WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
M. Wile & Company Inc. d/b/a Exclusively Misook v. Standard Tactics LLC
Case No. D2007-1469
1. The Parties
The Complainant is M. Wile & Company Inc. d/b/a Exclusively Misook, New York, New York, United States of America, represented by Reed Smith LLP, New York, New York, United States of America.
The Respondent is Standard Tactics LLC, Santa Fe, New Mexico, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 4, 2007. On October 9, 2007, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the domain name at issue. On October 9, 2007, GoD, Inc. transmitted by email to the Center its verification response. On October 16, 2007, the Center sent a notification of a change in registrant information and, from October 16, 2007, through October 25, 2007, had communications with the Respondent, which confirmed that the Respondent is listed as the registrant and providing the contact details. In response to the notification of change in registrant information, the Complainant filed an amendment to the Complaint on November 3, 2007. 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 November 13, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 3, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 4, 2007.
The Center appointed Dennis A. Foster as the sole panelist in this matter on December 17, 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
The Complainant is a United States of America company that has been marketing women’s apparel throughout the United States since January 1994 under the trademark, EXCLUSIVELY MISOOK, which is registered with the United States Patent and Trademark Office (the “USPTO”) (Registration No. 3306091; October 9, 2007). “Misook” is the first name of a person or character, Misook Doolittle.
The Respondent is listed as the registrant of the disputed domain name and the record of registration was created on November 18, 2005. The Respondent is using the disputed domain name to provide links to third parties who sell products similar to those sold by the Complainant.
5. Parties’ Contentions
A. Complainant
The Complainant has made continuous use of the trademark, EXCLUSIVELY MISOOK, in connection with marketing of women’s apparel since January 1994. The Complainant has two USPTO registrations of its mark (Registration No. 2207191, December 1, 1998; Registration No. 3306091, October 9, 2007).
The Complainant sells its products throughout the United States of America, and its mark enjoys a reputation for high quality goods. The Complainant has spent considerable time, money and other resources in establishing extremely valuable goodwill in said mark.
At the website found at the disputed domain name, the Respondent advertises products that compete directly with those sold by the Complainant. Moreover, the Respondent’s website also features an image of Misook Doolittle, the public face of the Complainant.
The disputed domain name, , is effectively identical to the Complainant’s trademark, EXCLUSIVELY MISOOK. Internet users are likely to confuse the disputed domain name with the mark and erroneously believe that there is some affiliation between the name and the Complainant.
The Respondent, a former purchaser of the Complainant’s products with no other connection to the Complainant, has no rights or legitimate interests in the disputed domain name. The Respondent is not making a noncommercial or fair use of the name.
The Respondent registered and is using the disputed domain name in bad faith. Its reselling of the Complainant’s wares is intentionally diverting potential customers away from the Complainant as well as tarnishing the Complainant’s trademark.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with Paragraphs 4(a)(i)-(iii) of the Policy, the Complainant may prevail in this administrative proceeding and obtain a transfer of the disputed domain name, , by establishing the following:
- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name was registered and is being used by the Respondent in bad faith.
A. Identical or Confusingly Similar
The Complainant has presented the Panel with evidence of a valid use going back years for its claimed trademark, EXCLUSIVELY MISOOK. Such evidence is sufficient for the Panel to conclude that the Complainant has the requisite rights in that trademark for the purposes of paragraph 4(a)(i) of the Policy. See Reebok International Limited v. Shaydon Santos, NAF Case No. FA565685; and Ticketweb Inc. v. Domains Ventures, NAF Case No. FA654538 (April 20, 2006) (“Complainant’s registration of its TICKETWEB trademark with the USPTO establishes its rights in the mark pursuant to Policy paragraph 4(a)(i).”)
