Coolibar, Inc. v. Tulip Trading Company
Claim Number: FA1911001871310
Complainant is Coolibar, Inc. (“Complainant”), represented by Jamie N. Nafziger of Dorsey & Whitney LLP, United States. Respondent is Tulip Trading Company (“Respondent”), Saint Kitts and Nevis.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <emcoolibar.com>(‘the Domain Name’), registered with Key-Systems GmbH.
The undersigned certifies that she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 14, 2019; the Forum received payment on November 14, 2019.
On November 15, 2019, Key-Systems GmbH confirmed by e-mail to the Forum that the <emcoolibar.com> domain name is registered with Key-Systems GmbH and that Respondent is the current registrant of the name. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH 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 November 20, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 10, 2019 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@emcoolibar.com. Also on November 20, 2019, 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 December 16, 2019 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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
The Complainant’s contentions can be summarised as follows:
The Complainant is the owner of the trade mark COOLIBAR registered, inter alia, in the USA for sun protection clothing with first use recorded as 2002. The Complainant uses em.coolibar.com to send e mails and operates a web site at Coolibar.com.
The Domain Name registered in 2019 is confusingly similar to the Complainant’s trade mark adding only ‘em’ indicating e mails and the gTLD .com which do not prevent confusing similarity.
Respondent has no rights or legitimate interests in the Domain Name, is not commonly known by it and is not authorised by the Complainant. The Domain Name has been used for pay over click links for competing products which is not a bona fide offering of goods or services or a legitimate non commercial or fair use.
It is registration and use in bad faith showing actual knowledge of the Complainant and its business, an intent to disrupt the Complainant’s business and create confusion on the Internet for commercial gain by diverting customers to competing pay per click links. The similarity of the Domain Name to the e-mails sent by the Complainant from <em.coolibar.com> to its customers shows an intent that a site attached to the Domain Name will be assumed by Internet customers to be associated with the Complainant.
The Respondent has been the subject of a large number of adverse decisions under the Policy for registering Domain Names containing the trademarks of third-parties.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the trade mark COOLIBAR registered, inter alia, in the USA for sun protection clothing with first use recorded as 2002. The Complainant uses em.coolibar.com to send e mails and operates a web site at Coolibar.com.
The Domain Name registered in 2019 has been used for pay per click links for products competing with the Complainant. The Respondent has been the subject of a large number of adverse decisions under the Policy.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Identical or Confusingly Similar
The Domain Name consists of the Complainant’s COOLIBAR mark (registered, inter alia, in the USA for sun protection clothes with first use recorded as 2002) adding the letters ‘em’ which reflects a version of the Domain Name used by the Complainant to send e mails and the gTLD.com, the addition of which does not prevent said confusing similarity.
The Panel agrees with the Complainant that the addition of the two letters ‘em’ does not distinguish the Domain Name from the Complainant's trade mark pursuant to the Policy. The gTLD .com does not serve to distinguish the Domain Name from the Complainant’s mark. See Red Hat Inc v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the TLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purposes of the Policy with a mark in which the Complainant has rights.
As such the Panel holds that Paragraph 4 (a)(i) of the Policy has been satisfied.
Rights or Legitimate Interests
The Complainant has not authorised the use of its mark. The Respondent has not answered this Complaint and there is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
Redirection to a website that competes with a complainant is not a bona fide offering of good or services or a legitimate noncommercial or fair use. See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site).
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
The Respondent has not answered this Complaint or explained why it should be allowed to register a domain name containing the Complainant’s mark and similar to a version of the Complainant’s domain name that has been used to send e mails to the Complainant’s customers.
Use for competing pay per click links indicates bad faith being disruptive of the Complainant’s business and diverting customers for commercial gain and can indicate actual knowledge of the Complainant and its business. 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)(iii)”); see also Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (holding that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶ 4(b)(iv)). See also University of Rochester v. Park HyungJin, FA1410001587458 (Forum Dec. 9, 2014) (where the Panel inferred Respondent’s actual knowledge based on Respondent’s use of the domain name to promote links related to the same field as where Complainant’s mark is used.).
The fact that the Respondent has registered a domain name similar to a version of the Complainant’s domain name used by the Complainant to send e mails to its customers shows the Respondent knew about the Complainant, its business and its rights.
The Respondent has also been subject to a large number of adverse decisions under the Policy for registering domain names containing the trade marks of third parties.
As such, the Panel holds that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under Para 4 (b) (ii), (iii) and (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <emcoolibar.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: December 16, 2019
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