The Complainant is The Red Dress Boutique, Inc. of Athens, Georgia, United States of America ("United States"), represented by Troutman Sanders, LLP, United States.
The Respondent is Ryan White of North Hills, California, United States. 2. The Domain Name and Registrar
The disputed domain name (the "Disputed Domain Name") is registered with D, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 22, 2015. On June 22, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 22, 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 July 1, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 21, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 22, 2015.
The Center appointed Lynda M. Braun as the sole panelist in this matter on August 4, 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.
The language of the Registrar's terms of service agreement, pursuant to which the Disputed Domain Name is registered, is English. 4. Factual Background
The Complainant is a Georgia corporation based in Athens, Georgia. The Complainant is a provider and retailer, both online and in a retail brick-and-mortar store, of clothing, shoes, jewelry, and fashion accessories. The Complainant began its retail business in 2005 and launched its online site in 2010, currently serving customers throughout the United States. The Complainant owns the United States federal trademark registration for RED DRESS BOUTIQUE, RED DRESS, and a graphic depiction of a little red dress under the RED DRESS BOUTIQUE mark (the "RED DRESS BOUTIQUE Marks"). Continuously used since at least 2005, the RED DRESS BOUTIQUE Marks have long served as distinctive identifiers associated with the Complainant. The Complainant acquired federal and common law rights in the RED DRESS BOUTIQUE Marks many years before the Respondent registered the Disputed Domain Name. The Complainant furthermore was featured on a popular television show in October, 2004, and the Complainant claims to process hundreds of orders each day. The Respondent registered the Disputed Domain Name on February 18, 2015.
The Complainant owns the domain name registration for that it uses as its official website and features its well-known RED DRESS BOUTIQUE Marks in connection with apparel products, accessories and retail store services.
At the time the Complainant filed this Complaint, the Disputed Domain Name resolved to the Respondent's company home web page . The Complainant submitted a screen shot of this page as an annex to its Complaint.1 5. Parties' Contentions A. Complainant
The following are the Complainant's contentions:
- The Disputed Domain Name is confusingly similar to the Complainant's trademarks.
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
- The Disputed Domain Name was registered and is being used in bad faith.
- The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)(i-iii)):
(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 was registered and is being used in bad faith. A. Identical or Confusingly Similar
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.
It is uncontroverted that the Complainant has established rights in the RED DRESS BOUTIQUE Marks based on longstanding use as well as its United States trademark registrations for the RED DRESS BOUTIQUE Marks. The Disputed Domain Name consists of the RED DRESS BOUTIQUE Mark in its entirety along with the term "little", followed by the generic Top-Level Domain ("gTLD") ".com". It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of a descriptive or generic word. Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo,WIPO Case No. D2011-0795. The addition of the descriptive word "little" does nothing to distinguish the Disputed Domain Name from the Complainant's RED DRESS BOUTIQUE Marks. See, e.g., NIIT Ltd. v. Parthasarathy Venkatram,WIPO Case No. D2000-0497 (finding that the "domain name '', which incorporates the word NIIT as a prominent part thereof, is confusingly similar to the Complainant's trade name and trademark NIIT").
Finally, the addition of a gTLD such as ".com" in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether domain names are identical or confusingly similar to a trademark. Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant. B. Rights or Legitimate Interests
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name at issue. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1.
In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant's prima facie case. Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its RED DRESS BOUTIQUE Marks. The name of the Respondent has no apparent connection to the Disputed Domain Name that would suggest that it is related to a trademark or trade name in which the Respondent has rights, as given the Panel's findings under the third element, the Respondent cannot be considered to have been engaged in a bona fide offering of goods or services. The Complainant does not have any type of business relationship with the Respondent.
Accordingly, the second element of paragraph 4(a) has been met by the Complainant. C. Registered and Used in Bad Faith
The Policy identifies the following circumstances that, if found, are evidence of registration and use of the Disputed Domain Name in bad faith:
(i) circumstances indicating that Respondent has registered or has acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent's documented out-of-pocket costs directly related to the Disputed Domain Name; or
(ii) circumstances indicating that the Respondent has registered the Disputed 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 Respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the Respondent has registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that by using the Disputed Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product on Respondent's website or location.
First, bad faith may be found where the Respondent knew or should have known of the registration and use of the RED DRESS BOUTIQUE Marks prior to registering the Disputed Domain Name. Façonnable SAS v. Names4sale,WIPO Case No. D2001-1365. Such is true in the present case in which the Respondent registered the Disputed Domain Name after the Complainant obtained its trademark registrations for the RED DRESS BOUTIQUE Marks. The longstanding and public use of the RED DRESS BOUTIQUE Marks makes it disingenuous for the Respondent to claim that he was unaware that the registration of the Disputed Domain Name would violate the Complainant's rights. See Expedia, Inc. v. European Travel Network,WIPO Case No. D2000-0137 (finding bad faith where the respondent registered the domain name after the complainant established rights and publicity in the complainant's trademarks).
Second, the Respondent's registration of the Disputed Domain Name that is confusingly similar to the Complainant's trademarks is sufficient evidence of bad faith registration and use. See Ebay Inc. v. Wangming,WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 (use of a name connected with such a well-known service and product by someone with no connection to the service and product suggests opportunistic bad faith).
Third, the Respondent first directed the Disputed Domain Name to a website that was in direct competition with the Complainant. This also supports a finding of bad faith. Based on the fame of RED DRESS BOUTIQUE Marks, which are owned and used exclusively by the Complainant, the fact that the Respondent chose a domain name that fully incorporates the RED DRESS BOUTIQUE Marks for a directly competing business demonstrates that the Respondent had knowledge of the RED DRESS BOUTIQUE Marks before he registered the Disputed Domain Name. Moreover, in using the Disputed Domain Name, the Respondent was attempting to free ride on the goodwill created by the Complainant in the RED DRESS BOUTIQUE Marks by implying an endorsement, affiliation or sponsorship with the Complainant, which does not exist.
The Panel finds that the Respondent registered the Disputed Domain Name to attract customers to its own business by using a domain name that is confusingly similar to trademarks owned by the Complainant. The use of a domain name to intentionally attempt to attract Internet users to a registrant's website by creating a likelihood of confusion with a complainant's mark as to the source, sponsorship, affiliation or endorsement of the registrant's website for commercial gain constitutes evidence that the domain name was registered and used in bad faith. Thus, the Respondent's attempt to use the goodwill in the RED DRESS BOUTIQUE Marks by registering the Disputed Domain Name and using that Disputed Domain Name to misdirect visitors to a website advertising and selling products that compete with the Complainant demonstrates the Respondent's bad faith use and registration of the Disputed Domain Name under the Policy. UDRP panels have consistently held that under the "initial interest" doctrine, not only does the incorporation of a trademark in the registration of a domain name fall outside the safe harbor of paragraph 4(c)(iii), it also constitutes a bad faith intention to divert traffic within the meaning of paragraph 4(a)(iii). See W. & G. Foyle Ltd. v. Foyle's Books Ltd.,WIPO Case No. D2000-1544 ("'Initial source confusion' or 'initial interest confusion' may bolster a finding of bad faith under the Policy where respondent's purpose in incorporating a mark in a domain name is to disrupt or misappropriate the trademark owner's business.").
Accordingly, the third element of paragraph 4(a) has been met by the Complainant. 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.
Lynda M. Braun
Sole Panelist
Date: August 6, 2015
1 As of the writing of this decision, however, the Disputed Domain Name resolves to a page stating "Website down for maintenance. Please email info@ for enquiries."
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