The Complainants are Wacoal Corporation of Kyoto, Japan and Wacoal America, Inc. of Lyndhurst, New Jersey, United States of America, represented by Morrison & Foerster, LLP, United States of America (“the Complainants”).
The Respondent is PrivacyP of the Netherlands / n/a Ruslan Biletsky of Ukraine (“the Respondent”). 2. The Domain Name and Registrar
The disputed domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR (“Directi”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 17, 2010. On September 17, 2010, the Center transmitted by email to Directi a request for registrar verification in connection with the disputed domain name. On September 27, 2010, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants’ representative on September 27, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. On the same date, the Center informed the Complainants that the Complaint was also administratively deficient.
The Complainants filed an amended Complaint on September 30, 2010.
The Center verified that the Complaint, together the amended 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 October 1, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 21, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 22, 2010.
The Center appointed David H. Tatham as the sole panelist in this matter on November 1, 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. Factual Background
The Complainants, with headquarters in Kyoto, Japan, are engaged in the design, manufacture, and distribution of intimate apparel, including undergarments. They own numerous trademark registrations for WACOAL, the earliest having been registered in 1983.
The disputed domain name was registered on June 20, 2010. 5. Parties’ Contentions A. Complainant
The Complainants claim to have used the trademark WACOAL since at least as early as 1980 for intimate apparel and they contend that this trademark has achieved an international reputation for luxurious high-quality products as well as fame, distinctiveness, and significant goodwill in the United States, Asia, and Europe.
They claim to have obtained numerous trademark registrations consisting of or containing the word WACOAL and, annexed to the Complaint, were copies of the following registrations –
WACOAL & design USA 1,245,293 Registered July 12, 1983
WACOAL USA 1,839,485 June 14, 1994
WACOAL TOUCH USA 2,860,779 June 6, 2004
WACOAL CTM 000804484 October 15, 1999
WACOAL & design CTM 000863936 December 11, 1999
The first two of the above are alleged to be incontestable.
The Complainants contend that as a result of their longstanding use of the trademark WACOAL, and their promotional activities in connection with it, it has acquired the status of a famous mark, one which is known throughout the world and worthy of the highest degree of protection.
The Complainants also own the domain name which was first registered in April 1996 and at which they operate a website.
The Complainants contend that the Respondent uses the disputed domain name to direct Internet users to his own website which is a pornographic site, where there are displayed images and advertisements for a wide range of pornographic material and services, including apparently illegal services or materials under the heading “Browse More Ads” with an advertisement entitled “Lolita sex party”. At some point after accessing the website a user will be automatically directed to other pornographic sites.
The Complainants contend that the disputed domain name incorporates their well-known trademark WACOAL and is therefore identical and confusingly similar to that trademark. Furthermore, the addition of the word “girlie” does not diminish the likelihood of confusion, it actually increases it – in an offensive manner – by associating the slang term “girlie” with its well-known trade mark WACOAL. The Complainants allege that the dictionary definition of a “girlie” is “featuring minimally clothed or naked women, typically in pornography” and that this specifically signals that the disputed domain name is intended to make an association with the Wacoal company’s intimate apparel so that this could, for example, be worn by women in a provocative manner. This use misleadingly diverts consumers and tarnishes the Complainants’ valuable name and trademark.
The Complainants further contend that the addition of the suffix ”.org” should be disregarded.
The Complainants contend that the Respondent has no rights or legitimate interests with respect to the disputed domain name because –
- Given the notoriety of the Complainants’ name and trademarks, it is inconceivable that the Respondent registered the disputed domain name without prior knowledge of the Complainants. Indeed, the inclusion of the word ”girlie” in the disputed domain name demonstrates that the Respondent was aware of the Complainants, their products and their principle customers.
- It has frequently been held that using a complainant’s trade mark to link to adult related websites cannot establish rights or legitimate interest in the domain name.
- The Respondent does not use the disputed domain name to make a bona fide offering of goods or services.
- There is no relationship between the Complainants and the Respondent which would give rise to any licence, permission, or authorization to use the disputed domain name. In fact, the Respondent is using the disputed domain name to mislead consumers into believing that the website at the disputed domain name is authorized by, affiliated with, or sponsored by the Complainants. This misappropriates the goodwill associated with the Complainants’ name and trademark.
- The Respondent is not, and has not been, commonly known by the disputed domain name.
- The Respondent is not making a legitimate, noncommercial or fair use of the disputed domain name.
As for bad faith, the Complainants contend that –
- The Respondent’s use of a domain name which incorporates the Complainants’ trademark has been done solely as a vehicle to redirect users to his own website where he displays pornographic material and advertises pornographic services and materials, including such services and materials associated with children, and this is strong evidence of bad faith.
