The Complainant is NM Nevada Trust of Dallas, Texas, United States of America, represented by Bryan Cave, LLP, United States of America.
The Respondent is Huili Zhang of Shang hai, China. 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 September 2, 2010. On September 2, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On September 3, 2010, GoD, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 September 8, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 28, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 29, 2010.
The Center appointed Stefan Abel as the sole panelist in this matter on October 7, 2010. 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, NM Nevada Trust, is a Massachusetts business trust with a principal place of business in Las Vegas, Nevada, United States of America. The Complainant owns and licenses to Bergdorf Goodman, Inc. the BERGDORF GOODMAN trademark and trade name, which is used for retail business as well as a wide variety of apparel, accessory and bath and body products. The Complainant operates a Bergdorf Goodman retail store located in New York City, and reaches customers via its Bergdorf Goodman mail order catalogs and its website, accessible at .
The Complainant and its associated entities also own a variety of additional relevant domain names, with additives to the domain name or slightly different spelling, e.g. , , .
The Complainant is the registered owner of a number of trademarks in different countries consisting of the elements BERGDORF GOODMAN. In particular, the Complainant owns the Chinese trademark No. 3013771 BERGDORF GOODMAN filed for registration on November 08, 2001 for goods of the International Class No. 25 (clothing). The Complainant also owns a number of United States (U.S.) trademarks BERGDORF GOODMAN, such as US trademark No. 674632 filed for registration on April 19, 1957 for the goods of the U.S. Class 039 (Ladies’ coats, suits, and dresses), No.1902799 filed on January 10, 1994 for goods and services of the International Class No. 025 (full line of men’s and women’s apparel) and Class No. 042 (retail department store services; mail order services in the field of apparel and accessories). Furthermore, the Complainant owns, among others, the U.S. word mark BERGDORF GOODMAN No. 992733 filed for registration on August 20, 1973 for the U.S. Class 101 (Retail specialty department store services). In addition to the U.S. and Chinese trademarks, the Complainant owns several BERGDORF GOODMAN trademarks in Canada, Paraguay, Columbia, Japan and in Europe.
The domain name was registered by the Respondent on December 20, 2009. The website of the disputed domain name is a commercial search portal website with links to third party commercial websites in English language, in particular links to websites of online department store retailers offering clothing and accessories as well as other retail and service-oriented websites. 5. Parties’ Contentions A. Complainant
In summary, the Complainant’s contentions are as follows:
The Complainant owns the world-famous BERGDORF GOODMAN trademark and trade name, which has been used for over 100 years in connection with retail services, clothing, and a host of related goods and services. BERGDORF GOODMAN is one of the most successful and prestigious specialty retailers in the United States and around the world. As a result of the long and extensive use of the trademark and trade name for over a century, as well as spending tens of millions of dollars in advertising and promotions, BERGDORF GOODMAN has acquired an extremely valuable goodwill and reputation worldwide among consumers and professionals in the fashion and retail community.
The disputed domain name wholly incorporates and is thus confusingly similar to the Complainant’s trade name and trademarks BERGDORF GOODMAN.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. For instance, the Respondent is not in any way associated with the Complainant and has never sought nor received authorization or a license to use the Complainant’s BERGDORF GOODMAN marks in any way or manner.
The Respondent registered and is using the disputed domain name in bad faith, in direct violation of the paragraphs 4(b)(i), (iii) and (iv) of the Policy.
The Respondent is intentionally attempting to divert, for commercial gain, Internet users to one or more competing websites, some of which are third party “sponsors”, in an effort to confuse and mislead consumers.
The link at the top of the website of the disputed domain name “Want to buy this domain?” indicates that the disputed domain name was acquired for the purpose of selling or otherwise transferring it to the Complainant or to a third party for valuable consideration, no doubt in excess of its reasonable registration costs.
The Respondent’s conduct is designed to disrupt and harm the Complainant’s business in terms of consumer confusion, lost sales and goodwill. The Respondent has absolutely no legitimate trademark, service mark or intellectual property rights in or to the disputed domain name, and the Respondent’s domain name has no connection to particular products or services. The Complainant has made a long and continuous use of its trade name and registered trademarks, so that the Respondent plainly knew the Complainant’s BERGDORF GOODMAN marks when registering the disputed domain name.
