The Complainants are Saks & Company and Saks Direct, LLC, New York, New York, United States of America, represented by Loeb & Loeb, LLP, United States of America.
The Respondent is PPA Media Services/Ryan G. Foo of Santiago, Chile. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with I Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 20, 2013. On March 21, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 29, 2013, 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 on April 4, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on April 8, 2013.
The Center verified that the Complaint together with 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 April 10, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 30, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 1, 2013.
The Center appointed Stéphane Lemarchand as the sole panelist in this matter on May 30, 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.
On June 13, 2013, pursuant to paragraph 10 and 12 of the Rules, the Panel issued an Administrative Panel Procedural Order No. 1 in which the Panel requested the Complainants to provide:
- Power of attorney from the Complainants, Saks & Company and Saks direct, LLC, in favor of their Counsel;
- Certificates of extension of the validity of all relevant trademarks, if any;
- License or other existing agreements between Saks & Company and Saks direct, LLC and/or shareholder participation scheme; and
- Other elements of proof corroborating Complainants' approach to bring a single consolidated complaint against the Respondent.
Furthermore, as there are two Complainants, the Complainants were invited to specify to which of the Complainants the transfer of the Disputed Domain Name was requested.
The Complainants submitted documents in response to the Administrative Panel Procedural Order No. 1 on June 27, 2013. 4. Factual Background
Saks & Company and Saks Direct, LLC are both subsidiaries of Saks Incorporated, which is one of the world's premier retail store chain companies. The Complainants have been selling luxury goods for almost 100 years. Saks Incorporated operates stores throughout the United States and in several other countries, under the trade names and trademarks SAKS FIFTH AVENUE and SAKS FIFTH AVENUE OFF 5TH, as well as through the “” e-commerce site.
Saks & Company is the owner, among others, of the following registered trademarks:
- United States Trademark registration SAKS & COMPANY No. 2,351,428 filed on November 9, 1998 in class 35 and renewed on May 23, 2010;
- United States Trademark registration SAKS FIFTH AVENUE No. 1,667,955 filed on January 10, 1991 in class 42 and renewed on December 10, 2011;
- Community Trademark registration SAKS No. 003344678 filed on September 10, 2003 in classes 3, 9, 14, 18, 21, 24, 25, 35 and 42, due for renewal in September 10, 2013.
Saks Direct, LLC is operating the e-commerce activities of Saks Incorporated.
The Disputed Domain Name was registered by the Respondent on March 28, 2004. 5. Preliminary Procedural Issue: Consolidation of Complaints
According to settled practice of UDRP panels, it is possible for a single complaint to be brought by multiple complainants, where the multiple complainants truly have a common grievance against the respondent. It is so for instance where the multiple complainants have a common legal interest in a relevant right or rights that are allegedly affected by the respondent’s conduct (as held in, inter alia, National Dial A Word Registry Pty Ltd and others v. 1300 Directory Pty Ltd,WIPO Case No. DAU2008-0021; Fulham Football Club (1987) Limited, Tottenham Hostpur Public Limited, West Ham United Football Club PLC, Manchester United Limited, The Liverpool Football Club and Athletic Grounds Limited v. Domains by Proxy, Inc./ Official Tickets Ltd, WIPO Case No. D2009-0331; MLB Advanced Media, The Phillies, Padres LP v. OreNet, Inc., WIPO Case No. D2009-0985).
In the present case, the Complainants form part of a single entity, as they are part of a larger corporate group, and are both sharing an interest in the trademark SAKS, either as trademark owner or as entities that includes the mark in their trade names. Furthermore, the Disputed Domain Name is identical to Saks Direct, LLC trade name. The Complainants have therefore established that they have a common legal interest that may be affected by the Respondent’s conduct.
Accordingly, the Panel, having regard to all relevant circumstances, concludes that the consolidation of the Complainants’ grievances in one Complaint is consistent with the Policy and Rules and in accordance with relevant UDRP proceedings. The Panel will therefore proceed to a decision on the merits. 6. Parties’ Contentions A. Complainants
The Complainants contend that the Disputed Domain Name is confusingly similar to the SAKS name and registered trademarks in that it wholly incorporates the SAKS name and trademarks, combined with the generic term “direct”, which does not detract from the confusing similarity. Furthermore, the Disputed Domain Name is similar to the name of the entity Saks Direct, LLC, which is operating the e-commerce activities of Saks Incorporated.
The Complainants also contend that the Respondent has no rights or legitimate interests in the Disputed Domain Name in that:
a) the Respondent has not used the Disputed Domain Name in connection with a bona fide offering of goods and services; and
b) the Respondent is not known as ; and
c) the Respondent has not made any legitimate noncommercial or fair use of the Disputed Domain Name.