- The Respondent is in breach of paragraph 4(b) of the Policy by using the disputed domain name “intentionally to attract, for commercial gain, Internet users (the) website … by creating a likelihood of confusion with (their) marks as to the source sponsorship, affiliation or endorsement of (the) website or location or of a product or service on (the) website”.
- the disputed domain name incorporates the Complainants’ trade mark in its entirety, and this is strong evidence of bad faith on the part of the Respondent.
- The Respondent’s use of the disputed domain name is clearly calculated to attract Internet users for commercial gain to its website through search engines by creating a likelihood of confusion with Complainants’ trademark.
- The Respondent has attempted to evade enforcement of the Complainants’ rights by concealing his identity through use of a privacy shield. B. Respondent
The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainants have established, to the satisfaction of the Panel, that they have substantial rights in the trademark WACOAL. This is a distinctive and an invented word, and it does not appear in any dictionary. Therefore the Respondent could not have hit upon it accidentally. He must have deliberately targeted the Complainants.
The Panel finds that the disputed domain name is confusingly similar to the Complainants’ name and trademark. The Panel notes that the disputed domain name contains the dictionary word “girlie”, an apparently slang term. According to the American Heritage Dictionary, an extract from which was annexed to the Complaint, when used as an adjective, the word means “featuring nude or scantily clad young women: a girlie show; girlie magazines” and when used as a noun it is an offensive term of address for a girl or a woman. Therefore, the Complainants’ description of it as a slang term is largely accurate. This must be particularly distressing for the Complainants, as their products are highly reputable.
It was held in America Online, Inc. v. East Coast Exotics, WIPO Case No. D2001-0661 (July 10, 2001) that the incorporation of a generic term in a domain name does not defeat any similarity created by use of a complainant’s trademark. It was also said in Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206 (April 30, 2004) that the addition of a descriptive word does nothing to distinguish the disputed domain name from the Complainant’s registered trademark.
Also, as has been found in numerous decisions under the Policy a suffix referring to a top-level domain such as “.com”, “.net”, or “.org” need not be taken into consideration in determining the identity or confusing similarity of a domain name to a trade mark or service mark.
The Panel finds that paragraph 4(a)(i) of the Policy is proved. B. Rights or Legitimate Interests
It is well established that a complainant must first make out a prima facie case that respondent lacks rights and legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy, and then the burden shifts to respondent to show that it does have rights or legitimate interests. It is said, in the publication “Overview of WIPO Panel Views on Selected UDRP Questions” that, while the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative. Therefore, a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. See also Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Claim No. 741828 (August 18, 2006) in which it was held that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name.
In this case, the Panel is satisfied that the Complainants have made out a strong prima facie case.
The Respondent has provided nothing to support an argument that he has any rights or legitimate interests in the disputed domain name. The disputed domain name incorporates the whole of the Complainants’ (invented) trade mark together with an allegedly slang term. Furthermore, the website at the disputed domain name contains a great deal of very specific adult and pornographic material, as well as advertisements for further pornographic services. Such use is neither right nor legitimate.
It was said in Brigitte Poulin, Jean Guy Poulin v. Ggot, Ltd, WIPO Case No. D2010-0834 (July 8, 2010) that pornography is not per se illegitimate under the Policy, “but that fact alone does not give the Respondent the unqualified right to appropriate a trademark belonging to someone else, for such activity.”
The Complainants have no relationship with the Respondent and have not given him permission to use their name.
Under paragraph 14(b) of the Rules, a panel is entitled, in the absence of exceptional circumstances, to draw such inferences from e.g., the absence of a Response, as it considers appropriate. In the circumstances of this case, the Panel has concluded that the Complainants have more than established the absence of any right or legitimate interests on the part of the Respondent to use the its trade mark in the disputed domain name.
In view of the above facts, the Panel finds that paragraph 4(a)(ii) of the Policy is also proved. C. Registered and Used in Bad Faith
According to paragraph 4(b)(iv) of the Policy, there is bad faith where a respondent has “by using the domain name … intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site nor location.” This precisely describes the situation in the present case.
In addition, numerous panels have previously found that when a disputed domain name associates a distinctive trade mark with pornography, such use provides evidence of bad faith. See Ty Inc. v. O.Z. Names, Respondent, WIPO Case No. D2000-0370 (June 27, 2010); Barry Diller v. INTERNETCO CORP., WIPO Case No. D2000-1734 (March 9, 2001); AltaVista Company v. Alt Pile Co., WIPO Case No. D2002-0933 (December 18, 2002); Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022 (March 4, 2003).
The Panel therefore finds that paragraph 4(a)(iii) of the Policy has also been proved. 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 Wacoal America, Inc., as requested by the Complainants.
David H. Tatham
Sole Panelist
Dated: November 5, 2010
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