Weird Fish Limited v. Tom Wolsey et al.
Claim Number: FA1809001804515
Complainant: Weird Fish Limited of Cheltenham, United Kingdom.
Complainant Representative: EuroDNS SA of Leudelange, Luxembourg.
Respondent: Thomas Rachel Wolsey Wolsey of Haverfordwest, United Kingdom.
Tom Wolsey of Haverfordwest, Pembrokeshire, United States of America.
Tom Wolsey of REDACTED FOR PRIVACY, GB.
REGISTRIES and REGISTRARS
Registries: Binky Moon, LLC
Registrars: eNom, LLC
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Examiner in this proceeding.
Luz Helena Villamil Jimenez, as Examiner.
Complainant submitted: September 4, 2018
Commencement: September 5, 2018
Response Date: September 19, 2018
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.
Findings of Fact:
The Complaint at hand refers to the domain name <weirdfish.clothing> registered by Tom Wolsey of Pembrokeshire, UK.
In accordance with the provisions of URS, Complainant claims (i) that the domain name <weirdfish.clothing> is identical or confusingly similar to a word mark for which the Complainant holds a valid national registration and that is in current use; (ii) that The Registrant has no legitimate right or interest to the domain name, and (iii) that the domain name was registered and is being used in bad faith.
Complainant states it owns several registrations for the trademark “WEIRD FISH”, such as the European Trademark n°003238326 registered on October 8, 2004, and GB Trademark n°UK00002242546 registered on August 15, 2000. It is argued that the trademark Weird Fish is well-known for clothing, since for almost two decades has offered products. This has also been made through the website weirdfish.co.uk. Moreover, the trademark WEIRD FISH has been validated through an entry made at the Trade Mark Clearinghouse.
It is claimed in the Complaint that the disputed domain name is identical to the Complainant’s trademark WEIRD FISH, since the extension “.clothing” is directly aimed at the range of products protected by the registered trademark, thus creating more confusion to the consumers. Additionally, and after reviewing the information publicly reachable on the whois database of this domain name, it appears that the respondent registered the domain name on January 5, 2017, i.e. more than seventeen years after the registration of the WEIRD FISH Trademark.
Lastly, the Complainant contends that the domain name “weirdfish.clothing” redirects to another domain name “paralympics.games” resolving to a
website offering domain names for sale and allowing to contact the owner to buy back domain names. The domain name “weirdfish.clothing” has therefore been registered for the sole purpose of selling the domain name to the complainant and consequently it was registered in bad faith.
URS Procedure 1.2.6, requires Complainant to prove, by clear and convincing evidence, each of the following three elements to obtain an order that a domain name should be suspended:
[URS 22.214.171.124] 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 WEIRD FISH, and that this trademark is in use since it was validated by its registration with the Trademark Clearinghouse. The disputed domain name <weirdfish.clothing> identically reproduces the registered trademark, and the Examiner concurs with the Complainant in that the extension “.clothing” directly refers to the line of products covered by the trademark WEIRD FISH.
[URS 126.96.36.199] Registrant has no legitimate right or interest to the domain name.
Determined: Finding for Complainant
It is undeniable that the litigious domain name <weirdfish.clothing> identically reproduces the trademark “WEIRD FISH” registered by the Complainant, and since this trademark is registered with the Trademark Clearing House, when registering the domain <weirdfish.clothing> the Registrant must have received a notification with the registered marks details to warn him about a potential conflict. Thus, going ahead with the registration of the domain name in spite of the warning message evidences no legitimate right or interest to the domain names at all.
In turn, the Registrant submitted a response trying to explain how he created the domain name <weirdfish.clothing>. In his words, he has been a fisherman from an early age, and has virtually lived for fishing. He adds that since he fishes in all weathers he had to adapt his fishing gear to allow him to stay dry and be better prepared to stay on the river bank for up to 14 hours and wade in the river, and his adaptations to his fishing wear have been noticed by many other fishermen who asked him if he could make the same modifications for them which he has been doing for a small fee. This facts, he states, led him to work on getting a web site to sell his fishing gear, and this is the explanation for having registered the domain <weirdfish.clothing>.
The odd statements made in the response could never be accepted as an argument to demonstrate a legitimate right or interest to the domain name <weirdfish.clothing>, since nothing explains why someone needs to use a third party’s trademark to name his initiative, which in addition refers to the same line of business. Languages contain an extremely large number of words, and in addition individuals can coin fantasy words to refer to their enterprises, so this Examiner does not consider acceptable an explanation as the one given in the present case to expropriate the trademark WEIRD FISH to the Complainant, who happens to use it in his own website “weirdfish.co.uk”.
[URS 188.8.131.52] 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
The Complainant submitted evidence to demonstrate that the domain name “weirdfish.clothing” redirects to the website under the name “paralympics.games” resolving to a website offering domain names for sale and allowing to contact the owner to buy back domain names. The domain name “weirdfish.clothing” is not being used in connection with a bona fide business, but instead has been registered for the sole purpose of selling it to the complainant or to a competitor of the Complainant, and this evidences that it was registered in bad faith.
After reviewing the parties’ submissions, the Examiner determines that
the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain names be SUSPENDED for the duration of the registration:
Luz Helena Villamil Jimenez, Examiner
Dated: September 24, 2018
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