The Complainant is Gabrielle Studio, Inc. of New York, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
The Respondent is djis sdi of Beijing, China. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, LLC. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on August 24, 2012. On August 27, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 28, 2012, the Registrar 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 August 30, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 19, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 27, 2012.
The Center appointed Michel N. Bertschy as the sole panelist in this matter on October 4, 2012. 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, Gabrielle Studio, Inc., markets clothing bearing the letters DKNY, for Donna Karen New York, since 1985. The Complainant is the holder of numerous trademarks incorporating the letters DKNY, the oldest of which registered in China from March 19, 1990.
The Domain Name was registered on November 11, 2011. 5. Parties’ Contentions A. Complainant
The Complainant contends the Domain Name is identical or confusingly similar to the Complainant’s trademarks because it incorporates the Complainant's registered marks DKNY. The addition of the generic term "shop" does nothing to distinguish the Domain Name from the Complainant's Mark. The term in fact only exacerbates confusion since the Complainant’s own website enables customers to shop for its products.
The Complainant further contends the Respondent has no rights or legitimate interests in the Domain Name because (1) the Complainant’s marks and use of DKNY marks is prior to the registration of the Domain Name on November 11, 2011, (2) the Respondent is not a licensee of the Complainant’s trademarks and has not otherwise obtained authorization to use the Complainant’s marks, (3) the Respondent is not using the Domain Name as part of a bona fide offering of goods or services. The Respondent is rather using the Domain name to sell competing wares on the website; (4) the use of the Complainant’s marks in the Domain Name and on the Respondents/ website and the inclusion of images taken from the Complainant’s advertisement campaigns clearly demonstrate that the Respondent is seeking to capitalize on the fame of the Complainant’s products by using the Complainant’s marks to attract Internet users.
Last, the Complainant contends the Respondent registered and is using the Domain Name in bad faith because (1) the Respondent registered the Domain Name incorporating the Complainant's registered marks, (2) the Respondent is using a Domain Name incorporating the Complainant’s trademarks to sell unauthorized or non-genuine products and to falsely suggest a connection with the Complainant and (3) the Respondent has gone to lengths to fuel consumer confusion by including copyright protected images taken from the Complainant’s own website. The Respondent is thus intentionally creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website.
For these reasons, the Complainant requests the Administrative Panel to transfer the Domain Name to the Complainant in accordance with Paragraph 4(i) of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is: (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; and (ii) that a 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 complainant must prove each of these three elements. A. Identical or Confusingly Similar
The Complainant has rights in DKNY marks. Under the UDRP, the test for confusing similarity typically involves a comparison between the trade mark and the domain name to determine likelihood of Internet user confusion. To satisfy the test, the trademark to which the domain name is said to be confusingly similar would generally need to be recognisable as such within the domain name. The addition of common, dictionary, descriptive, or negative terms are usually regarded as insufficient to prevent Internet user confusion. Application of the confusing similarity test under the UDRP typically involves a comparison, on a visual or aural level, between the trade mark and the domain name.
As numerous prior UDRP panels have recognized, the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark. The addition of other generic terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to the complainant’s registered trademark (LEGO Juris A/S v. Richard Larkins Sets&Reps,WIPO Case No. D2012-1024).
In this case, the Domain Name incorporates the Complainant’s mark DKNY in its entirety and is clearly its dominant element. The addition of the descriptive word “shop” in the Domain Name does not alleviate any confusion especially when the website enables consumers to shop.
Given the distinctive nature of the DKNY marks which are readily recognisable within the Domain Name, the Panel is satisfied that the Domain Name is confusingly similar to Complainant’s trademarks and thus this element of paragraph 4(a) of the Policy has been established. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the Domain Name. Once a complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights apply, the burden of production on this element shifts to Respondent. The burden of production, however, remains with Complainant to prove each of the three elements of paragraph 4(a). (Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270; LEGO Juris A/S v. Richard Larkins Sets&Reps,WIPO Case No. D2012-1024).
The Complainant has established a prima facie case that the Respondent lacks rights and legitimate interests in respect of the disputed domain name and there has been no rebuttal by the Respondent. Nothing in the case file provided by the Center to this Panel gives reason to believe that the Respondent has or has had any rights or legitimate interests in respect of the disputed domain name, given the Respondent uses the Domain Name in association with a commercial website utilizing the Complainant’s marks and which does not accurately and prominently disclose the Respondent’s relationship’s with the Complainant.
Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online 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 its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). The overriding objective of the Policy is “to curb the abusive registration of domain names in the circumstances where the registrant is seeking to profit from and exploit the trademark of another” (M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230).
In this case, the Complainant has proved beyond any reasonable doubt that the Respondent has intentionally registered the Domain Name, which is confusingly similar to the Complainant’s trademarks, and intentionally diverted Internet users to websites offering the same or similar products as those offered by the Complainant. This stems from the presence of references to the DKNY marks on every page of the Respondent's website and from the presence of copyright protected material on these pages taken from the Complainant's own website. Such registration and use are clearly motivated by commercial gain.
The Panel therefore considers that the Respondent’s conduct in this case constitutes blatant bad faith registration and use of the disputed domain name within the meaning of paragraph 4(b)(iv) of the Policy.
Accordingly, the Complainant has satisfied all three elements of Paragraph 4(a) of the Policy. 7. Decision
For 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.
Michel N. Bertschy
Sole Panelist
Dated: October 17, 2012
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