Complainant is Stuart Weitzman IP, LLC of New York, New York, United States of America ("US"), represented by The Gioconda Law Group PLLC, US.
Respondent is Temika Hamilton of Miami, Florida, US. 2. The Domain Name and Registrar
The disputed 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 October 20, 2014. On October 21, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 22, 2014, the Registrar transmitted by email to the Center its verification response confirming that 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 November 3, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 23, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on November 24, 2014.
The Center appointed Gary J. Nelson as the sole panelist in this matter on December 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
Complainant is the owner of at least three United States Trademark Registrations for STUART WEITZMAN. Specifically, Complainant owns at least the following trademark registrations:
Country/Territory
Reg. no.
Mark
Classes
Date of Registration
United States
1386002
STUART WEITZMAN
18 and 25
March 11, 1986
United States
2749908
STUART WEITZMAN
35
August 12, 2003
United States
3474821
STUART WEITZMAN (stylized)
18, 25 and 35
July 29, 2008
The disputed domain name appears to have been registered on April 20, 2013. The operational website at "www." resolves to an active website promoting the sale of STUART WEITZMAN branded boots and footwear. The website appears to feature trademarks owned by Complainant. 5. Parties' Contentions A. Complainant
Complainant is a well-known and successful designer, manufacturer, and retailer of women's footwear and handbags. Complainant sells high quality goods to consumers through its chain of retail stores, partnerships with department stores, and on its website at "".
Complainant has expended a great deal of time, effort and money in developing and promoting its name and STUART WEITZMAN branded products including women's footwear and handbags. The retail store services and products offered by Complainant have been the subject of numerous editorials in a number of leading domestic and international magazines and journals, including magazines and journals distributed worldwide such as Vogue, Harper's Bazaar, and Elle, among others.
As a result of extensive sales, marketing and advertising in the United States and throughout the world, Complainant has developed a substantial reputation and goodwill worldwide in its business, in its trademarks and in the goods and services to which it supplies by reference to its marks.
Complainant owns several United States Trademark Registrations for STUART WEITZMAN.
The disputed domain name is confusingly similar to Complainant's STUART WEITZMAN trademark.
Respondent has no rights or legitimate interests in the disputed domain name.
Respondent registered and is using the disputed domain name in bad faith. 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 in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a formal Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in 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
Complainant has established that it owns prior rights in the STUART WEITZMAN trademark and the disputed domain name is confusingly similar to Complainant's STUART WEITZMAN trademark.
Complainant owns at least three STUART WEITZMAN trademark registrations in the United States. The relevant priority dates for all of these registrations precede the date upon which the disputed domain name was registered (i.e., April 20, 2013).
Accordingly, Complainant has established rights in its STUART WEITZMAN mark pursuant to Policy, paragraph 4(a)(i). See Janus International Holding Co. v. Scott Rademacher,WIPO Case No. D2002-0201 (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. The respondent has the burden of refuting this assumption).
The disputed domain name, , is confusingly similar to Complainant's STUART WEITZMAN trademark because the disputed domain name incorporates the entirety of Complainant's STUART WEITZMAN trademark and merely adds a generic descriptive term immediately behind the trademark (i.e., "-5050"), along with the generic Top-Level Domain ("gTLD") ".com" suffix.
Neither the addition of purely descriptive terms to a well-known mark nor the addition of a gTLD suffix is sufficient to create a distinct domain name capable of overcoming a proper claim of confusing similarity. See Arthur Guinness Son & Co. (Dublin) Limited v. Tim Healy/BOSTH,WIPO Case No. D2001-0026 (finding confusing similarity where the domain name contains the identical mark of the complainant combined with a generic word or term); see also, Montage Hotels & Resorts, LLC v. Daniel Kirchhof/Unister GmbH,WIPO Case No. D2011-1042 (finding the addition of the geographic term "Beverly Hills" to Complainant's MONTAGE trademark created a domain name that was confusingly similar to Complainant's trademark); see also, Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409 (finding that "[n]either the addition of an ordinary descriptive word […] nor the suffix ".com" detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY" and thus Policy, paragraph 4(a)(i) is satisfied).
