WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wrangler Apparel Corp. v. Spiral Matrix , NOLDC Inc.
Case No. D2007-0536
1. The Parties
The Complainant is Wrangler Apparel Corp., Wilmington, Delaware, United States of America, represented by Greenberg Traurig, LLP, United States of America.
The Respondent is Spiral Matrix , Eldoret, Kenya; NOLDC Inc, New Orleans Louisiana, United States of America.
2. The Domain Names and Registrar
The disputed domain names and are registered with Intercosmos Media Group d/b/a directNIC.com
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April�6,�2007. On April�11,�2007, the Center transmitted by email to
Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain names at issue. On April�11,�2007 Intercosmos Media Group d/b/a directNIC.com 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 and technical contact. The Center verified that 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 April�20,�2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May�10,�2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May�11,�2007.
The Center appointed James McNeish Innes as the sole panelist in this matter on May�23,�2007. 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
(i) The Complainant is a leader in the design, marketing and distribution of brand apparel, shoes and accessories under its WRANGLER marks and owns numerous valid and subsisting United States trademark registrations and applications (in addition to many more non-United States trademark registrations) for the marks WRANGLER, WRANGLER JEANS CO., WRANGLER RUGGED WEAR and various composite marks including the mark WRANGLER, some of which have become incontestable for a broad range of goods, including apparel, shoes, accessories and lifestyle products.
(ii) The Complainant has used WRANGLER trademarks in commerce continuously since 1929 for a range of goods and services, and has expended hundreds of millions of dollars to advertise and market its “Wrangler” products, resulting in sales of billions of dollars’ worth of goods bearing the WRANGLER trademarks. The Complainant also has numerous domain names incorporating its WRANGLER trademarks, including , which was registered on September�4,�1995, and , registered on July�29,�1999. All of the registrations are valid and subsisting as demonstrated by the record.
(iii) The Respondent did not reply to the complaint. The domain name was registered on March�8,�2006 and the domain name was registered on July�15,�2005.
5. Parties’ Contentions
A. Complainant
The Complainant’s contentions include the following:
(i) Spiral Matrix and NOLDC are linked entities.
(ii) The Respondent registered the domain names many years after the Complainant’s WRANGLER trademarks had achieved worldwide fame and goodwill for the Complainant’s products.
(iii) There are a number of factors that link Spiral Matrix and NOLDC. First, the domain names at issue are all being used in the exact same “pay-per-click” manner and the websites have identical layouts. In addition, both entities have been named together in prior UDRP decisions, namely Dr. Ing. h.c. F. Porsche AG v. Kentech, Inc. a/k/a. Helois Lab a/k/a Orion Web a/k/a Titan Net a/k/a Panda Ventures a/k/a Spiral Matrix and Domain Purchase, NOLDC, Inc., WIPO Case No. D2005-0890 (October�24,�2005); American International Group Inc. v. Spiral Matrix, Titan a/ka Titan Net, NOLDC, Inc., WIPO Case No. D2006-0839 (October�8,�2006). Spiral Matrix, under a variety of aliases, has a history of registering trademark-related domain names which have been the subject of a number of URDP decisions.
(iv) The Respondent has been exploiting the Complainant’s WRANGLER trademarks as a way to generate revenue from “click-through” links which Respondent has on the websites as well as through click-through pop-up advertisements. It appears that the Respondent is engaged in a common scheme whereby it uses the famous WRANGLER trademarks to direct consumers to sites where the Respondent is paid a “per click” fee for any link which is used to access the sites connected to the link.
(v) The Respondent has a history of acquiring domain names that incorporate famous trademarks and use domains to misdirect Internet traffic to “pay-per-click” sites. Specifically, both Spiral Matrix and NOLDC have been found to have registered and used domain names in bad faith in prior panel decisions under the UDRP on activity virtually identical to those in the case at hand. In 2006, Respondent was involved in numerous UDRP proceedings, including but not limited to, The Sutton Corporation v. Spiral Matrix, WIPO Case No. D2006-0167 (March�29,�2006); Cr�dit Industriel et Commercial S.A. and Conf�d�ration Nationale du Cr�dit Mutuel v. Spiral Matrix, WIPO Case No. D2006-0271 (April�23,�2006), and Educational Testing Service (“ETS”) v. Spiral Matrix, WIPO Case No. D2006-0505 (June�6,�2006).
