The Complainant is Stuart Weitzman IP, LLC of New York, New York, United States of America, represented by The Gioconda Law Group PLLC, United States of America.
The Respondent is wang zhu zhu, Wang ZhuZhu of Xi’an, Shanxi, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Xiamen Nawang Technology Co., Ltd (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 30, 2015. On May 1, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 5 and 6, 2015, the Registrar transmitted by email to the Center its verification responses confirming that the Respondent is listed as the registrant and providing the contact details.
On May 6, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On May 9, 2015, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 in both Chinese and English, and the proceeding commenced on May 12, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 1, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 2, 2015.
The Center appointed Jonathan Agmon as the sole panelist in this matter on June 9, 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, Stuart Weitzman IP, LLC, is an American company which designs and markets women's handbags and footwear sold worldwide, under the STUART WEITZMAN mark.
The Complainant is the owner of trademark registrations for the mark STUART WEITZMAN. For example: United States trademark registration no. 1386002 STUART WEITZMAN, registered on March 11, 1986, United States trademark registration no. 2749908 STUART WEITZMAN, registered on August 12, 2003 and United States trademark registration no. 3474821 STUART WEITZMAN (logo), registered on July 29, 2008.
Through extensive use around the world, the STUART WEITZMAN trademark has generated vast good will and has become famous in connection with women’s footwear and handbags.
The Complainant also developed a formidable presence on the Internet and is the owner of the domain name .
The disputed domain name was registered on March 25, 2015.
The disputed domain name leads Internet users to a website that offers for sale, prima facie counterfeit goods bearing the Complainant’s STUART WEITZMAN mark, while displaying the STUART WEITZMAN trademark and logo. 5. Parties’ Contentions A. Complainant
The Complainant argues that the disputed domain name is identical or confusingly similar to the Complainant’s trademark.
The Complainant further argues that the disputed domain name resolves to a website, which offers for sale identical products to the products of the Complainant.
The Complainant further contends that the website under the disputed domain name displays the Complainant’s trademark.
The Complainant further argues that the Respondent is not known by the disputed domain name and has no rights in the mark STUART WEITZMAN.
The Complainant further argues that it had never granted, assigned, licensed, sold or transferred the Respondent any rights in the STUART WEITZMAN trademark in any manner.
The Complainant further argues that the Respondent registered and is using the disputed domain name in bad faith. The Complainant further contends that the Respondent uses the disputed domain name for commercial purposes, by creating a false impression that the disputed domain name is associated with the Complainant.
The Complainant further argues that the Respondent’s sale of prima facie counterfeiting STUART WEITZMAN branded products, under the Complainant’s trademark, amounts to bad faith.
The Complainant further argues that the Respondent was aware of the Complainant’s existence and of the STUART WEITZMAN trademark and products at the time it registered the disputed domain name.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Procedural Issue – Language of the Proceeding
Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The language of the Registration Agreement for the disputed domain name is Chinese.
The Complainant requested that the language of the proceeding be English.
The Panel cites the following with approval:
“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004).
In deciding the language of the proceeding, the Panel takes the following into consideration:
a) The disputed domain name consists of Latin characters, rather than Chinese characters;
b) According to the evidence provided by the Complainant, the disputed domain name resolves to a website operating and displaying content in English;
c) The Respondent did not object to the Complainant’s request that English be the language of the proceeding.
Upon considering the above, the Panel concludes, according to the Rules, paragraph 11(a), that there is no prejudice or unfairness to the Respondent for this proceeding to be conducted in English and for its decision to be rendered in English. Accordingly, the Panel determines that the language of this administrative proceeding be English. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant is the owner of trademark registrations for the mark STUART WEITZMAN. For example: United States trademark registration no. 1386002 STUART WEITZMAN, registered on March 11, 1986, United States trademark registration no. 2749908 STUART WEITZMAN, registered on August 12, 2003 and United States trademark registration no. 3474821 STUART WEITZMAN (logo), registered on July 29, 2008.
The disputed domain name differs from the registered STUART WEITZMAN trademark by additional hyphen between the literal elements “stuart” and “weitzman”.
The disputed domain name integrates the Complainant’s trademark STUART WEITZMAN in its entirety, as a dominant element, with additional hyphen which does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant’s trademark.
Previous UDRP panels have ruled that the mere addition of a non-significant element does not sufficiently differ the domain name from the registered trademark: “[t]he incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark” (Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505). Also, “the trademark RED BULL is clearly the most prominent element in this combination, and that may cause the public to think that the domain name is somehow connected with the owner of RED BULL trademark” (Red Bull GmbH v. PREGIO Co., Ltd.,WIPO Case No. D2006-0909).
Also, the addition of a generic Top-Level Domain (“gTLD”) “.net” to the disputed domain name does not avoid confusing similarity. See, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Thus, the gTLD “.net” is without legal significance since use of the gTLD is technically required to operate the disputed domain name and it does not serve to identify the source of the goods or services provided by the registrant of the disputed domain name.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is identical or confusingly similar to the trademarks in which the Complainant has rights. C. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. Paragraph 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
In the present case, the Complainant has demonstrated that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.
The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the STUART WEITZMAN trademark, or a variation thereof, and the evidence presented indicates that the Respondent is not engaged in a bona fide offering of goods or services, as discussed further below.
The Respondent has not submitted any Response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name that is sufficient to rebut the Complainant’s prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. D. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii) of the Policy.
The Complainant submitted evidence, which shows that the Respondent registered the disputed domain name long after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant owns a registration for the STUART WEITZMAN trademark since the year 1986. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
The Complainant also provided evidence to demonstrate its trademark’s vast goodwill. The Panel cites the following with approval: “[t]he Respondent’ selection of the disputed domain name, which wholly incorporates the Trade Mark, cannot be a coincidence. […] Given the fame of the Trade Mark, there is no other conceivable interpretation of the Respondent’s registration and use of the disputed domain name other than that of bad faith” (Swarovski Aktiengesellschaft v. Zhang Yulin, WIPO Case No. D2009-0947).
Paragraph 4(b)(iv) of the Policy provides that it will be evidence of bad faith registration and use by a respondent, if by using the domain name it had intentionally attempted to attract, for commercial gain, Internet users to the websites or other on-line locations to which the disputed domain name is resolved to, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the websites or locations or of a product or service on the websites or locations to which the domain name resolves to.
The disputed domain name leads Internet users to a website that engages in the marketing of prima facie counterfeit STUART WEITZMAN goods. The Respondent’s use of the trademark STUART WEITZMAN to promote similar or identical goods to the goods being offered by the Complainant is clear evidence that the Respondent registered and is using the disputed domain name with knowledge of the Complainant and of the use the Complainant is making in its STUART WEITZMAN trademark, and indicates that the Respondent’s primary intent with respect to the disputed domain name is to trade off the value of these by creating confusion with the Complainant’s mark as to the source or affiliation of the website. In this respect, the Panel notes that the website of the disputed domain name misleadingly says “Please remember our official website: www.”. The Respondent’s actions therefore constitute bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith”.
Furthermore, the disputed domain name is confusingly similar to the Complainant’s trademark. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (see E, Inc v. Triple E Holdings Limited,WIPO Case No. D2006-1095). To this end, prior WIPO UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.
Based on the evidence presented to the Panel, including the late registration of the disputed domain name, the use of the Complainant’s trademark in the disputed domain name, the similarity between the disputed domain name and the Complainant’s mark, and the website at the disputed domain name, the Panel draws the inference that the disputed domain name was registered and used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy. 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.
Jonathan Agmon
Sole Panelist
Date: June 23, 2015
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