Decjuba Pty Ltd v. Domain Admin / Domain Privacy Guard Sociedad Anónima Ltd
Claim Number: FA1808001801453
Complainant is Decjuba Pty Ltd (“Complainant”), represented by Lygia Engert, Australia. Respondent is Domain Admin / Domain Privacy Guard Sociedad Anónima Ltd (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <decjuba.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 15, 2018; the Forum received payment on August 16, 2018.
On August 16, 2018, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <decjuba.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 23, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 12, 2018 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@decjuba.com. Also on August 23, 2018, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On September 17, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a leading Australian women’s fashion retailer, with a strong local and international presence. Complainant was founded in Australia in 2000 and was acquired by the current owner in 2008. Complainant has rights in the DE CJUBA mark through its registration of the mark with the Australian Intellectual Property Office (“AIPO”) (e.g. Reg. No. 829,853, registered Apr. 17, 2001). See Compl. Annex 1. Respondent’s <decjuba.com> domain name is identical or confusingly similar to Complainant’s mark.
Respondent has no rights or legitimate interests in the <decjuba.com> domain name, as Complainant has never authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the domain name to advertise a series of competing hyperlinks, presumably for its own commercial gain. See Compl. Annex 4.
Respondent registered and uses the <decjuba.com> domain name in bad faith. Respondent clearly registered the domain name with the intent of selling it for a profit, as Respondent displays the message “The domain decjuba.com may be for sale. Click here to inquire about this domain” on the homepage of the disputed domain name. See Compl. Annex 4. Further, Respondent attempts to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of a product on Respondent’s website. Respondent creates this confusion to commercially benefit through competing pay-per-click links displayed on the resolving webpage. See Compl. Annex 4.
B. Respondent
Respondent failed to submit a Response in this proceeding. Respondent registered the <decjuba.com> domain name on January 17, 2006.
The Panel finds that the disputed domain name is confusingly similar to Complainant’s valid and subsisting trademark; that Respondent has no rights or legitimate interests in or to the disputed domain name; and that Respondent has engaged in bad faith use and registration of the disputed domain name.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The Panel finds that the disputed domain name, <decjuba.com>, is confusingly similar to Complainant’s valid and subsisting trademark, DE CJUBA. Complainant has adequately plead its rights and interests in and to this trademark. Respondent arrives at the disputed domain name by taking Complainant mark in total and adding the gTLD “.com.” This is insufficient to distinguish the disputed domain name from Complainant’s trademark.
As such, the Panel finds that the disputed domain name is confusingly similar with Complainant’s trademark.
The Panel further finds that Respondent has no rights or legitimate interests in or to the disputed domain name. Respondent has no permission, right or license to register the disputed domain name. Respondent is not commonly known by the disputed domain name.
Further, Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the domain name to advertise a series of competing hyperlinks, presumably for its own commercial gain. See Compl. Annex 4.
As such, the Panel finds that Respondent lacks any rights or legitimate interests in or to the disputed domain name.
The Panel further finds that Respondent has engaged in bad faith use and registration of the disputed domain name. Complainant claims that Respondent registered the disputed domain name with the intent of selling it for a profit. Offering a confusingly similar domain name for sale can evince bad faith registration under Policy ¶ 4(b)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”). Complainant points to the message displayed on the resolving webpage for the disputed domain name, which states “The domain decjuba.com may be for sale. Click here to inquire about this domain.” See Compl. Annex 4.
As such, the Panel finds that Respondent’s offering of the domain name for sale to the general public is evidence of bad faith under Policy ¶ 4(b)(i).
Additionally, Complainant argues that Respondent registered and uses the disputed domain name in bad faith by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name to commercially benefit by offering links to competing goods or services. Using a disputed domain name that trades upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶ 4(b)(iv). See American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum January 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iv)”). Complainant provides numerous screenshots of the resolving and affiliated webpages, which contains links such as “Fashion Men” and “Apparel Clothing.” See Compl. Annex 4.
As such, the Panel finds that Respondent attempted to commercially benefit from Complainant’s mark in bad faith under Policy ¶ 4(b)(iv).
Finally, the Panel finds that Respondent had actual knowledge of Complainant’s rights in and to the trademark DE CJUBA. Respondent took and used identical words or letters representing Complainant’s trademark. As such, it is not likely that Respondent did so randomly. Given the unique nature of Complainant’s mark and the totality of the circumstances, the Panel finds that Respondent had prior knowledge of Complainant’s rights in and to the trademark.
As such, the Panel finds that Respondent has engaged in bad faith use and registration of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <decjuba.com> domain name be TRANSFERRED from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: September 17, 2018
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