended:
URS 18.104.22.168] The registered domain name(s) is/are identical or confusingly similar to a word mark:
(i) for which the Complainant holds a valid national or regional registration and that is in current use; or
(ii) that has been validated through court proceedings; or
(iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.
Determined: Finding for Complainant
Complainant submitted evidence to demonstrate that it is the owner of the trademark GORE-TEX, and that said trademark is in use. Products and services are advertised and sold under the trademark GORE-TEX on its website www.goretex.com. Furthermore, the Examiner ascertained that indeed giyim is a Turkish word that means “clothing”, and this fact is not a small issue since evidence was submitted to demonstrate that the trademark GORE-TEX is registered in Turkey. In addition, it can be seen in the proof of use submitted by the Complainant that the contents of the webpage <goretexgiyim.world> are in the Turkish language, and this fact leads to conclude that the domain name was deliberately coined with the trademark GORE-TEX and the addition of a descriptive word also in Turkish with a specific purpose.
[URS 22.214.171.124] Registrant has no legitimate right or interest to the domain name.
Determined: Finding for Complainant
Having determined that the domain name <goretexgiyim.world> was “created “ from the trademark GORE-TEX with the addition of the descriptive Turkish word “giyim”, the Examiner concludes that Registrant could not claim any legitimate right or interest to the disputed domain. To worsen things Respondent defaulted, and therefore there is no evidence, nor even a small argument, as regards the existence of any rights or legitimate interests in respect of the domain name in favor of the Registrant.
[URS 126.96.36.199] The domain name was registered and is being used in bad faith:
a. Registrant has registered or 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 documented out-of-pocket costs directly related to the domain name; or
b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; or
c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s web site or location or of a product or service on that web site or location.
Determined: Finding for Complainant
As mentioned above, the disputed domain name <goretexgiyim.world> contains the registered trademark GORE-TEX. The inclusion of a distinctive trademark on a domain name is definitely not the result of casualty, and aside of making evident that the registrant is acting in bad faith, it does suggest an intention to mislead those who have access to the domain name by leading them to believe that said domain and website also belong to the owner of the registered trademark. In the present case the Examiner agrees with the Complainant in that when registering the domain the Respondent’s intention was to create a likelihood of confusion with Complainant's trademark, and this is demonstrated by the contents of the webpage of the Registrant where the trademark GORE-TEX is openly advertised and mentioned, even though the owner of the trademark has not authorized use thereof.
After reviewing the Complainant’s submissions, the Examiner determines that
the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; therefore, Examiner hereby Orders the following domain name be SUSPENDED for the duration of the registration:
Luz Helena Villamil Jimenez, Examiner
Dated: December 05, 2017
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