The complainant (“Complainant”) is Kate Spade, LLC of New York, United States of America, represented by Davis Wright Tremaine LLP, United States of America.
The respondent (“Respondent”) is Amos Keith of United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Melbourne IT Ltd (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 18, 2013. On January 22, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 25, 2013, 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 Respondent of the Complaint, and the proceedings commenced on January 28, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 17, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 18, 2013.
The Center appointed Michael A. Albert as the sole panelist in this matter on March 6, 2013. 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
Complainant owns U.S. trademark registrations for KATE SPADE and KATE SPADE NEW YORK, the earliest of which is a Class 18 registration of the KATE SPADE mark on May 27, 1997.
Respondent registered the Disputed Domain Name on September 8, 2012.
Respondent provided false contact information when registering the Disputed Domain Name, including a postal code with one digit too many (“430000”) that does not appear similar to postal codes for the state listed on the application (Alabama, whose postal codes range from 35004 through 36925), a street address of “bin,” and a city of “maigei,” whereas an alphabetical listing of Alabama municipalities shows no jurisdictions between Magnolia Springs and Malvern. 5. Parties’ Contentions A. Complainant
Complainant contends that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights, that Respondent has no rights or legitimate interests in the Disputed Domain Name, and that Respondent registered and is using the Disputed Domain Name in bad faith.
Complainant, a designer, manufacturer, and distributor of clothing and accessories, is headquartered in New York and does business around the world through its international network of retail stores, including three stores in Singapore, and through its web site at “”.
Complainant argues that the Disputed Domain Name is confusingly similar to its trademark because the Disputed Domain Name incorporates its KATE SPADE trademark with the geographic designation “Singapore” and suffix “.org” appended to the end. Complainant argues that the use of the geographic designation “Singapore” and the generic top-level domain “.org” fails to avoid a likelihood of confusion with Complainant’s trademark. Complainant further alleges that the addition of “Singapore” may in fact increase the likelihood of confusion, since it identifies a location where Complainant does business and may suggest to Complainant’s customers that the web site at the Disputed Domain Name is Complainant’s official web site in Singapore.
Complainant further alleges that Respondent has not registered the Disputed Domain Name as a trademark and is using the Disputed Domain Name to sell counterfeit Kate Spade products. Also, Complainant alleges that it has never licensed or otherwise authorized anyone to register the Disputed Domain Name and that there is no commercial relationship between the Parties that would allow Respondent to register the Disputed Domain Name.
Complainant contends that Respondent registered the Disputed Domain Name in bad faith to take commercial advantage of Complainant’s well-known and widely-recognized trademark. Complainant argues that Respondent’s registration and use of the Disputed Domain Name must be in bad faith because the Disputed Domain Name is obviously intended to mislead Internet users seeking Kate Spade products.
Complainant further avers that the web site at the Disputed Domain Name evidences bad faith because it represents itself as being an official web site of Complainant’s and it sells counterfeit versions of Complainant’s products. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Here, Respondent provided no response, and the deadline for doing so expired on February 17, 2013. Accordingly, Respondent is in default. Given Respondent’s default, the Panel can infer that Complainant’s allegations are true where appropriate to do so. Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. Nonetheless, Complainant retains the burden of proving the three requisite elements of paragraph 4(a) of the Policy. A. Identical or Confusingly Similar
Complainant has provided sufficient evidence that it is the owner of a valid International Registration for, and makes substantial use of, the KATE SPADE trademark.
The Disputed Domain Name, however, is not identical to the KATE SPADE trademark. Therefore, the first issue is whether the Disputed Domain Name and the KATE SPADE trademark are confusingly similar.
The Disputed Domain Name combines three elements: (1) Complainant’s KATE SPADE trademark; (2) the country name “Singapore;” and (3) the suffix “.org.” The relevant comparison to be made is with the second-level portion of the domain name only (i.e., “katespadesingapore”), as it is well established that the top-level domain (i.e., “.org”) should be disregarded for this purpose. Playboy Enterprises International, Inc. v. John Taxiarchos,WIPO Case No. D2006-0561. The Panel finds the addition of the geographic designation “Singapore” does not extinguish the similarity between the second-level portion of the Disputed Domain Name “katespadesingapore” and the KATE SPADE trademark. Alstom v. Yulei,WIPO Case No. D2007-0424 (adding “-China” to a trademark failed to distinguish it, as geographic designations are generally considered generic terms and adding a generic term is insufficient to distinguish an otherwise identical trademark).
Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to Complainant’s trademark. B. Rights or Legitimate Interests
Under the Policy, paragraph 4(c), rights or legitimate interests in a domain name may be demonstrated by showing that:
(i) before any notice of this dispute, respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;
(ii) respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or
(iii) respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue.
A complainant must show a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name, after which the burden of rebuttal passes to the respondent. See Accor v. Eren Atesmen,WIPO Case No. D2009-0701 (citing Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455). The absence of rights or legitimate interests is generally established if a complainant makes out a prima facie case and the respondent enters no response. Id., (citing De Agostini S.p.A. v. Marco Cialone,WIPO Case No. DTV2002-0005).
It is uncontested that the use of Complainant’s trademark in the Disputed Domain Name is unauthorized. Complainant has thus made a prima facie showing that Respondent lacks rights or legitimate interests in the Disputed Domain Name. Spencer Douglass, MGA v. Bail Yes Bonding,WIPO Case No. D2004-0261. Additionally, Complainant presented uncontroverted evidence that the Disputed Domain Name was intended to divert customers from Complainant’s website through customer confusion.
In the absence of a Response, the Panel accepts as true Complainant’s allegations that Respondent is not authorized to use the KATE SPADE trademark. See Accor v. Eren Atesmen,WIPO Case No. D2009-0701 (citing De Agostini S.p.A. v. Marco Cialone,WIPO Case No. DTV2002-0005).
Complainant has presented evidence that the web site at the Disputed Domain Name represents itself as a “Kate Spade Singapore outlet store” and uses Complainant’s trademark and product images to sell purported Kate Spade products at significant discounts. Complainant’s unrebutted assertion that it has no business relationship with Respondent that would authorize this use of the Disputed Domain Name, together with Respondent’s use of false contact information on its domain name registration and generally discounted value of the goods on the website, serves as sufficient evidence for the Panel to conclude that the goods being sold on the web site at the Disputed Domain Name are, in fact, counterfeits.1
Respondent’s unauthorized use of the KATE SPADE trademark to sell counterfeit Kate Spade goods on its web site suggests that Respondent is seeking to mislead Internet users to Respondent’s commercial benefit. Therefore, the Panel agrees that Respondent does not offer any bona fide goods or services but instead uses the web site at the Disputed Domain Name to sell counterfeit Kate Spade products.
For all of the foregoing reasons, the Panel finds that Complainant has proven that Respondent lacks rights to, or legitimate interests in, the Disputed Domain Name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances of the registration and use of a domain name in bad faith. One of the illustrations of bad faith, Policy paragraph 4(b)(iv), occurs when Respondent attempts to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark(s) as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a product or service offered on the web site at the Disputed Domain Name.
Respondent has failed to refute Complainant’s evidence that Complainant has well-established rights in the KATE SPADE trademark, that the trademark is well known worldwide, or that the Disputed Domain Name was registered well after the Complainant’s trademark was in use. These facts support a conclusion that Respondent did not innocently register the Disputed Domain Name. See Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415 (“It defies common sense to believe that Respondent coincidentally selected these precise domain names without any knowledge of Complainant and its … trademarks.”); Société Air France v. R Blue,WIPO Case No. D2005-0290 (“Respondent must have been aware of the Complainant’s trademarks while registering the domain name in dispute. This finding leads to the conclusion that the domain name in dispute has been registered in bad faith.”)
In addition, the Panel finds that use of the web site at the Disputed Domain Name to sell what have been shown likely to be counterfeit or pirated versions of Complainant’s products is evidence of bad faith in itself. See Jean Cassegrain S.A.S. v. Magee,WIPO Case No. D2011-1572 (unauthorized use of a trademark to sell presumably counterfeit products is evidence of bad faith).
For all the foregoing reasons, the Panel finds that Complainant has proven that Respondent registered and is using the Disputed Domain Name in bad faith. 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 Disputed Domain Name be transferred to Complainant.
Michael A. Albert
Sole Panelist
Date: March 15, 2013
1 It is also possible that the goods being sold on the web site at the Disputed Domain Name are pirated (i.e. an exact copy made without authorization of the trademark owner, often in the trademark owner’s factory using the trademark owner’s materials) rather than counterfeit (i.e. an imitation product made without the trademark holder’s authorization), but this distinction would not affect the analysis, since piratical goods are also unauthorized and would therefore not constitute the offering of legitimate goods or services. Wilcom Pty Ltd v. Jinsu Kim,WIPO Case No. D2009-0670 (sale of pirated goods is not “a bona fide offering of goods or services”).
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