The Complainant is David Yurman IP LLC of New York, United States of America (“USA”), represented by Gibney, Anthony & Flaherty, LLP, USA.
The Respondent is PrivacyP of Nobby Beach, Queensland, Australia / luo xiaojie of Putian, Fujian Sheng, China. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 13, 2013. On September 16, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 17, 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 Complainant on September 17, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 17, 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 September 25, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 15, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 17, 2013.
The Center appointed Andrew D. S. Lothian, Gustavo Patricio Giay and Linda Chang as panelists in this matter on November 11, 2013. The Panel finds that it was properly constituted. Each member of 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 is a designer, manufacturer and distributor of luxury merchandise including jewelry, timepieces and eyewear. The Complainant is the owner of a variety of USA registered trademarks for the word mark DAVID YURMAN including registered trademark number 1725487 dated October 20, 1992 in international class 14. The registration details of the said mark show a first use in commerce date of 1971.
Little is known about the Respondent, which is an entity or person having an address in Putian City, Fujian Sheng, China. The disputed domain name was created on July 17, 2012 and resolves to a website which appears to offer the Complainant’s goods for sale. The Complainant states that such goods are counterfeit and that the Complainant’s DAVID YURMAN trademark has been applied to them without permission. The Complainant also says that the images used on the said website are the Complainant’s images, in which copyright vests in the Complainant, and which have been used without the Complainant’s permission. The Complainant notes that prior to initiating the present administrative proceeding, the Complainant made an undercover purchase from the Respondent’s said website via a private investigator. The Complainant adds that it corresponded multiple times with the Respondent during the undercover purchase process and ultimately received a package bearing a return address in GuangZhouShi, Guangdong, China. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to trademarks in which it owns rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name has been registered and is being used in bad faith.
The Complainant notes that the disputed domain name wholly incorporates the Complainant’s DAVID YURMAN trademark as the dominant part of the disputed domain name and states that this renders it confusingly similar to the Complainant’s trademarks. The Complainant submits that the incorporation of a trademark in its entirety in a domain name is sufficient to establish that the domain name is identical or confusingly similar to the registered trademark. The Complainant adds that the addition of the generic term “outlet” does not affect the overall impression created by the dominant part of the disputed domain name, thus making it confusingly similar to Complainant’s mark. The Complainant notes that generic terms such as “outlet” are not sufficient to avoid confusion but rather strengthen the impression that the disputed domain name belongs to or is affiliated with the Complainant.
The Complainant says that the Respondent has never been commonly known by the disputed domain name or by the DAVID YURMAN trademark and is not authorized or licensed to use the Complainant’s trademarks. The Complainant asserts that the absence of any association between the Respondent and the Complainant is evidence that the Respondent does not have a legitimate interest in the disputed domain name. The Complainant notes that the Respondent is using the disputed domain name to sell counterfeit merchandise that is confusingly similar to authentic merchandise of the Complainant and that such use does not constitute a bona fide offering of goods or services. The Complainant adds that the website associated with the disputed domain name has a commercial purpose, does not contain any disclaimers that it is not affiliated with the Complainant and instead fosters the misconception that such affiliation exists. The Complainant notes that such activity does not constitute a legitimate noncommercial or fair use of the Complainant’s trademarks.
The Complainant asserts that the Respondent’s intent is to capitalize on the fame of the Complainant’s DAVID YURMAN trademark and to acquire commercial gain due to user confusion. The Complainant submits that this constitutes registration and use in bad faith. The Complainant contends that the Respondent’s use of a privacy service to hide its identity in the circumstances of the current use of the disputed domain name is further evidence of bad faith, as is the Respondent’s failure to reply to the Complainant’s cease and desist letter. The Complainant adds that the Respondent’s use of the Complainant’s copyright images on the website associated with the disputed domain name is further evidence of bad faith use of the disputed domain name. The Complainant concludes that the Respondent has engaged in conduct that constitutes bad faith under the Policy, particularly by attempting to attract, for commercial gain, users to its website by creating a likelihood of confusion with the Complainant’s mark. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel notes that the disputed domain name incorporates the Complainant’s trademark in its entirety together with the generic word “outlet”. The Panel disregards the generic top-level domain “.org” as having no significance for the purposes of comparison. The Panel accepts the Complainant’s contention that the inclusion of its DAVID YURMAN trademark in the disputed domain name renders it confusingly similar thereto and furthermore that, given the business of the Complainant, the addition of the word “outlet” in the disputed domain name exacerbates such confusing similarity.
In all of these circumstances, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. Accordingly, the Complainant has established the first element under the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in the disputed domain name. In the present case, the Complainant submits that the Respondent has not been commonly known by the disputed domain name, has not been authorized or licensed to use the Complainant’s DAVID YURMAN trademark and has no other association with the Complainant. The Complainant also describes the manner in which the website associated with the disputed domain name has been used, namely in connection with the sale of products designed to have the appearance of authentic merchandise of the Complainant but which are not genuine and which bear the Complainant’s trademark without its authority. The Complainant asserts that this use cannot constitute a bona fide offering of goods or services.
The Panel is satisfied that the Complainant’s submissions, taken together, constitute a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and the burden of production therefore shifts to the Respondent. The Respondent has not filed any response in this case by which it might have sought to explain its conduct or given details of any alleged rights or legitimate interests in the disputed domain name. Importantly, the Respondent has failed to answer the serious allegations of the Complainant regarding the use of the disputed domain name in connection with the sale of counterfeit product. On the record before it, the Panel cannot conceive of any rights or legitimate interests which the Respondent might reasonably have claimed in the disputed domain name.
In all of these circumstances, the Panel finds that the Complainant has proved that the Respondent has no rights or legitimate interests in the disputed domain name and that the second element under the Policy has been established. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have 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 or location”.
On this topic, the Complainant’s primary submission focuses on paragraph 4(b)(iv) of the Policy. The Complainant asserts that the disputed domain name is being used to sell counterfeit merchandise bearing the Complainant’s trademark and that the Respondent’s intent is to confuse Internet users into believing that the website associated with the disputed domain name and the merchandise for sale thereon is authorized or approved by the Complainant. The Respondent has not responded to any of the allegations detailed in the Complaint and has not sought to explain why, in the face of the Complainant’s submissions and evidence, the disputed domain name should not be considered to have been registered and used in bad faith.
Based on the record before it, the Panel is satisfied that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of that website, as contemplated by paragraph 4(b)(iv) of the Policy.
The Panel therefore finds that the Complainant has proved that the Respondent has registered and is using the disputed domain name in bad faith and thus that the third element under the Policy has been established. 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 the Complainant.
Andrew D. S. Lothian
Presiding Panelist
Gustavo Patricio Giay
Panelist
Linda Chang
Panelist
Date: November 25, 2013
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