Decision for dispute CAC-UDRP-108898

The Panel is not aware of any other legal proceedings that are pending or decided and that relate to the Disputed Domain Name.

Complainant states, and provides documentation in support thereof, that it is the owner of EU Reg. No. 010074011 for SCANQUILT (registered December 2, 2011) for use in connection with, inter alia, mattresses; bed linen; and clothing and footwear (the “SCANQUILT Trademark”).

Complainant states that it “has used the SCANquilt designation in connection with the sale of home textiles and related goods since 1992”; and that it “operates its official online store at <scanquilt.cz>.”

The Disputed Domain Name was created on August 1, 2026, and, according to the Complaint (and as confirmed by screenshots submitted therewith), “the Respondent has used the disputed domain name to impersonate the Complainant and to operate an unauthorised and fraudulent copy of the Complainant’s official online store” by “reproduce[ing] or imitate[ing] the Complainant’s website, including product photographs, textes [sixc], logo, graphic design, product offer and other elements.”

Complainant contends, in relevant part, as follows:

Paragraph 4(a)(i): Complainant states that the Disputed Domain Name is identical or confusingly similar to the SCANQUILT Trademark because, inter alia, it “incorporates the Complainant’s SCANquilt trademark in its entirety and without any alteration.”

Paragraph 4(a)(ii): Complainant states that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Respondent is not affiliated with the Complainant and has never been authorised, licensed or otherwise permitted by the Complainant to use the SCANquilt trademark, register a domain name incorporating that trademark, or operate an online store under the SCANquilt name”; “the Respondent is not commonly known by the name ‘SCANquilt’ and holds no trademark or other legitimate rights in that designation”; and “[t]he disputed domain name has not been used in connection with a bona fide offering of goods or services or for any legitimate non-commercial or fair purpose” because “the Respondent has used the disputed domain name to impersonate the Complainant and to operate an unauthorised and fraudulent copy of the Complainant’s official online store.”

Paragraph 4(a)(iii): Complainant states that the Disputed Domain Name was registered and is being used in bad faith because, inter alia, “[c]onsidering that the disputed domain name consists exclusively of the distinctive SCANquilt trademark and that the associated website copies or closely imitates the Complainant’s official online store, the Respondent was clearly aware of the Complainant and its rights when registering the disputed domain name”; “Respondent intentionally selected the disputed domain name in order to create the false impression that the website was operated, authorised or endorsed by the Complainant”; and “[b]y using the disputed domain name in this manner, the Respondent has intentionally attempted to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant’s SCANquilt trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website and the goods or services offered through it.”

No administratively compliant response has been filed.

The Complainant has, to the satisfaction of the Panel, shown the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the complainant has rights (within the meaning of paragraph 4(a)(i) of the UDRP).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the Disputed Domain Name (within the meaning of paragraph 4(a)(ii) of the UDRP).

The Complainant has, to the satisfaction of the Panel, shown the Disputed Domain Name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the UDRP).

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

Identical or Confusingly Similar: Paragraph 4(a)(i)

The documentation provided by Complainant are sufficient to establish that Complainant has rights in the SCANQUILT Trademark.

As to whether the Disputed Domain Name is identical or confusingly similar to these trademarks, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “scanquilt”) because “[t]he applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.”  WIPO Overview 3.1, section 1.11.1.

Here, the Disputed Domain Name contains the SCANQUILT Trademark in its entirety.  As set forth in section 1.7 of WIPO Overview 3.1: “[I]n cases where a domain name incorporates the entirety of a trademark…, the domain name will normally be considered confusingly similar to that mark.”  Further, where, as here, a disputed domain name contains a complainant’s trademark, and only such trademark, “it is apparent without the need for elaboration, that the Disputed Domain Name is identical or confusingly similar to” the trademark, Société Air France v. Indra Armansyah, WIPO Case No. D2016-2027, because in such case “[t]he disputed domain name is obviously identical to the Complainant’s mark.”  Icebug AB v. Domain Administrator, WIPO Case No. D2013-1823.

Accordingly, the Panel finds that Complainant has proven the first element of the Policy. 

Rights or Legitimate Interests: Paragraph 4(a)(ii)

Complainant states that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Respondent is not affiliated with the Complainant and has never been authorised, licensed or otherwise permitted by the Complainant to use the SCANquilt trademark, register a domain name incorporating that trademark, or operate an online store under the SCANquilt name”; “the Respondent is not commonly known by the name ‘SCANquilt’ and holds no trademark or other legitimate rights in that designation”; and “[t]he disputed domain name has not been used in connection with a bona fide offering of goods or services or for any legitimate non-commercial or fair purpose” because “the Respondent has used the disputed domain name to impersonate the Complainant and to operate an unauthorised and fraudulent copy of the Complainant’s official online store.”

WIPO Overview 3.1, section 2.1, states: “Although 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.”

The Panel finds that Complainant has established its prima facie case and, without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the UDRP.

Registered and Used in Bad Faith: Paragraph 4(a)(iii)

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 paragraph 4(b) of 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; or (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; or (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.

By creating a website that appears to be a website for Complainant – by using Complainant’s trademark as the entirety of the Disputed Domain Name, by using Complainant’s logo on its website, and by reproducing images from Complainant’s website to purportedly sell the same products as Complainant – Respondent has quite obviously created a likelihood of confusion constituting bad faith pursuant to paragraph 4(b)(iv) of the Policy.  See, e.g., Emu (Aus) Pty Ltd. and Emu Ridge Holdings Pty Ltd. v. Antonia Deinert, WIPO Case No. D2010-1390 (“a reasonable person who visited the Respondent’s website was likely to be misled in relation to the source, sponsorship, affiliation, or endorsement of the website and the products purportedly made available for online sale on the website”); Golden Goose S.p.A. v. Ge Deng Gu Si Ge Deng Gu Si, Ge Deng Gu Si, WIPO Case No. D2017-0067 (finding bad faith based on “Respondent’s unauthorized reproduction of images from the Complainant’s advertising campaign and websites on the Respondent’s website, and the prominent use of the Complainant’s trademarks and logos” to offer footwear for sale); and Clearwire Communications LLC v. Yvan Edwards, WIPO Case No. D2010-1440 (“Respondent is using the mark at issue to resolve to a web site at which… Complainant’s logo and marks are prominently displayed such that a user would believe that he was on a web site sanctioned by Complainant”).

Accordingly, the Panel finds that Complainant has proven the third element of the Policy.