The Respondent has registered a variety of illegal domain names incorporating well-known marks of various companies, organizations and famous individuals, many in the apparel retail industry. Finally, the Respondent has used a “private registration company in order to hide its true identity and contact details which is a further indication for bad faith.
The Complainant requested the disputed domain name be transferred from the Respondent to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Policy provides for transfer of the domain name if the Complainant establishes each of the following elements set out in paragraph 4(a)(i) to (iii) of the Policy.
- The Respondent’s 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 domain name; and
- the domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out circumstances which, in particular but without limitation, shall be evidence of registration and use of the domain name in bad faith. A. Identical or Confusingly Similar
The Complainant has established that it is the registered owner of various “BERGDORF GOODMAN” trademark registrations. This Panel finds that the disputed domain name is confusingly similar to these trademarks since the Complainant’s trademark and the disputed domain name are phonetically identical. From a visual and conceptual point of view there is a high degree of similarity as the only difference between the disputed domain name and Complainant’s trademark is the space in Complainant’s trademark between the elements “bergdorf” and “goodman”.
This finding is consistent with various previous Panel decisions (W, Inc. v. Zvieli Fisher,WIPO Case No. D2000-0614; Pomellato SpA v. Richard Tonetti,WIPO Case No. D2000-0493; The Nasdaq Stock Market, Inc. v. Jon Steinsson, WIPO Case No. D2002-0571).
The Complainant has therefore established the first element of the test in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
There is no indication that the Respondent is licensed or otherwise authorized by the Complainant to use its trademarks or to register the disputed domain name.
The disputed domain name does not have any direct generic or descriptive meaning in English, the language of the website at the disputed domain name.
Bergdorfgoodman is not used as a designation of a person, company, services or products on the website of the disputed domain name.
By producing evidence on these circumstances, the Complainant has established a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name. The burden of submitting evidence therefore shifts to the Respondent. The Respondent must then, by concrete evidence, demonstrate its rights or legitimate interests in that domain name in order to refute the prima facie case. The Respondent has made no such showing.
The Panel finds that the Respondent’s default in refuting the prima facie case made by the Complainant is sufficient here to establish this element of the Policy. It is often an impossible task for the Complainant to prove a negative that is primarily within the knowledge of the Respondent such as lack of rights or legitimate interests in a domain name. Producing evidence that the Respondent prima facie has no rights or legitimate interests in the disputed domain name may therefore be regarded as sufficient to establish the requirement of paragraph 4(a)(ii) of the Policy if the Respondent fails to rebut the prima facie case. This finding is consistent with the consensus in previous WIPO decisions (see e.g. Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110). C. Registered and Used in Bad Faith
The Panel finds that the Complainant has established this element in accordance with paragraph 4(b)(iv) of the Policy for the following reasons:
The Panel finds that, by using the disputed domain name for a set of links to commercial websites for the promotion of clothing, accessories and related products and retail services, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s BERGDORF GOODMAN trademark as to source, sponsorship and affiliation of the website.
The Complainant’s trademark and the domain name are highly similar, if not identical. In addition to that, the Respondent’s website provides primarily links to other websites providing clothing, accessories and related products and retail services. Internet users are therefore likely to get the idea that the Respondent’s site of the disputed domain name is an official site of the Complainant sponsored by the Complainant or affiliated with the Complainant. Such likelihood of confusion may attract more customers to the site of the disputed domain name which would in turn result in commercial gain as the Respondent’s site provides links to numerous commercial websites.
The Panel finds that the Respondent acted intentionally. It is not conceivable to the Panel that the Respondent could have registered the disputed domain name without having the Complainant’s BERGDORF GOODMAN trademarks in mind. The Respondent’s intention to use the disputed domain name as a reference to the Complainant and its trademarks is obvious considering that no rights or legitimate interests in using the domain name are apparent and considering that the Complainant’s trademark has been intensively used in the Internet and registered not only in the United States but also in China, the country where the Respondent is located, years before the registration of the disputed domain name. 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.
Stefan Abel
Sole Panelist
Dated: October 21, 2010
Full & Egal Universal Law Academy