Paragraph 15 of the Rules states that the Panel shall decide a Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law deemed applicable.
In the case of default by a Party, Rule 14 states that if a Party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under the Rules, the Panel shall draw such inferences therefrom as appropriate.
In the present case, the Respondent has not submitted any Response and consequently has not contested any of the contentions made by the Complainant.
The Panel proceeds therefore to decide only on the basis of the Complainant’s factual statements and the documentary evidences provided in support of them.
1. The first issue in this case is whether the complaint can be consolidated against two Respondents, as requested by the Complainant.
The Complainant argues that the complaint should be consolidated on the basis that the disputed Domain Names are under the control of a single individual or entity or, at least, are under the common management of a group of individuals acting in concert.
Moreover, according to the Complainant, the following elements cumulatively demonstrate, on balance, that consolidation of all the disputed Domain Names is possible:
- same identity shield: PrivacyGuardian.org;
- same lay-out of the websites corresponding to the domain names;
- same extension of the domain names;
- same registrar, i.e. NameSilo LLC;
- same hosting provider, i.e. Inter Connects Inc.
- same IP address 5.157.60.210;
- month and year of the registrations: June 2018;
- the Name Servers: NS1.DNSOWL.COM/NS2.DNSOWL.COM/NS3.DNSOWL.COM
Despite that the two disputed Domain Names were registered with the same registrar, NameSilo LLC, and use the same top level domain, “.com”, the Panel considers that situation as such does not establish a common control between those two Domain Names.
However, the Panel accepts the Complainant’s arguments and agrees that the similarities between the two websites in question and the fact that the disputed Domain Names have the same IP address and were registered on almost the same date, are sufficient enough to establish, on the balance of probabilities, that those Domain Names are under the common control.
Therefore, the Panel finds that all the above-mentioned factors in their conjunction are sufficient to establish a common control between the Domain Names and that the consolidation represents procedurally more efficient solution of this case for both parties.
Based on the above mentioned, the Panel determines that the dispute in respect of the Domain Names <todsayakkabi.com> and <todsau.com> can be consolidated within this proceeding.
2. The Complainant is owner of a considerable number of trademarks whose common distinctive element is a particle “TOD’S”, which does not have any known meaning. Besides the EU protection, the trademarks “TOD’S” have been registered by the Complainant in various non-EU countries, including Turkey and Australia.
The first disputed Domain Name <todsayakkabi.com> comprises of the distinctive element “TOD’S” which is followed by a Turkish word “-“ayakkabi" and the Top-Level domain “.com”.
The word “ayakkabi” means “shoes”, therefore represents a non-distinctive element with regard to the goods that are offered for sale on the Domain Name’s website <todsayakkabi.com>.
The second disputed domain name <todsau.com> comprises of the distinctive element “TOD’S” which is followed by the country indicative “AU”, referring to Australia, and the Top-Level domain “.com”.
Since the Complainant’s trademark “TOD’S” is fully comprised within the disputed Domain Names that the additional elements have lower degree of distinctiveness, the Panel considers that the Domain Names are confusingly similar to Complainant’s previously registered trademarks.
The Panel accordingly concludes that paragraph 4(a)(i) of the Policy is satisfied.
3. The Respondents are not in anyway related to the Complainant's business, and are not the agents of the Complainant. The Respondents are not currently known and have never been known as “TOD’S”, or any combination of this trademark.
The websites the Domain Names are currently associated with promote and offer for sale exactly the same goods as the Complainant’s goods. However, the Complainant has not granted any license or authorization to any of the Respondents to make any use, or apply for registration of the trademarks “TOD’S” or to distribute its products. Therefore, such active use of the name “TOD’S” in connection with the Complainant’s goods does not constitute a legitimate interest in the disputed Domain Names.
Consequently, and in the absence of a Response, the Panelist finds that the Respondents have no rights or legitimate interests in the disputed domain names, so that the requirements of paragraph 4(a)(ii) of the Policy are met.
4. As to the bad faith at the time of the registration, the Panel finds that, in light of the distinctiveness of the Complainant’s trademarks with which the disputed Domain Names are confusingly similar, and due to the worldwide presence of the Complainant’s business known under the name “TOD’S”, the Respondent were more likely to be aware of the Complainant’s trademarks at the time of the registration of the disputed Domain Names.
Furthermore, the Complainant notes that the disputed Domain Names result in the webpages in which the counterfeit goods are sold. It is, however, well established that the Panelist does not evaluate the content of the webpages to which the disputed Domain Names are connected, but rather assess whether the registration and use of them comply with the Policy and the Rules.
Bearing in mind these circumstances, the Respondents can be deemed to have registered the Domain Names for obtaining commercial gain without a just cause and to the detriment of the Complainant’s Intellectual Property Rights.
Under such circumstances, the Panel finds that the disputed Domain Name was registered in bad faith.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy.
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