WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mimran Group, Inc. v. Kathy Silverstein and KAS
Case No. D2004-0566
1. The Parties
The Complainant is Mimran Group, Inc, Toronto, Ontario, of Canada, represented by Ian Lurie, United States of America.
The Respondent is Kathy Silverstein and KAS, located at West Palm Beach, Florida, United�States of America and, Montreal, Quebec, Canada.
2. The Domain Names and Registrars
The disputed domain name is registered with Tucows. The disputed domain name is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July�29,�2004. On July�30,�2004, the Center transmitted by email to Tucows and Network Solutions, LLC a request for registrar verification in connection with the domain named at issue. On July�30,�2004, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. On August�2,�2004, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on August�2,�2004. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August�4,�2004. In accordance with the Rules, paragraph 5(a), the due date for Response was August�24,�2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August�25,�2004.
The Center appointed Daniel Pe�a as the sole panelist in this matter on August�31,�2004. 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.
4. Factual Background
The Complainant owns the registrations for the trademark “ALFRED SUNG” in many countries around the world. The Complainant’s rights in several of the “ALFRED SUNG” trademarks “” pre-date the Respondent’s registration of the disputed domain name.
The Complainant’s registered trademarks include, amongst many others, the following
Registration Number
Registration Date
Expires on
Jurisdiction
416,257
September 3 1993
September 3 2008
Canada
493,878
May�1,�1998
May�1,�2013
Canada
00593285
July�24,�1997
July�24,�2007
European Community
349,487
January�24,�1997
Indonesia
3272328
March 12, 1997
March�12,�2007
Japan
347777
October 1,�1996
October 1,2006
Republic of Korea
579,962
June�29,�1998
May�6,�2008
Mexico
T94/07512H
August�29,�1994
August�29,�2004
Singapore
648,508
September�1,�1995
July�15,�2004
Taiwan, province of China
648,507
September�1,�1995
July�15,�2004
Taiwan, province of China
672,160
March�1,�1995
February�28,�2005
Taiwan, province of China
646,167
July�16,�1994
June�15,�2004
Taiwan, province of China
A1,493,172
March�5,�1992
March�5,�2009
UK
1,364,576
October�8,�1985
October�8,�2005
USA
2,192,791
September�29,�1998
September�29,�2008
USA
2,208,387
December�8,�1998
December�8,�2008
USA
The Complainant manufactures and distributes fashions and accessories with Alfred Sung trademark.
5. Parties’ Contentions
A. Complainant
Complainant holds ALFRED SUNG trademarks in 10 different jurisdictions, including the United States, Canada, the European Community, Mexico and Japan, for products including women’s apparel, men’s apparel, fragrances, bridal wear and accessories and bath goods. Respondent holds no trademark or other rights to the Alfred Sung name.
Respondent continues to hold both of these domains, but does not have permission from the Complainant to own or use them. One domain is pointed to a temporary site, but remains held and controlled by Respondent. The other is not pointed at any Alfred Sung site. In addition, Respondent was originally permitted to use as part of a license agreement. That agreement has ended, and Respondent is obligated to return control of that domain to Alfred Sung.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Given that the domain names and are not identical to the ALFRED SUNG trademark registered and used in several countries by the Complainant, the Panel must examine if both domain names are confusingly similar.
The inclusion of the expressions “bridesmaid” and “bridesmaids” as the final part of the domain names does not make a sufficient difference between the domain name and the Complainant’s trademarks. On the contrary, and considering the activities of the Complainant Alfred Sung, this Panel believes that the expressions included may confuse the public about the business origin, the quality of products or services, the title-holder of the domain name and, above all, the actual owner of the disputed domain name. B. Rights or Legitimate Interests
Respondent has not presented any evidence with respect to his legitimate interest to keep the ownership of the domain names. The fact of not replying to the Complaint within the term established by the Center and of not presenting any relevant evidence or response leads the Panel to consider that Respondent has no legitimate interests or rights to register and use the contested domain names. (Policy, 4(c)(i))
On the contrary, Complainant has stated and proved that it holds intellectual property rights that have been affected by the existence of the Respondent’s domain names. Such rights lead the Panel to believe that Respondent has no legitimate interests or intellectual property rights in the contested domain names thus complying with the second requirement of the Policy. (Policy, 4(c)) C. Registered and Used in Bad Faith
In accordance with the Rules for Uniform Domain Name Dispute Resolution Policy, the Panel shall examine whether bad faith existed at the time of registration and whether the use of the disputed domain name is also a bad faith use.
With regard to the domain name registration, the Panel considers that bad faith existed since the Respondent registered the domain names with knowledge of Complainant’s rights in the marks and mainly in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name (Policy, 4(b)(ii)). The fact that the Respondent registered the domain name with the permission of the Complainant does not prevent a finding of bad faith. In this case, the combination of the Respondent’s continued use after the license agreement was terminated, the registration of the second domain name in bad faith, and the lack of a legitimate use for the domain names leads the panel to infer that the original registration of the domain name was in bad faith.
Concerning the use of the disputed domain names, the Panel considers that the passive holding of a domain name can be seen as use in bad faith, in particular when there is no obvious legitimate use of the domain name. The fact that the domain name has been linked with a website related to Alfred Sung products is also considered as an evidence of registration and use in bad faith.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names and be transferred to the Complainant.
Daniel Pe�a
Sole Panelist
Dated: September�10,�2004
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