Confusing similarity is especially acute in this case where the generic or merely descriptive term (i.e., "-5050") simply suggests that products associated with Complainant's STUART WEITZMAN trademark are being offered at a discount. See ACCOR, Société Anonyme à Directoire et Conseil de surveillance v. Tigertail Partners,WIPO Case No. D2002-0625 ("confusion is only heightened when the generic word added by Respondent is descriptive of the Complainant's goods or services marketed in relation to the trademark").
Accordingly, the addition of the term "-5050" directly behind Complainant's STUART WEITZMAN trademark is insufficient to avoid a finding of confusing similarity.
The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Respondent has failed to file a formal Response, which can suggest, in appropriate circumstances, that Respondent lacks rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse.,WIPO Case No. D2000-1221 (finding that the respondent's failure to respond in a UDRP proceeding can be construed, in appropriate circumstances, as an admission that it has no rights or legitimate interests in a domain name).
By not filing a formal Response, Respondent has not provided any evidence that it is commonly known by the disputed domain name, or that it is commonly known by any name consisting of, or incorporating the words "stuart", "weitzman", "5050" or any combination of these words and numbers. In Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403, the panel held that a lack of rights or legitimate interests could be found where (1) the respondent is not a licensee of the complainant; (2) the complainant's rights in its related trademarks precede the respondent's registration of the domain name; and (3) the respondent is not commonly known by the domain name in question. The Panel notes that by not submitting a formal Response, Respondent also failed to provide any evidence that it may be a licensee of Complainant or that its registration of the disputed domain name predates the establishment of Complainant's rights in its STUART WEITZMAN trademark.
Complainant has provided unrebutted evidence showing that Respondent is operating a website at "www." featuring the sale of boots and footwear. The Panel notes that the website does not disclose the ((lack of) relationship between Complainant and Respondent. Respondent's decision to add a common descriptive term (i.e., "-5050") to a well-known trademark for the purposes of attracting Internet users to Respondent's own website does not instill Respondent with rights or legitimate interests in the composite name or mark. See Chanel, Inc. v. Estco Technology Group,WIPO Case No. D2000-0413 (finding that use of a famous trademark to attract the public to a website is not a fair or legitimate use of the domain name, and ordering the transfer of and to complainant).
Moreover, the corresponding website operating in association with the disputed domain name is using Complainant's STUART WEITZMAN trademark to promote and sell goods purportedly offered by Respondent. This type of use of another's trademark mark can never create rights or legitimate interests in a corresponding domain name. See Swarovski Aktiengesellschaft v. skouta sekio/PrivacyP,WIPO Case No. D2013-0643.
The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
The Panel finds that Respondent registered and is using the disputed domain name in bad faith.
Given the well-known nature of Complainant's STUART WEITZMAN trademark, and Respondent's advertising, promotion and sales of footwear associated with the STUART WEITZMAN trademark, the Panel finds that Respondent likely chose the disputed domain name with full knowledge of Complainant's rights in the STUART WEITZMAN trademark. Supporting this conclusion is the fact Respondent is directly targeting Complainant on its website as part of the products it offers. See Kraft Foods (Norway) v. Fredrik Wide and Japp Fredrik Wide,WIPO Case No. D2000-0911 ("the fact that Respondent chose [sic] to register a well-known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name [at issue]").
The Panel also finds that Respondent's use of the disputed domain name is an attempt by Respondent to intentionally attract, for commercial gain, Internet users to Respondent's website by creating a likelihood of confusion with Complainant's STUART WEITZMAN trademark as to the source, sponsorship, affiliation, or endorsement of Respondent's website. This ongoing activity is a direct violation of paragraph 4b(iv) of the Policy, and is evidence of bad faith registration and use.
The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(iii). 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.
Gary J. Nelson
Sole Panelist
Date: December 16, 2014
Full & Egal Universal Law Academy