Primark Holdings v. WhoisGuard, Inc.
Claim Number: FA1811001817019
Complainant: Primark Holdings of Dublin, Ireland.
Complainant Representative: Safenames Limited of Milton Keynes, United Kingdom.
Respondent: WhoisGuard, Inc. of Panama, International, PA.
Respondent Representative: None
REGISTRIES and REGISTRARS
Registries: DotOnline Inc.
Registrars: NameCheap, Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Examiner in this proceeding.
Terry F. Peppard as Examiner.
Complainant submitted: November 19, 2018
Commencement: November 20, 2018
Default Date: December 5, 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.
Notwithstanding that Respondent has defaulted, to obtain a determination that a domain name should be suspended, URS Procedure 1.2.6 requires Complainant to make out a prima facie showing, by clear and convincing evidence, for each of the following three elements of the Procedure.
i. that the registered domain name is identical or confusingly similar to a word mark for which the Complainant holds a valid national or regional registration and that is in current use;
ii. that the registrant (Respondent) has no legitimate right to or interest in the domain name; and
iii. that the domain name was registered and is being used by the registrant (Respondent) in bad faith.
IDENTITY OR CONFUSING SIMILARITY
In its Complaint, Complainant shows that it holds a valid registration for the trade mark PRIMARK, which is on file with the European Union Intellectual Property Office as Registry No. 000117838, registered February 1, 1999, and most recently renewed as of April 12, 2016, in International Class 18 [articles of luggage, etc.], as well as International Class 24 [bed linens, etc.] and International Class 25 [articles of clothing, footwear and headgear]. Moreover, the Complaint shows that the mark is in current use. Respondent does not deny any of this.
We also take notice, from reliable publicly available records, that Respondent registered the domain name <primark-giftcard.online> on November 6, 2018. Again, Respondent does not deny this. It is therefore evident that Complainant’s rights in the PRIMARK trade mark predate, and therefore have time precedence over, any rights Respondent might have claimed in the challenged domain name. Accordingly, Complainant has sufficient standing under the Procedure to bring the instant claim.
Turning to the substantive question before us, we note that the <primark-giftcard.online> domain name contains the PRIMARK trade mark in its entirety, with only the addition of a hyphen, plus the generic term “giftcard,” and the generic Top Level Domain (“gTLD”) “.online.” Because the appended hyphen adds no meaning to the result, it is of no consequence to our analysis. For their part, both the term “giftcard” and the gTLD “.online” relate to aspects of Complainant’s business. For this reason, and because every domain name requires a gTLD, these alterations to the mark, made in creating the domain name, permit no other conclusion than that the domain name is confusingly similar to Complainant’s mark. Accordingly, we so find.
REGISTRANT’S RIGHTS OR INTERESTS
Complainant asserts that it has not authorized Respondent to use the PRIMARK mark, that Respondent has not been commonly known by the <primark-giftcard.online> domain name, that the domain name resolves to an inactive website, that the domain name intrinsically creates the false impression that Respondent is a legitimate source of Complainant’s gift cards, and that Respondent could not employ the domain name in commerce without offending Complainant’s rights in its mark. In light of these contentions, none of which is objected to by Respondent, we conclude that Respondent has no evident rights to or legitimate interests in the domain name.
BAD FAITH REGISTRATION OR USE
Under the Procedure, essentially the same considerations, described above, that make it clear that Respondent has no rights to or legitimate interests in the <primark-giftcard.online> domain name are also pertinent to consideration of the question whether the domain name has been registered and is being used in bad faith. We may, however, also take into account that it is evident from the facts before us that Respondent knew of Complainant and its rights in the PRIMARK mark when it registered the domain name. Accordingly, we find that Respondent both registered and now uses the domain name in bad faith.
Upon review of Complainant’s submissions, we determine that Complainant has adequately demonstrated all three elements of the URS Procedure to a standard of clear and convincing evidence. It is, therefore, Ordered that the domain name <primark-giftcard.online> be SUSPENDED for the duration of its registration.
Terry F. Peppard, Examiner
Dated: December 05, 2018
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