The Complainants further contend that the Disputed Domain Name was registered and is being used in bad faith. The Complainants highlight in this respect that the Respondent in using the Disputed Domain Name to display various links to third-party websites, some of which compete with the Complainants. This demonstrates the Respondent’s actions are aimed at disrupting and diverting business away from the Complainants, and is evidence of bad faith registration and use.
The Complainants request that the Disputed Domain Name be transferred to it. B. Respondent
The Respondent did not reply to the Complainants’s contentions. 7. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainants must prove each of the following elements with respect to the Disputed Domain Name in order to succeed in this proceeding:
(i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) that the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainants have registered rights in the trademarks containing the element “saks” in several jurisdictions.
It is a well-established principle that descriptive or generic additions to a trademark do not generally avoid confusing similarity of domain names and trademarks (as held in eBay Inc. v. ebayMoving c/o Izik Apo,WIPO Case No. D2006-1307). The Panel considers that the Complainants’ trademarks, which is placed at the beginning of the Disputed Domain Name string, is instantly recognizable and remains dominant in the Disputed Domain Name, and that the addition of the generic term “direct” does not differentiate the Disputed Domain Name from the Complainants’ trademarks to exclude confusion. On the contrary, as stated by the Complainants in the Complaint, the combination of the English term “direct” to the trademark SAKS clearly indicates that the Disputed Domain Name was made with the Complainants' trademark in mind, in reference to the e-commerce activities operated by Saks Direct, LLC.
The Panel accordingly finds that the Disputed Domain Name is confusingly similar to the trademarks in which the Complainants have rights and finds that paragraph 4(a)(i) of the Policy is satisfied in favor of the Complainants. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish that it has rights or legitimate interests in the Disputed Domain Name, among other circumstances, by showing any of the following elements:
(i) that before notice of the dispute, the Respondent used or made demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or
(ii) that the Respondent has been commonly known by the Disputed Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The overall burden of proof for establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name lies with the Complainants.
However, the Complainants are required only to make out a prima facie case that the Respondent lack rights or legitimate interests. Once a prima facie case is made out, the burden shifts to the Respondent to come forward with appropriate evidence demonstrating its rights or legitimate interests in the Disputed Domain Name.
There is no evidence that the Respondent owns any rights corresponding to the Disputed Domain Name or has made demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services.
The Panel considers that use of the Disputed Domain Name for redirection to a “parking website” which contains sponsored pay-per-click links including to commercial websites offering for sale identical or different kinds of goods and services to the Complainants does not provide a legitimate interest in the Disputed Domain Name.
Indeed, it is well known that the way in which many of these pay-per-click services operate is that the domain parking service operators obtain “click through revenue” when Internet users click on the “sponsored links” on the displayed page. Many of these services will then provide the domain name registrant with part of that “click through” revenue.
Although there is nothing per se illegitimate in using a domain parking service, it has been established in previous UDRP proceedings that linking a domain name to such a service with a trademark owner’s name in mind and in the hope and expectation that Internet users searching for information about the business activities of the trademark owner will be directed to the parking service page, is a different matter and does not provide a legitimate interest in that domain name under the Policy (see, for example, Express Scripts, Inc. v. Windgather Investments Limited / Mr Cartwright, WIPO Case No. D2007-0267; and Owens Corning v. NA,WIPO Case No. D2007-1143).
In the absence of any further substantive explanation from the Respondent as to why the Disputed Domain Name was registered, the Panel finds that the Complainants have satisfied the burden of showing a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name.
Accordingly, and in the absence of any Response from the Respondent, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainants. C. Registered and Used in Bad Faith
The Complainants have numerous trademark registrations for SAKS which well predate the registration date of the Disputed Domain Name. The Complainants’ trademarks have also been used for several years prior the registration of its trademarks. The Panel finds that the Respondent must have been well aware of the Complainants’ mark at the time they registered the Disputed Domain Name.
The Panel is therefore satisfied that the Disputed Domain name was registered in bad faith.
The Panel is also satisfied that the Disputed Domain Name is being used in bad faith, in particular for attracting Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainants’ trademarks. Pay-per-click sponsored links on the Respondent’s website are tailored to divert business to competitors of the Complainants and their products. There is therefore a demonstrated intent to attract Internet users to the Respondent’s website for commercial gain.
In light of the above, the Panel finds that the Disputed Domain Name was registered and is being used in bad faith.
Accordingly, the Complainants has proven the third element required by paragraph 4(a)(iii) of the Policy. 8. 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 Saks & Company.
Stéphane Lemarchand
Sole Panelist
Date: July 2, 2013
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