The Complainant is Levi Strauss & Co. of San Francisco, California, United States of America ("United States"), represented by Kilpatrick Townsend & Stockton LLP, United States.
The Respondent is Zoran P of Quebec, Canada. 2. The Domain Name and Registrar
The disputed domain name is registered with FastDomain, Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 24, 2014. On June 24, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 24, 2014, 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 June 30, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 20, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 22, 2014.
The Center appointed Steven A. Maier as the sole panelist in this matter on August 5, 2014. 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 is a corporation registered in Delaware, United States. It is a manufacturer and supplier of clothing including jeans.
The Complainant is the owner of trademark registrations comprising or including the mark LEVI'S, including the following:
- United States trademark number 250265 for the word mark LEVI'S, filed on May 3, 1927, for overalls and jeans in International Class 25;
- United States trademark number 849437 for a figurative mark comprising the word LEVI'S and a design, filed on October 28, 1968, for trousers, jackets, shorts, shirts, skirts and vests in International Class 25;
- Canadian trademark number 174744 for a figurative mark comprising the word LEVI'S and a design, filed on March 26, 1970, for goods and services including clothing and accessories and retail store services.
The disputed domain name was registered on November 20, 2009. 5. Parties' Contentions A. Complainant
The Complainant submits that it has, since the 1850s, manufactured and sold clothing including jeans throughout the world under the name and mark LEVI'S and other variations of that brand. It states that it is the owner of numerous trademarks for LEVI'S and related marks which it has maintained for over a century and that it has continuously used those marks throughout the world in connection with the sale of jeans and other garments. In the light of these activities, the Complainant contends that the mark LEVI'S has acquired a secondary meaning that is distinctive of the Complainant and its goods in the minds of consumers. The Complainant submits that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4(a)(i) of the Policy).
The Complainant asserts that the disputed domain name reproduces verbatim its LEVI'S trademark with the addition only of the descriptive term "outlet". The Complainant submits that the addition of a descriptive term of this nature is not effective to distinguish the disputed domain name from its trademark. It submits that, indeed, the addition of the term actually increases the likelihood of confusion in this case because the Complainant operates its own "Levi's Outlet Stores" for its products. The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name (paragraph 4(a)(ii) of the Policy).
The Complainant states that it has never authorized the Respondent to use its LEVI'S trademark and that the Respondent has no rights in that trademark. The Respondent is named "Zoran P" and there are no grounds to believe that the Respondent has ever been known by the LEVI'S trademark or by the disputed domain name. Furthermore the Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services. The Respondent is not an authorised reseller of the Complainant's goods and, while it claims to sell the Complainant's products, it does not satisfy the test set out by various panels under the UDRP for the legitimate use of an underlying trademark for this purpose (the Complainant relies on Philip Morris Incorporated v. Ales Tsypkin,WIPO Case No. 2002-0946). In particular, the Respondent offers not only the Complainant's goods but also competing goods on its website. Furthermore, the Respondent fails accurately to disclose its relationship with the Complainant (i.e. none) and falsely gives the impression that it is the Complainant. Among other matters, the Respondent reproduces the Complainant's trademarked design on its website and also claims that the "Levis Outlet Jeans Online Store" is the owner of the copyright in the website. In the circumstances, the Respondent is using the disputed domain name misleadingly to divert Internet users to its website and to free-ride on the Complainant's goodwill, which activity does not give rise to any rights or legitimate interests in the disputed domain name. The Complainant submits that the disputed domain name has been registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy).
The Complainant contends that, because of the fame of its LEVI'S trademark for over a century, it is inconceivable that the Respondent was unaware of the mark when it registered the disputed domain name. Furthermore, the Respondent has used the disputed domain name for the purposes of a website, which reproduces the Complainant's trademarked design and offers goods for sale, which include goods that are competitive with those of the Complainant. The Complainant exhibits print-outs of pages from the website to which the disputed domain name resolves, dated June 17, 2014. These pages contain lists of what appear to be links to various suppliers of jeans and other men's clothing. The Complainant also points to a statement at the foot of one of the website pages which states: "The brand, products and logo names are the property of their respective companies. If we create a link to a product in a review, sometimes we may get paid a commission if a visitor to our site purchases the product." The Complainant contends that it is clear from this statement that the Respondent is gaining a financial benefit from its use of the Complainant's trademark. The Complainant submits that, in the circumstances, the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation or endorsement of its website.
