DECISION

 

Wasteland Inc. v. Monica Dimperio / The MidWasteland

Claim Number: FA2501002134687

 

PARTIES

Complainant is Wasteland Inc. ("Complainant"), represented by Mark A. Steiner, California, USA. Respondent is Monica Dimperio / The MidWasteland ("Respondent"), represented by Fuad Sulayman, Illinois, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <themidwasteland.com> (the "Disputed Domain Name"), registered with GoDaddy.com, LLC.

 

PANEL

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.

 

David H. Bernstein as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 10, 2025; Forum received payment on January 10, 2025.

 

On January 13, 2025, GoDaddy.com, LLC confirmed by e-mail to Forum that the <themidwasteland.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 January 14, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 3, 2025, 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@themidwasteland.com. Also on January 14, 2025, 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.

 

A timely Response was received and determined to be complete on February 3, 2025.

 

On February 4, 2025, pursuant to the Parties' requests to have the dispute decided by a single-member Panel, Forum appointed David H. Bernstein as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant Wasteland, Inc. owns and operates five brick-and-mortar retail stores in California specializing in vintage clothing. 

 

Complainant owns the trademark WASTELAND. Complainant asserts that its priority in the WASTELAND mark dates back to its first use in October 1986. Complainant applied to register WASTELAND with the United States Patent and Trademark Office ("USPTO") in January 1993; the UPSTO issued Registration No. 1,790,881 to Complainant on August 31, 1993, covering retail clothing, jewelry, and furniture store services.

 

Complainant contends that the Disputed Domain Name is confusingly similar to Complainant's mark because the domain name wholly incorporates that mark. Complainant further contends that Respondent's addition of the words "the" and "mid" to Complainant's WASTELAND mark in the Disputed Domain Name does not prevent a finding of confusing similarity because the addition of "descriptive formatives" fails to create a distinct domain name.

 

Complainant contends that Respondent does not have rights or legitimate interests in the Disputed Domain Name because Respondent is not commonly known by the Disputed Domain Name, Respondent has no connection or affiliation with Complainant, and Complainant has not authorized Respondent to use its mark. Additionally, Complainant contends that Respondent is not utilizing the mark to make a bona fide offering of services because Respondent uses the Disputed Domain Name to sell clothing and clothing retail services that compete directly with Complainant's business.

 

Finally, Complainant contends that Respondent registered and used the Disputed Domain Name in bad faith. Complainant contends that Respondent registered the Disputed Domain Name in bad faith because Respondent had knowledge of Complainant's mark at the time of registration. In support of this contention, Complainant asserts that Respondent had constructive notice of Complainant's mark at the time it registered the Disputed Domain Name, and likely had actual knowledge as well because Respondent "was a competitor" of Complainant, and because Complainant had achieved notoriety in the media after famous actress Angelina Jolie wore a dress from Complainant's store at a Hollywood premiere. Complainant asserts that Respondent is using the Disputed Domain Name in bad faith to divert internet traffic away from Complainant's website, and to deceive consumers into falsely believing that Respondent is an affiliate of Complainant.

 

B. Respondent

Respondent is the owner of an Illinois-based lifestyle media platform that publishes content on cultural trends through a website to which the Disputed Domain Name resolves.

 

Respondent contends that the Disputed Domain Name is not confusingly similar to Complainant's mark. Respondent denies that Complainant's mark and the Disputed Domain Name are confusingly similar because they are not identical, and the Respondent's addition of "TheMid" to the common term "Wasteland" creates a "distinct difference in sight, sound, and meaning." Respondent further contends that any confusion between Complainant's mark and the Disputed Domain Name is diminished because Complainant and Respondent have distinct business models and offer different types of products and services: Respondent's website is a "media-driven" cultural blog that does not sell products, whereas Complainant's website is an e-commerce site for Complainant's physical retail stores. Respondent also contends that confusion is unlikely because Respondent consistently uses the "TheMidWasteland" as a single, invented term in a pink cursive script, whereas Complainant uses the term "Wasteland" as a generic term and with a red-and-black, graffiti-style script.

 

Respondent further contends that Complainant offers no evidence that suggests any malicious intent or bad faith in the adoption of the Disputed Domain Name.

 

Finally, Respondent argues that Complainant should be barred from bringing this case based on the doctrine of laches. In support of this contention, Respondent asserts that Complainant knew of the existence of the Disputed Domain Name for more than a decade before filing the Complaint. Specifically, in 2012, Complainant contacted Respondent to complain about the sale of products on the website to which the Disputed Domain Name resolves; the record does not reflect how that dispute was resolved, but Complainant apparently did not pursue any claims against Respondent, and Respondent continued to publish its "TheMidWasteland" blog under the Disputed Domain Name. Respondent contends that Complainant's delay in bringing this proceeding prejudiced Respondent.

 

FINDINGS

The following facts are either undisputed or are clearly supported by the record.

 

Complainant owns and operates five physical retail stores that sell vintage clothing.

 

Complainant owns a trademark registration with the USPTO for WASTELAND, which was registered on August 31, 1993. 