The disputed domain name, , contains the term “misook” found in the Complainant’s trademark, but excludes the word “exclusively” and includes the word “clothing”. Therefore, the Panel cannot find that the domain name at issue is identical to the Complainant’s trademark. However, a similarity is undeniable because the most distinctive piece of the mark, MISOOK, resides in the name. Moreover, the deletion of the word “exclusively” is reduced in significance because it is an adverb that serves only to modify the principal and distinctive term “Misook”. See Eltec Elektronik AG v. Eltec Domain Hostmaster,WIPO Case No. D2000-0406 (July 2, 2000) (where the panel found the disputed domain name, , to be confusingly similar to the trademark, ELTEC ELEKTRONIK MAINZ, because the descriptive words “elektronik” and “Mainz” were found to merely modify the distinctive term “Eltec”). Furthermore, the addition of the word “clothing” may increase and not decrease confusion between the name and the mark because the business of the Complainant is to sell clothing. See, for example, Caterpillar Inc. v. Roam the Planet, Ltd.,WIPO Case No. D2000-0275 (March 25, 2000) (“…the addition of the word “machines” as a suffix to the word “cat” in the domain name under consideration does not serve to distinguish the domain name from the trademark CAT, but rather would reinforce the association of the Complainant’s trademark with its primary line of products.”); and Gillette Company. v. RFK Associates, NAF Case No. FA492867 (July 28, 2005). The Panel is easily persuaded that an Internet user looking to find the Complainant’s merchandise on-line might be confused into believing that related to that merchandise because of the similarity between that domain name and the mark, EXCLUSIVELY MISOOK. Therefore, the Panel concludes that there is confusing similarity between the disputed domain name and the Complainant’s trademark.
As reasoned above, the Panel finds that the Complainant has sustained its burden to prove that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
Having established its rights in a trademark that is confusingly similar to the disputed domain name, the Complainant makes a prima facie case that the Respondent has no rights or legitimate interests in that name by asserting that the Respondent has no connection with the Complainant beyond being a former purchaser of the Complainant’s products. It then falls upon the Respondent to rebut this prima facie case. See Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270 (June 6, 2000); and AOL LLC v. Jordan Gerberg, NAF Case No. FA780200 (September 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”)
Because the Respondent has not filed a Response, the Panel, accepting the Complainant’s reasonable assertions as true, must determine whether there is anything elsewhere in the record of these proceedings to assist the Respondent with its burden of rebuttal. However, using paragraph 4(c) of the Policy as a guide to possible arguments in the Respondent’s favor, the Panel finds no help for the Respondent in that record. First, there is no evidence whatsoever that the Respondent or a company owned by the Respondent has been known by a moniker resembling the disputed domain name. Furthermore, accepting the Complainant’s contention that the Respondent is presently using the domain name in question to sell the Complainant’s goods as well as competing products, the Panel determines that noncommercial or fair use of the name is inapplicable as a rationale to support the Respondent’s position. Finally, the Panel is in agreement with prior UDRP panels that such use of a disputed domain name as is alleged by the Complainant does not constitute a “bona fide offering of goods or services” per paragraph 4(c)(i). See, for example, Robert Bosch GmbH v. Asia Ventures, Inc.,WIPO Case No. D2005-0946 (November 2, 2005) (“The use of the Complainant’s trademark to offer for sale or to direct customers to the products of the Complainant’s competitors is objectionable, and therefore not bona fide…”); and TM Acquisition Corp. v. Sign Guards a/k/a William Moore, NAF Case No. FA132439 (December 31, 2002).
Accordingly, the Panel rules that the Complainant has met its burden of proof by demonstrating that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
In paragraph 4(b)(iv), the Policy lists a circumstance that, if found by the Panel, compels a finding of bad faith registration and use of a disputed domain name as follows: by using the [disputed] domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] website or location or of a product or service on [the Respondent’s] website or location.
In this case, the Complainant has submitted the reasonable contention, which the Panel accepts, that the Respondent is intentionally using the disputed domain name for a website that offers, for the Respondent’s gain, to resell the Complainant’s products as well as to sell competing goods marketed by third parties. Thus, having noted above the strong likelihood of consumer confusion regarding the website found at the disputed domain name and its relationship with the Complainant’s trademark and merchandise, the Panel concludes that the circumstance cited above is fully satisfied with respect to the case at hand.
Therefore, the Panel finds that the Complainant has succeeded in showing that the disputed domain name was registered and is being used by the Respondent 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 name, , be transferred to the Complainant.
Dennis A. Foster
Sole Panelist
Dated: December 31, 2007
Full & Egal Universal Law Academy