The Complainant seeks a transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
In order to succeed in its Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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.
Even in a case such as this where the Respondent has failed to file a Response, the Complainant must still establish that all three of the above elements are present. A. Identical or Confusingly Similar
The Complainant has established that it is the owner of registered trademark rights for the mark LEVI'S including the United States and Canadian trademarks referred to above. The disputed domain name comprises the term "levis" together with the addition of "-outlet" and the generic Top Level Domain (gTLD) ".com". The Panel considers that the term "levis" is substantially the same as the Complainant's mark LEVI'S and accepts the Complainant's evidence (which is not disputed by the Respondent) of the worldwide renown of that mark. The Panel also accepts the Complainant's submission that the addition of the descriptive term "-outlet" does not serve to distinguish the disputed domain name from the Complainant's trademark and, in fact, adds to the likelihood of confusion in view of the fact that the Complainant itself offers "outlet" services in respect of its products.
In the circumstances, the Complainant has shown that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights and the first element of the test under paragraph 4(a) of the Policy is satisfied. B. Rights or Legitimate Interests
The Complainant asserts that it has never authorized the Respondent to use its LEVI'S trademark and that the Respondent has never legitimately been known by that trademark or by the disputed domain name. Further, the Complainant submits that the Respondent's use of the disputed domain name for the purposes of a misleading website, which takes advantage of the Complainant's goodwill and offers goods including those of the Complainant's competitors, does not amount to bona fide use of the disputed domain name.
The Panel finds that the Complainant's contentions give rise to a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. In order to answer that case, it was open to the Respondent to provide evidence of any of the circumstances set out in paragraph 4(c) of the Policy or to raise any other matters in support of any claim to have any relevant rights or legitimate interests. However, the Respondent has not filed a Response or otherwise participated in this administrative proceeding and there is no other evidence available to the Panel which is indicative of any rights or legitimate interests in the disputed domain name on the part of the Respondent.
Accordingly, the Panel finds that that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the second element of the test set out under paragraph 4(a) of the Policy is met. C. Registered and Used in Bad Faith
The Panel accepts the Complainant's submissions that, in view of the renown of the Complainant's LEVI'S trademark and the use to which the Respondent has put the disputed domain name, it is clearly to be inferred that the Respondent knew of the Complainant's trademark at the date it registered the disputed domain name and that it registered the name with the intention of taking advantage of the Complainant's goodwill in that trademark.
The Panel also accepts the Complainant's submission that the Respondent has used the disputed domain name for the purposes of a website which reproduces the Complainant's trademarked design, and fails to distinguish itself from the Complainant's own website, with the result that Internet users are likely to be confused into believing that the Respondent's website is either operated by or authorised by the Complainant.
While in certain circumstances a reseller of goods, even if unauthorised, may legitimately use a trademark for the purposes of a domain name, no such argument has been advanced by the Respondent in this case and the Panel does not consider on the evidence available to it that the criteria for any such legitimate use have been met. These criteria are set out in inter alia the decision in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, and include the requirements that the respondent offers only the goods of the trademark owner and that it makes clear the nature of its relationship with the trademark owner. In this case the Panel accepts the Complainant's (uncontradicted) contention that the Respondent's website has included links not only to the Complainant's goods but also to products competitive with those of the Complainant. Further, as stated above, the Respondent's website fails to make clear that it is unconnected with the Complainant and instead gives a contrary impression.
In the circumstances, the Panel finds 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 trademark as to the source, sponsorship, affiliation, or endorsement of its website (paragraph 4(b)(iv) of the Policy).
The Panel therefore concludes that the disputed domain name has been registered and is being used in bad faith and that the third element of the test under paragraph 4(a) of the Policy is satisfied. 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.
Steven A. Maier
Sole Panelist
Date: August 14, 2014
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