Pursuant to the UDRP, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) 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. UDRP, paragraph 4(a).
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires a complainant to prove that the disputed domain name is "identical or confusingly similar to a trademark or service mark in which [it] has rights."
Based on the information provided by Complainant, the Panel is convinced that Complainant has rights in the trademark SUBLIME DIRECTORY.
As to whether the Disputed Domain Name is identical or confusingly similar to the trademark SUBLIME DIRECTORY, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., "sublimedirectories"), as it is well-established that the top-level domain name (i.e., ".com") should be disregarded for this purpose. See, e.g., The Forward Association, Inc., v. Enterprises Unlimited, NAF Claim No. FA95491 ("[N]either the beginning of the URL (http://www.), nor the TLD (.com) have any source indicating significance. Those designations are merely devices that every Internet site provider must use as part of its address").
In this case, it is apparent that the relevant portion of the Disputed Domain Name is merely the plural form of the relevant trademark. Numerous prior decisions under the UDRP have found confusing similarity in such instances. See, e.g., Research In Motion Limited v. Georges Elias, WIPO Case No. D2009-0218 (finding "blackberries" in disputed domain names "virtually identical to the Complainant's [BLACKBERRY] mark"); Crown Trophy, Inc. v. PrivacyProtect.org / Pluto Domain Services Private Limited, WIPO Case No. D2009-0061 (finding <crowntrophies.com> confusingly similar to the trademark CROWN TROPHY); and Sally Holdings, Inc. v. Registrant, WIPO Case No. D2004-1059 (finding <sallysbeautysupplies.com> confusingly similar to the trademark SALLY BEAUTY SUPPLY).
Similarly here, the Panel concludes that the Disputed Domain Name <sublimedirectories.com> is confusingly similar to Complainant's SUBLIME DIRECTORY trademark and, accordingly, Complainant has proven the first element of the UDRP.
B. Rights or Legitimate Interests
Complainant alleges that, inter alia, "Respondent is making neither a legitimate nor a noncommercial or fair use of" the Disputed Domain Name because Respondent is using the Disputed Domain Name to "compete with Complainant by attracting internet traffic that was otherwise destined to arrive at <sublimedirectory.com>, but that is misdirected to the Respondent's website." The Panel confirms that the website using the Disputed Domain Name as shown in an exhibit to the Complaint indeed contains content related to adult entertainment, which is similar to content on Complainant's website using the domain name <sublimedirectory.com> and also among the services listed in Complainant's federal trademark registration for SUBLIME DIRECTORY.
Under the UDRP, "'a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP'." Christian Dior Couture v. Versata Software, Inc., WIPO Case No. D2009-0102 (quoting "WIPO Overview of WIPO Panel Views on Selected UDRP Questions", paragraph 2.1, http://arbiter.wipo.int/
Accordingly, as a result of Complainant's allegations and without any evidence of Respondent's rights or legitimate interests in the Disputed Domain Name, the Panel is satisfied that Complainant has proven the second element of the UDRP.
C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the UDRP may be determined by evaluating four (non-exhaustive) factors set forth in the UDRP: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant's documented out-of-pocket costs directly related to the domain name; (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant's website or location or of a product or service on the registrant's website or location. UDRP, paragraph 4(b).
Numerous prior decisions under the UDRP have found bad faith where, as here, the complainant has satisfied the first two elements of the UDRP and the disputed domain name is used in connection with a website that offers content similar to the goods or services associated with the complainant's trademark. See, e.g., Burlington Networks Inc. v. Tope Lawal, WIPO Case No. D2005-0974 ("[w]hile offering competitive services online is certainly not prohibited by the Policy, Respondent's further selection of a domain name containing Complainant's trademark is clearly evidence of bad faith"); Ticketmaster Corporation v. Woofer Smith, WIPO Case No. D2003-0346 ("Respondent's diversion of traffic to… a website offering goods and services competing with those of [complainant], is also indicative of bad faith pursuant to Sections 4(b)(iii) and (iv) of the Policy"); and Wal-Mart Stores, Inc. v. Whois Privacy, Inc., WIPO Case No. D2005-0850 (finding bad faith "where… links [on respondent's website] are apparently to competitive websites, especially when there is no indication that the links are not sponsored by or affiliated with the relevant trademark owner, such activity indicates bad faith under the Policy").
Accordingly, the Panel is satisfied that Complainant has proven the third element of the UDRP.
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