The Complainant is Aldrich Rockefeller Designs LLC of New York, New York, the United States of America (“USA”), represented by Fross Zelnick Lehrman & Zissu, P.C., USA.
The Respondent is JR Rockefeller of Project Youth of New York, New York, USA. 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 March 30, 2015. On March 31, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 31, 2015, 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 April 17, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 7, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 8, 2015.
The Center appointed Carol Anne Been as the sole panelist in this matter on May 28, 2015. 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 fashion company offering the designs of its founder, Ariana Rockefeller. The founder is a descendant of John D. Rockefeller, an American industrialist, and a member of the wealthy and culturally and politically active Rockefeller family.
The Complainant’s fashion brand was launched in 2011 under the name “Ariana Rockefeller”. The Complainant owns a United States trademark registration for ROCKEFELLER for clothing and retail store services, issued October 8, 2013. The Complainant also owns the domain name , which is used for its main website.
The Respondent obtained the disputed domain name on January 7, 2014, according to WhoIs records. The website at the disputed domain name offers jewelry for sale under the name “Rockefeller Jewelry” as shown on the website. The website displays an address at Rockefeller Plaza in New York City. The WhoIs record gives the Respondent’s address as […] Rockefeller Plaza, New York, New York.
Based on the work of an investigator, the Complainant alleges that there is no listing or presence for JR Rockefeller, Project Youth or Rockefeller Jewelry at the Rockefeller Plaza address. The Complainant alleges that the disputed domain name registrant’s name is Jean-Rodolphe Lavanture, not JR Rockefeller, who told the investigator that he chose the Rockefeller name for his jewelry business because of the quality that the name denotes.
The Respondent did not respond to the Complaint. 5. Parties’ Contentions A. Complainant
The Complainant alleges that the disputed domain name is confusingly similar to the Complainant’s ROCKEFELLER trademark, and that the Respondent has no legitimate interest in the disputed domain name. The Complainant alleges that “JR Rockefeller” is not the registrant name, but rather the individual’s name is Jean-Rodolphe Lavanture. The Complainant alleges that the Respondent has no affiliation with anyone named “Rockefeller” and does not have a business location at Rockefeller Plaza. The Complainant alleges that the Respondent registered and is using the disputed domain name in bad faith because the Respondent has no connection to the Complainant, has made no legitimate use of the ROCKEFELLER mark, and admitted use of a false name, “JR Rockefeller” to register the disputed domain name. The Complainant also alleges that the Respondent’s failure to respond to the Complainant’s cease and desist letter and request for voluntary transfer of the disputed domain name to the Complainant is evidence of bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has established that it holds rights in the trademark ROCKEFELLER and that it uses the trademark in connection with its fashion brand, since prior to the Respondent’s registration of the disputed domain name.
The disputed domain name consists of the Complainant’s registered trademark ROCKEFELLER, followed by the descriptive term “jewelry”. The Complainant’s United States trademark registration does not mention jewelry, and the Complainant does not claim to sell jewelry in its fashion business. However, jewelry is frequently sold together with, and under the same brand as, clothing. Consumers seeing the disputed domain name using “Rockefeller” for “jewelry” are likely to be confused as to the source or sponsorship of the Respondent’s services.
The addition of a term that describes the products offered by the Complainant under its mark, or related products, does not avoid the confusing similarity of the disputed domain name with the Complainant’s trademark. See, e.g., eBay Inc. v. ebayMoving / Izik Apo,WIPO Case No. D2006-1307 (“It is a well-established principle that descriptive or generic additions to a trademark, and particularly those that designate the goods or services with which the mark is used, do not avoid confusing similarity of domain names and trademarks.”)
Thus, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests
The Respondent has not provided any evidence of circumstances to demonstrate rights or legitimate interests in the disputed domain name.
The Complainant claims that there is no evidence that the Respondent has been known by the disputed domain name, nor that the Respondent has any license, permission or other right to use any domain name incorporating the ROCKEFELLER mark. The Complainant claims that the individual is not connected to the Rockefeller family and does not have a location at Rockefeller Plaza. The Complainant claims that the individual using the name “JR Rockefeller”, in communications with an investigator, admitted that “JR Rockefeller” is not his name and that he chose the name because of the quality of the jewelry.
The Respondent has failed to rebut the Complainant’s evidence by providing the Panel with any evidence to show that the Respondent has rights or legitimate interests in the disputed domain name. See, e.g., The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064 (“A number of panels have held that the burden on a complainant regarding the second element is necessarily light, because the nature of the registrant’s rights or interests, if any, in the domain name lies most directly within the registrant’s knowledge. Other panels have held that once the complainant makes a prima facie showing that the registrant does not have rights or legitimate interest in the domain name, the evidentiary burden shifts to the registrant to rebut the showing by providing evidence of its rights or interests in the domain name.”); Allianz, Compañía de Seguros y Reaseguros S.A. v. John Michael,WIPO Case No. D2009-0942 (“In short, Complainant has satisfied its burden of providing sufficient evidence to show that the Respondent lacks rights to or legitimate interests in the disputed domain name, and the Respondent has failed to provide the Panel with any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that Respondent has any rights or legitimate interests in the disputed domain names.”)
Thus, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Evidence of bad faith arises when, among other things, a respondent registers a domain name primarily for the purpose of attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark.
In this case, the Respondent uses the disputed domain name in a manner that is likely to cause confusion as to the source, sponsorship, affiliation, or endorsement of the website and business at the disputed domain name, apparently in an attempt to capture traffic from consumers looking for the Complainant’s ROCKEFELLER fashion and retail store services and to direct such consumers instead to the Respondent’s website associated with the disputed domain name where the Respondent offers a related product, jewelry, for sale.
When the disputed domain name was registered in 2014, the Respondent had constructive knowledge of the Complainant’s trademark registration under United States trademark law. See, e.g., Champion Broadcasting System, Inc. v. Nokta Internet Technologies,WIPO Case No. D2006-0128 (“The Panel notes that both parties are located in the USA and the principle of constructive notice can be applied in accordance with the Rules, Paragraph 15.”)
The Respondent’s apparent use of a false name and address in obtaining the disputed domain name also supports a finding of bad faith. The Registrar’s Domain Name Registration Agreement states that “Failure by you, for whatever reason, to provide Go Daddy with accurate and reliable information on an initial and continuing basis, shall be considered to be a material breach of this Agreement and a basis for suspension and/or cancellation of the domain name.” See, e.g., Forte Communications, Inc. v. Service for Life,WIPO Case No. D2004-0613 (providing false registration information is a factor that can support a finding of bad faith.)
Absent any statement from the Respondent to the contrary, the Panel may infer that the Respondent cannot refute the Complainant’s allegations of bad faith. See, e.g., The Vanguard Group v. Lorna King,WIPO Case No. D2002-1064 (“There is no direct evidence that the Respondent knew of Complainant or its VANGUARD trademark, or intended to use the disputed domain name to confuse and divert Internet users. Nevertheless, the Respondent’s knowledge and intention may be determined by common sense inferences from circumstantial evidence.”)
Thus, the Panel finds that the Respondent registered and used 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 the Complainant.
Carol Anne Been
Sole Panelist
Date: June 11, 2015
Full & Egal Universal Law Academy