 

Complainant registered the <shopwasteland.com> domain name on March 22, 2011, and has used that domain name since then in connection with its clothing retail business.

 

Complainant has no association or relationship with Respondent. Respondent has no license, permission, or authorization from Complainant to own or use the Disputed Domain Name.

 

Complainant is based in California, and Respondent is based in Illinois.

 

Respondent registered the domain name <themidwasteland.com> on November 16, 2007.

 

Respondent's domain name resolves to a website that features articles commentating on fashion and culture, with six tabs on the homepage marked: "Street Style," "Fashion," "Beauty," "Culture," "Lifestyle," and "Shop." The "Shop" page features three pages of product listings with prices for clothing, shoes, handbags, jewelry, and accessories. Although clicking on a listing opens a corresponding product page with an "Add to Cart" button, that button is not clickable. There is no "Cart" or means of purchasing these products on the website.  

 

Complainant filed the instant Amended Complaint on January 13, 2025.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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 by a preponderance of the evidence 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.

 

Laches

As a preliminary matter, Respondent contends that Complainant's case should be dismissed under the doctrine of laches because Complainant has delayed beyond the statutory period for trademark actions in bringing a complaint against Respondent. But, because the UDRP's principal aim is to provide prospective injunctive relief, and not to provide retroactive compensatory relief, the consensus view is that Panels should not recognize laches as a bar to UDRP cases. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Jurisprudential Overview 3.0"), section 4.17 ("Panels have widely recognized that mere delay between the registration of a domain name and the filing of a complaint neither bars a complainant from filing such case, nor from potentially prevailing on the merits. . . . Panels have therefore declined to specifically adopt concepts such as laches or its equivalent in UDRP cases."); Mile, Inc. v. Michael Burg, WIPO Case No. D2010-2011. Accordingly, the Panel rejects Respondent's request that the Complaint be denied based on laches.

 

Identical and/or Confusingly Similar

Complainant owns a federal trademark registration for WASTELAND. This registration serves as prima facie evidence of the mark's validity. WIPO Jurisprudential Overview 3.0, section 1.2.1 ("Where the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case.").

 

For purposes of the Policy, the Disputed Domain Name is confusingly similar to Complainant's registered trademark because it incorporates the WASTELAND trademark in its entirety. WIPO Jurisprudential Overview 3.0, section 1.7 ("in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing").

 

The addition of the words "the" and "mid" to the Complainant's incorporated mark in the Disputed Domain Name do not prevent a finding of confusing similarity. WIPO Jurisprudential Overview 3.0, Section 1.8 ("Where the relevant trademark is recognizable within the Disputed Domain Name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.").

 

Respondent's argument that the Disputed Domain Name is not confusingly similar to Complainant's trademark because the parties operate in different markets for different types of products and services misunderstands the first element of the Policy. The first element looks only at the similarity between the disputed domain name and the trademark at issue; it does not consider how the domain name and mark are used in the marketplace (those are issues that are addressed in the second and third elements of the Policy). WIPO Jurisprudential Overview 3.0, section 1.7 ("The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant's trademark and the Disputed Domain Name.").

 

Similarly, Respondent's argument that the Disputed Domain Name is not confusingly similar to Complainant's trademark because the parties use different fonts, colors, and accompanying logos is immaterial to assessing the first element of the Policy. The well-accepted test for determining confusing similarity under the first element compares the Disputed Domain Name—not Respondent's branding or logo involving that domain name—and the textual elements of the relevant trademark. WIPO Jurisprudential Overview 3.0, section 1.7 ("The test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name."). 

 

The Panel therefore finds that Complainant has satisfied its burden of showing that the Disputed Domain Name is confusingly similar to a trademark in which Complainant has rights and has therefore satisfied the first element of the Policy.

 

Rights or Legitimate Interests

Complainant alleges that Respondent is not a licensee of Complainant and is not otherwise authorized to use Complainant's mark or register a domain name incorporating that mark. Complainant further contends that Respondent is not commonly known by or identified with the Disputed Domain Name based on the domain name's WHOIS listing. Complainant additionally asserts that Respondent is not making a noncommercial or fair use of the Disputed Domain Name. Complainant contends that Respondent is using the Disputed Domain Name for its own commercial gain by diverting would-be customers of Complainant to Respondent's website, because Respondent purportedly offers clothing and clothing retail services for sale through the Disputed Domain Name in competition with Complainant. Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the Disputed Domain Name.

 

Once a complainant makes a prima facie showing that a respondent lacks rights or legitimate interests in a disputed domain name, the burden of production shifts to the respondent to provide evidence demonstrating rights or legitimate interests in the Disputed Domain Name. However, the burden of proof always remains on the complainant. WIPO Jurisprudential Overview 3.0, section 2.1.

