The Complainants are Wacoal Corp. of Kyoto, Japan, and Wacoal America Inc of Lyndhurst, New Jersey, United States of America (the “Complainants”), represented by Morrison & Foerster, LLP, United States of America.
The Respondent is Uri Shevchenko of Budapest, Hungary (the “Respondent”). 2. The Domain Name and Registrar
The disputed domain name is registered with eNom (“eNom”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 21, 2010. On September 21, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On September 21, 2010, eNom 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 30, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 20, 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. 4. Factual Background
The Complainants, with headquarters in Kyoto, Japan, are engaged in the design, manufacture, and distribution of intimate apparel, including undergarments. Between them they own numerous trademark registration of the name WACOAL, the earliest having been registered in 1983.
The disputed domain name was registered on October 22, 2009. 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 name has achieved an international reputation for luxurious high-quality products as well as fame, distinctiveness, and significant goodwill in the United States of America, 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 –
W WACOAL USA 1,245,293 Registered December 7, 1983
WACOAL USA 1,839,485 June 14, 1994
WACOAL TOUCH USA 2,860,779 June 7, 2004
WACOAL CTM 804484 October 15, 1999
WACOAL & design CTM 863936 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 name 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 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 where links are provided to information about the Complainants’ competitors.
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 ”bra” does not diminish the likelihood of confusion and indeed, far from reducing this likelihood, it actually increases it by adding the name of one of the Complainants’ products. 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 Respondent registered the disputed domain name without prior knowledge of the Complainants. Indeed, the inclusion of the word ‘bra’ in the disputed domain name demonstrates that Respondent was aware both of the type of product sold by the Complainants, and that the Complainants existed.
- 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.
- Although the Respondent has dressed up the website at the disputed domain name to appear to provide information on legitimate “Wacol” bras, in fact it is designed to draw search engine hits, increase the resale value of the disputed domain name, and to direct consumers to information about the Complainants’ competitors, including Playtex, Vanity Fair, and Bali.
- The Respondent is not making a legitimate, noncommercial or fair use of the disputed domain name.
- In addition, the Respondent engages in the “black hat” search engine manipulation scheme of “keyword scamming” by repeating the term “wacol bra” over and over throughout the visible and invisible text of the website on order to increase the “keyword density” of the term. The Complainants annexed to the Complaint a copy of an explanation of keyword density as well as a copy of the disputed domain name’s source code.
- The Complainants also conducted an analysis of the Respondent’s website and contend that more than 25% of the two word terms on the main page of the website at the disputed domain name contain the WACOAL name. This effect cannot have been achieved unintentionally.
- Although there is a disclaimer at the foot of the website, this can have no effect upon any analysis of the Respondent’s use of the Complainants’ trademarks.
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 has links to information about Complainants’ competitors.
- Because the disputed domain name incorporates the Complainants’ trade mark in its entirety, 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 the Complainants’ trademark.
- Respondent has made an earlier attempt to evade enforcement of the Complainants’ rights by concealing his identity through use of the WhoIs “privacy” service, and the Complainants annexed to the Complainant a printout of a WhoIs database search for the disputed domain name conducted in August 2010 as proof thereof.
- The disclaimer on the Respondent’s website also supports a finding of bad faith. B. Respondent
The Respondent did not reply to the Complainant’s 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, and this is especially obvious through his combining it with the word “bra”, which is the usual abbreviation of the word “brassiere” and clearly one of the Complainants’ principal products, as can be seen from the home page of their website, a copy of which was annexed to the Complaint and which contains photographs of three models wearing bras.
The disputed domain name is not identical to the Complainants’ name and trademark as they allege, but it is clear to the Panel that it is confusingly similar. For example, 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 with a Complainants’ 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.
As a result, 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, FA 741828 (NAF August 18, 2006) in which it was held that a complainant must first make a prima facie case that a respondent lacks rights and legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy before the burden shifts to that 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 interest in the disputed domain name. The name incorporates the whole of the Complainants’ trademark together with a common term. The Complainants allege that he is not offering any bona fide goods or services, but this does not seem to be confirmed by the copy of the Respondent’s website which was annexed to the Complaint. This consists of a single page with photographs of four models wearing bras and prefixed by the phrase “Wacoal Bra are well known for their light, technologically advanced fabrics and well-fitting, beautiful designs. Wacoal is so committed to fit that it has developed special collections for petite and full figured women.” There does not appear to be any links on this to the Complainants’ competitors, as is alleged, but the page does contain the following curiously worded footnote – “Copyright © 2009 – All Rights Reserved Wacoal Bra. Unofficial Website of Wacoal Bra providing Information about Wacoal Bra. Underwire Bra.” This does appear to confirm that, as Complainant says, it is inconceivable that the Respondent could not have known about them and what they make and sell, namely bras, inter alia, and it has consistently been held that disclaimers have no effect on the question of rights or legitimate interest.
The Complainants have no relationship with the Respondent and have not given him permission to use their name or refer to their bras.
The Panel is not familiar with the “black hat” search engine manipulation scheme of “keyword spamming” which is referred to by the Complainants, but it has studied the papers on the subject provided by the Complainants and it is clear that what the Respondent has done, by repeatedly using the keywords “wacoal” or “wacoal bra” in the main page at the website of the disputed domain name, it could not possibly have been done at random, and must have been deliberate. The Respondent had no right to do this, in these circumstances and it is not legitimate.
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 Complainant has more than established the absence of any right or legitimate interest on the part of the Respondent to use the its trade mark in the disputed domain name.
Consequently, 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, and 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 Wacoal America Inc, as requested by the Complainants.
David H. Tatham
Sole Panelist
Dated: November 15, 2010
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