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to Paragraph 15(a) of the Rules the Panel shall decide a Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) 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
(ii) That the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) That the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Two separate issues fall for consideration. (1) Does the Complainant have rights in the marks and (2) are the domain names identical or confusingly similar to any such marks. On the record the Complainant has established rights in its marks and registrations. It has also demonstrated continued commercial usage since 1929.
The Complainant argues in its own words that the domain name is identical or confusingly similar to its marks for the following reasons:
“The domain names currently used by Respondents are confusingly similar to Complainant’s famous WRANGLER trademarks. Complainant’s registered trademarks through the United States Patent and Trademark Office are prima facie evidence of their validity, which creates a rebuttable presumption that Complainant’s marks are inherently distinctive. Janus Int’l Holding Co. v. Rademacher, WIPO Case No. D2002-0201 (March�5,�2002).
Respondents simply add a generic word to Complainant’s famous WRANGLER Trademarks to create the domain names at issue. Under the UDRP, the addition of descriptive matter in a domain name is not enough to avoid the likelihood of confusion. U-Haul International, Inc. v. Affordable Web Productions, WIPO Case No. D2003-0511 (August�18,�2003). It is a well-established principle that descriptive or generic additions, and particularly those which designate the goods or services with which a mark is used, do not avoid confusing similarity of domain names and trademarks (as held in, inter alia, Time Warner Entertainment Company L.P. V. HarperStephens, WIPO Case No. D2000-1254 (December�20,�2000), concerning over 100 domain names including ). See also Yahoo! V. Zuccarini, WIPO Case No. D2000-0777 (October�4,�2000) (where the panel found that the registration and use of multiple domain names incorporating the distinctive and famous YAHOO!, YAHOOLIGANS! and GEOCITIES marks, together with generic words such as ‘chat’ and ‘financial’ to be confusingly similar to Complainant’s marks and likely to mislead Internet users into believing the products and services offered by respondents are being sponsored or endorsed by YAHOO! or Geocities, given the similarity of the names and products and services offered). In the present case, Respondents’ addition of the descriptive terms “western wear” to the domain name and “jeans company” to increases the likelihood of confusion with Complainant because these additions relate directly to Complainant’s widely known core business in retail clothing and accessories. It is precisely because of this association by consumers with Complainant’s WRANGLER trademarks that Respondents sought to register the domain names.
Furthermore, the addition of the generic top-level domain “.com” is irrelevant in determining whether the disputed domain names are confusingly similar to Complainant’s famous WRANGLER Trademarks. See Pomellato S.p.A. v. Tonetti, WIPO Case No. D2000-0493 (July�12,�2000), Sony Kabushiki Kaisha v. Inja, Kil, WIPO Case No. D2000-1409 (December�9,�2000). As such, Complainant has satisfied the first element of the Policy that Registrants’ domain names are identical or confusingly similar to Complainant’s WRANGLER trademarks.”
The Panel accepts the Complainant’s contentions. The disputed domain names are confusingly similar to the Complainant’s trademarks. The Panel finds that Paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
Paragraph 4 (c) of the Policy provides that any of the following circumstances in particular but without limitation if found by the Panel to be proved based upon its evaluation of the evidence presented shall demonstrate a Respondent’s rights or legitimate interests in the domain name for the purpose of Paragraph 4(a)(ii):
(i) before any notice to you [respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not submitted a Response and has failed to invoke any circumstance which could have demonstrated any rights or legitimate interests. There is no independent evidence of any circumstances which could have demonstrated any rights or legitimate interests on the part of the Respondent. The Panel finds that the Respondent has no rights or legitimate interests in the domain name. The Panel finds that Policy, Paragraph 4(a)(ii) has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy contains the following provisions “Evidence of Registration and Use in Bad Faith”. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark form reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the endorsement of your Website or location or of a product or service on your website or location.
The Respondent has made no response in this connection. The Complainant has made contentions that would lead to the situation mentioned in Paragraph 4(b)(iv). The Panel accepts the Complainant’s assertion that the Respondent has attempted to attract users to its website by creating a confusion with the Complainant’s marks. The Panel finds that Policy, Paragraph 4(a)(iii) has been satisfied.
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.
James McNeish Innes
Sole Panelist
Date: June 6, 2007
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