 

Respondent has come forward with evidence to rebut Complainant's prima facie showing—namely, that Respondent has used the term "TheMidWasteland" in connection with its lifestyle media platform since 2007 and that Respondent's services provided through the website to which the Disputed Domain Name resolves are primarily editorial in nature. Indeed, Respondent submits evidence of Chicago-based and national media outlets recognizing Respondent's MidWasteland "street-style blog," including The New York Times, Time Out Chicago, Chicago Magazine, and the Chicago Tribune. This media coverage demonstrates that Respondent is commonly known by a name corresponding to the Disputed Domain Name, as that domain name includes Respondent's "TheMidWasteland" name. Further, this media coverage sometimes includes the Disputed Domain Name itself as well. This evidence establishes that Respondent launched and operated a business offering fashion commentary under a name corresponding to the Disputed Domain Name long before notice of this dispute, and that Respondent is using the Disputed Domain Name in connection with a bona fide offering of services.

 

Shockingly, and despite having corresponded with Respondent back in 2012, Complainant does not address this long history of Respondent's website and blog. Instead, it focuses on a single webpage that looks like it is a shop at which Respondent is selling clothing, and complains that this webpage proves that Respondent is diverting Complainant's customers to the Disputed Domain Name for commercial gain, which means that it cannot claim rights or legitimate interests under Paragraph 4(c)(iii) of the Policy ("you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."). Although the "Shop" page on Respondent's website may have been confusing to Complainant (especially since Complainant may have been led to believe after the parties' 2012 correspondence that Respondent was not selling any goods on its website), Respondent explained that, when it transitioned to a new template for its blog in 2020 (because its old WordPress template was no longer working properly), the template included this "Shop" page, which is why it appears on Respondent's website. Respondent has submitted evidence that no goods were ever actually offered for sale through this page (that evidence includes five years of sales performance analytics showing that there were no sales and no sales revenue). Rather, Respondent explained, those listings use stock images based on the website developer's template, and Respondent has never turned on the shop functionality (indeed, the Panel has confirmed that none of the "add to cart" buttons are functional, and it does not appear possible to purchase any of the listed items). In any event, even if Respondent were selling items on its website, that would not vitiate its showing that, for purposes of the Policy, it has rights and legitimate interests under paragraphs 4(c)(i) ("before any notice to you of the dispute, your use of . . . the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services") and 4(c)(ii) ("you . . . have been commonly known by the domain name") of the Policy.¹ 

 

The Panel accordingly finds that Complainant has failed to prove by a preponderance of the evidence that Respondent lacks rights or legitimate interests in the Disputed Domain Name.

 

Registration and Use in Bad Faith

To prove bad faith registration, Complainant largely relies on its ownership of the registered mark and argues that Respondent had constructive notice of Complainant's mark because Complainant registered its mark before Respondent registered the Disputed Domain Name. Complainant also speculates that Respondent had actual knowledge given Complainant's notoriety and that the parties were competitors when Respondent registered the Disputed Domain Name.

 

Even though a registered trademark constitutes constructive notice under U.S. trademark law, that concept has generally not been incorporated into the UDRP as a basis to find bad faith registration. Akamai Technologies, Inc. v. Cloudflare Hostmaster / Cloudflare, Inc., FA2201001979588 (Forum March 9, 2022)("constructive knowledge is insufficient to demonstrate bad faith"). That is because a finding of bad faith under the Policy requires some element of knowledge, even if knowledge is inferred by the facts or established through willful blindness. The refusal to treat constructive notice as actual knowledge is especially appropriate here, where even actual knowledge would not necessarily have established bad faith. That is because Respondent, which is located in Chicago, explained that it coined the phrase "TheMidWasteland" nearly 20 years ago to combine the geographic focus of Respondent's cultural commentary—the Midwest—with the term "wasteland," to reflect the idea that the "Midwest's position in the center of the U.S. [is] often overlooked in discussions about fashion." For these reasons, Respondent explained, its mark was not infringing, but rather was an appropriate name for it to adopt for its blog. Furthermore, Respondent asserts, the parties are not competitors because the Disputed Domain Name has always been used by Respondent as a Chicago-based lifestyle media platform and never for retail services. On this record, the Panel credits Respondent's assertions. That Complainant has not challenged Respondent's use of "TheMidWasteland" name in the last 18 years as trademark infringement or under the Anticybersquatting Consumer Protection Act, even after having corresponded with Respondent about the name in 2012, further undermines Complainant's assertions in this proceeding that Respondent registered the Disputed Domain Name in bad faith.

 

Complainant also fails to meet its burden of showing that Respondent used the Disputed Domain Name in bad faith. To establish bad faith use, Complainant focuses on Respondent's alleged attempts to create confusion amongst Complainant's consumers by allegedly offering clothing retail services under the Disputed Domain Name. But, as described above, the Panel credits Respondent's evidence that it is not selling clothing nor providing clothing retail services through its website. Complainant therefore cannot show that Respondent is intentionally using the Disputed Domain Name in bad faith to compete against Complainant for commercial gain by creating a likelihood of confusion. To the contrary, Complainant's retail services and Respondent's blog appear to have coexisted in the marketplace without causing confusion for nearly two decades.

 

In sum, the Panel finds, on the record before it, that Complainant has failed to establish that Respondent registered and used the Disputed Domain Name in bad faith.

 

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <themidwasteland.com> domain name REMAIN WITH Respondent.

 

 

 

David H. Bernstein, Panelist

Dated: February 13, 2025