PopularT-Shirt.com is a generic domain name but it ended up being pulled into a UDRP filed by Popular, Inc.
The Complainant is a United States company operating in the banking services field, owning several trademark registrations for POPULAR and it operates from the domain name Popular.com.
The Respondent operated a web site that attempted to sell popular t-shirts, which, to be fair, were rather cheesy, as seen in this capture.
So why would a domain that references “popular t-shirts” be chased for using the generic meaning of the keywords? 🤔
Very simple: The logo that the lazy designer used for the web site was lifted off the Complainant’s web site, infringing on the mark. The WIPO panelist stated:
“The Panel further notes that the disputed domain name is also being used in bad faith since the Respondent is resolving to a website in which the Complainant’s trademark and logo are reproduced, creating likelihood of confusion with the Complainant’s trademark as to source, sponsorship, affiliation, or endorsement.”
Final decision: Grant the transfer of PopularT-Shirt.com to the Complainant.
ARBITRATION AND MEDIATION CENTER – ADMINISTRATIVE PANEL DECISION
Popular, Inc. v. Le Huy Nang
Case No. D2024-23251. The Parties
The Complainant is Popular, Inc., United States of America (“United States”), represented by Cozen O’Connor, United States.
The Respondent is Le Huy Nang, Viet Nam.
2. The Domain Name and Registrar
The disputed domain name populart-shirt.com is registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 6, 2024. On June 10, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 11, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (GMO-Z.COM RUNSYSTEM) and contact information in the Complaint. The Center sent an email communication to the Complainant on June 11, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 17, 2024.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 20, 2024. In accordance with the Rules, paragraph 5, the due date for Response was July 10, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 18, 2024.
The Center appointed Edoardo Fano as the sole panelist in this matter on July 25, 2024. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties.
Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to [the] Respondent”. Therefore, the Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of a response from the Respondent.
The language of the proceeding is English, being the language of the Registration Agreement, as per paragraph 11(a) of the Rules.
4. Factual Background
The Complainant is Popular, Inc., a United States company operating in the banking services field, and owning several trademark registrations for POPULAR, among which:
– United States Trademark Registration No. 2,991,584 for POPULAR, registered on September 6, 2005;
– United States Trademark Registration No. 3,859,464 for POPULAR and design, registered on October 12, 2010;
– United States Trademark Registration No. 5,309,971 for POPULAR and design, registered on October 17, 2017.The Complainant also operates on the Internet, its main website being “www.popularbank.com”.
The Complainant provided evidence in support of the above.
According to the WhoIs records, the disputed domain name was registered on June 15, 2023, and it resolves to a website in which the Complainant’s trademark and logo are reproduced and t-shirts are purportedly offered for sale.
5. Parties’ Contentions
A. Complainant
The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.
Notably, the Complainant contends that disputed domain name is confusingly similar to its trademark POPULAR, as the disputed domain name wholly incorporates the Complainant’s trademark with the addition of the term “t-shirt”.
Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name, since it has not been authorized by the Complainant to register the disputed domain name or to use its trademark within the disputed domain name, it is not commonly known by the disputed domain name, and it is not making either a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. The disputed domain name resolves to a website in which the Complainant’s trademark and logo are reproduced and t-shirts are purportedly offered for sale.
The Complainant submits that the Respondent has registered the disputed domain name in bad faith, since the Complainant’s trademark POPULAR is distinctive and well known in the banking services field. Therefore, the Respondent targeted the Complainant’s trademark at the time of registration of the disputed domain name and the Complainant contends that the use of the disputed domain name to resolve to a website in which the Complainant’s trademark and logo are reproduced, creates the impression of a relationship between the Respondent and the Complainant and disrupts the Complainant’s business, qualifying as bad faith registration and use.B. Respondent
The Respondent has made no reply to the Complainant’s contentions and is in default. In reference to paragraphs 5(f) and 14 of the Rules, no exceptional circumstances explaining the default have been put forward or are apparent from the record.
A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, reasonable facts asserted by a complainant may be taken as true, and appropriate inferences, in accordance with paragraph 14(b) of the Rules, may be drawn. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.A. Identical or Confusingly Similar
It is well accepted that the first element functions primarily as a standing requirement. 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. WIPO Overview 3.0, section 1.7.
Based on the available record, the Panel finds the Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1.
The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.
Although the addition of other terms, here “t-shirt”, may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.
It is also well accepted that a generic Top-Level Domain, in this case “.com”, is typically ignored when assessing the similarity between a trademark and a domain name. WIPO Overview 3.0, section 1.11.1.
Based on the available record, the Panel finds the first element of the Policy has been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.
While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.
Having reviewed the record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. On the contrary, the use of the disputed domain name for resolving to a website in which the Complainant’s trademark and logo are reproduced is likely to create confusion with the Complainant’s trademark as to the disputed domain name’s source, sponsorship, affiliation, or endorsement.
Based on the available record, the Panel finds the second element of the Policy has been established.
C. Registered and Used in Bad Faith
The Panel notes that for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular but without limitation, that if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
In the present case, regarding the registration in bad faith of the disputed domain name, the reputation of the Complainant’s trademark POPULAR in the banking services field is clearly established, and the Panel finds that the Respondent must have known of the Complainant, and deliberately registered the disputed domain name in bad faith, especially because the disputed domain name resolves to a website in which not only the Complainant’s trademark but also the Complainant’s logo are reproduced.
The Panel further notes that the disputed domain name is also being used in bad faith since the Respondent is resolving to a website in which the Complainant’s trademark and logo are reproduced, creating likelihood of confusion with the Complainant’s trademark as to source, sponsorship, affiliation, or endorsement.
The above suggests to the Panel that the Respondent intentionally registered and is using the disputed domain name in order to attract Internet users to its website in accordance with paragraph 4(b)(iv) of the Policy.
Based on the available record, the Panel finds the third element of the Policy has been established.
7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name populart-shirt.com be transferred to the Complainant.
/Edoardo Fano/
Edoardo Fano
Sole Panelist
Date: August 5, 2024
