WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kate Spade, LLC v. Darmstadter Designs
Case No. D2001-1384
1. The Parties
1.1 The Complainant is Kate Spade, LLC, a limited liability company, having its principal place of business at 48 West 25th Street, 4th Floor, New York, New York, United States of America.
1.2 The Respondent is Darmstadter Designs, an entity having an address at 2711 S. Medford, Suite B, Lufkin, Texas, United States of America.
2. The Domain Name and Registrar
The domain name at issue is , which domain name is registered with Network Solutions, Inc., based in Herndon, Virginia, United States of America.
3. Procedural History
3.1 A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on November 21, 2001, and the signed original together with four copies forwarded by express courier was received on November 23, 2001. The WIPO Center sent the Complainant an Acknowledgment of Receipt, dated November 23, 2001.
3.2 On November 26, 2001, a Request for Registrar Verification was transmitted to the registrar, Network Solutions, Inc. ("NSI") requesting it to: (1) confirm that the domain name at issue is registered with NSI; (2) confirm that the person identified as the Respondent is the current registrant of the domain name; (3) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) available in the registrar�s Whois database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact; (4) confirm that the Uniform Domain Name Dispute Resolution Policy (the "Policy") is in effect; (5) indicate the current status of the domain name.
3.3 On December 5, 2001, NSI confirmed by reply e-mail that the domain name at issue is registered with NSI, is currently in active status, and that the Respondent is the current registrant of the name. The registrar also forwarded the requested Whois details, and confirmed that the Policy is in effect.
3.4 The WIPO Center determined that the Complaint satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Policy, the Uniform Rules, and the Supplemental Rules. The required fees for a single-member Panel were paid on time and in the required amount by the Complainant.
3.5 No formal deficiencies having been recorded, on December 6, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, NSI and ICANN), setting a deadline of December 26, 2001, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by courier and by e-mail to the e-mail addresses indicated in the Complaint. In any event, evidence of proper notice is provided by the evidence in the record of the Respondent�s participation in these proceedings.
3.6 A Response was received on December 27, 2001. On December 27, 2001, the WIPO Center transmitted an Acknowledgment of Receipt of Late-Filed Response, stating that consideration of the Response would be at the Panel's discretion.
3.7 On December 28, 2001, having received M. Scott Donahey�s Statement of Acceptance and Declaration of Impartiality and Independence, the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which M. Scott Donahey was formally appointed as the Sole Panelist. The Projected Decision Date was January 11, 2002.
4. Factual Background
4.1 Complainant filed for the registration of the trademark JACK SPADE with the United States Patent and Trademark Office ("USPTO") on January 2, 1997. The registration issued on April 11, 2000, and showed a first use in commerce on November 1, 1998. Complaint, Annex D.
4.2 Complainant has used the JACK SPADE mark in connection with handbags, all-purpose carrying bags, tote bags, traveling bags, shoulder bags, all-purpose athletic bags, backpacks and wallets. These products are directed toward men.
4.3 Complainant is known for similar products intended for women and sold under its KATE SPADE trademarks. These products have been the subject of much comment and have won awards.
4.4 Goods bearing Complainant's JACK SPADE trademark have received distribution and the value of such goods exceeds U.S.$1.2 million. In June 2001, one of the principals of Complainant was nominated for a design award in conjunction with the JACK SPADE line of accessories. The JACK SPADE line of products is offered for sale in retail outlets, through retail catalogs, and on the World Wide Web. Complaint, Annex F.
4.5 On February 24, 1999, Respondent registered the domain name at issue. Complaint, Annex A.
4.6 Respondent is a computer Value-Added Reseller, focused on computer system implementations.
4.7 Respondent has not used the domain name to resolve to a web site.
4.8 Respondent indicated that he chose the name at issue because it was the nickname of Respondent's best friend from college who died due to an idiopathic lung and heart failure. This late friend had loved card tricks, and especially one that used the Jack of Spades, which served as the inspiration for his nickname. Respondent's intention is to use the domain name at issue to resolve to a web site that would collect card tricks.
4.9 On July 15, 1999, September 21, 2000, and September 28, 2001, counsel for Complainant wrote Respondent cease and desist letters, demanding that Respondent transfer the domain name at issue to Complainant. Complaint, Annexes E, F, and J. Complainant's counsel also made several telephone calls to Respondent, leaving voice mail messages on at least two occasions. Complainant alleges that it never received any response from Respondent.
4.10 Respondent acknowledges having received two of the letters in question, and alleges that Respondent's principal telephoned Complainant's counsel and left a voice mail message following receipt of the first letter. Respondent does not relate the content of the voice mail message left.
5. Parties� Contentions
5.1 Complainant contends that Respondent has registered a domain name that is identical to the trademark registered and used by Complainant, that Respondent has no rights or legitimate interests in respect of the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith.
5.2 Respondent contends that it registered the domain name at issue for the purpose of operating a not-for-profit informational web site.
6. Discussion and Findings
6.1 Paragraph 10(a) of the Uniform Rules gives the Panel broad discretion in the conduct of the proceeding. In the present case, the Panel elects to exercise its discretion and receive and consider the late-filed Response. Since the Response was late by only one day, there is no prejudice involved.
6.2 Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable."
6.3 Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
2) that the Respondent has no rights or legitimate interests in respect of the domain name; and,
3) that the domain name has been registered and is being used in bad faith.
6.4 It is clear that the domain name at issue is identical to the mark in which the Complainant has rights. Credit Management Solutions, Inc. v. Collex Resource Management, WIPO Case No. D2000-0029.
6.5 Respondent, while maintaining that it has an intent to use the mark for a non-profit, informational site, has made no use of the mark in the almost three years since its registration.
6.6 The Panel finds that Complainant has alleged that Respondent has no right or legitimate interest in respect of the domain name at issue. This shifts the burden to Respondent to show by concrete evidence that it has rights or legitimate interests in respect of the domain name at issue. See, e.g., Policy, � 4(c). Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270. "'Concrete evidence' constitutes more than mere personal assertions. . . . Evidence in the form of documents or third party declarations should be furnished in support of such assertions." Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624, at �� 6.12 and 6.14.
6.7 Respondent has failed to produce evidence sufficient to rebut Complainant's allegations. This entitles the Panel to conclude that Respondent has no such rights or legitimate interests in respect of the domain name at issue. Ronson plc v. Unimetal Sanayai ve Tic.A.S., WIPO Case No. D2000-0011; Parfums Christian Dior v. QTR Corporation, WIPO Case No. D2000-0023.
6.8 Respondent's conduct does not bring it squarely within any of the illustrations of bad faith registration and use set out in Paragraph 4(b) of the Policy. However such illustrations are not intended to be exhaustive. It has been established that under certain facts, inaction by the Respondent can constitute bad faith registration and use. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
6.9 Had Respondent done a trademark search at the time Respondent registered the domain name at issue, Respondent would have received notice of Complainant's pending application for registration. Respondent would also have seen that Complainant had used the mark in commerce for some six months. Since both parties are from the United States and since the trademark application and registration were made with the USPTO, it is fair to apply United States principles of constructive notice to this situation. Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028.
6.10 While a registrant should be given sufficient time to make preparations to use the registered name, the failure to make such preparations in almost three years since the registration of the domain name at issue, has been held to constitute bad faith registration and use. Chernow Communications v. Jonathan D. Kimball, WIPO Case No. D2000-0119.
6.11 Accordingly, the Panel finds that Respondent has registered and is using the domain name at issue in bad faith.
7. Decision
For all of the foregoing reasons, the Panel decides that the domain name registered by Respondent is identical to the mark in which the Complainant has rights, that the Respondent has no rights to or legitimate interests in respect of the domain name at issue, and that the Respondent's domain name has been registered and is being used in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name be transferred to the Complainant.
M. Scott Donahey
Sole Panelist
Dated: January 3, 2002
Full & Egal Universal Law Academy