Complainant is Badgley Mischka, LLC of Huntington Beach, California, United States of America (“United States”), represented by CSC Digital Brand Services Group AB, Sweden.
Respondent is Ariel Fein of Los Angeles, California, United States, self-represented. 2. The Domain Names and Registrar
The disputed domain names and (the “Disputed Domain Name”) are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 29, 2018. On August 29, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 29, 2018, 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 31, 2018. Respondent did not file a substantive Response, but sent informal email communications to the Registrar on September 1, 2018, and to the Center on September 7, 2018. On September 5, 2018, the Center sent to the Parties a communication regarding possible settlement. On September 7, 2018, the Center received a reply from Complainant that it has decided to proceed with the proceeding. In accordance with the Rules, paragraph 5, the due date for Response was September 20, 2018. On September 21, 2018, the Center informed the Parties that it will proceed to appoint the Panel.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on September 25, 2018. 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 Complaint was filed on behalf of “Badgley Mischka, LLC”, but the Complaint also refers to “Badgley Mischka Licensing LLC” as “Complainant”. Accordingly, the Panel considers both entities as Complainant, and references herein to “Complainant” or “Badgley Mischka” shall be construed as a reference to either one individually or both jointly, as the context may require.
Complainant states that “[t]he brand ‘BADGLEY MISCHKA’ was founded in 1988 by American fashion designers Mark Badgley and James Mischka”; that it has been “[h]ailed by Vogue magazine as one of the ‘Top 10 American Designers’”; that “Badgley Mischka has flourished into a true lifestyle brand recognizable worldwide” that “includes multiple product categories such as eveningwear, day dresses, sportswear, outerwear, bridal, swimwear, footwear, handbags, eyewear, timepieces and jewelry and most recently home furnishing”; that its products are sold “in the most prestigious stores in the world including Bergdorf Goodman, Neiman Marcus, Saks Fifth Avenue, Harrods and Harvey Nichols in addition to the Badgley Mischka flagship boutique in Beverly Hills”; and that it “has store locations in over 45 countries worldwide with boutique locations in some of the largest cities in the world including: the United States, China, and Italy. In the United States, Complainant’s products are sold in over 46 locations across 26 cities.”
Complainant states, and provides evidence to support, that it owns multiple trademark registrations for marks that consist of or contain the mark BADGLEY MISCHKA, including United States Reg. No. 2,939,742 for the mark BADGLEY MISCHKA for use in connection with “Women’s clothing; namely, dresses, gowns, suits, coats, pants, skirts, blouses, sweaters, veils [, lingerie and loungewear; and mens clothing; namely, jackets, trousers, shirts, coats and sweaters]” (registered on April 12, 2005). These trademarks are referred to herein as the “BADGLEY MISCHKA Trademark.”
The Disputed Domain Names were created on July 30, 2013 () and July 7, 2013 (), and are being used in connection with monetized parking pages that include links related to the BADGLEY MISCHKA Trademark, such as links labeled “Swimsuit and Swimwear” and “Bikini Bathing Suits”.
Complainant sent demand letters to Respondent on June 27, 2018 (via Registrar), July 4, 2018, and July 13, 2018. On July 4, 2018, Respondent sent an email to Complainant stating, “I bought these domains on behalf of AHschrieber co. Who held the license [sic]”. On July 20, 2018, Respondent sent an email to Complainant stating, “I purchased the websites. They cost me a lot of money. They do not directly infringe on any patents. I have retained counsel for this matter. If your client would like to purchase them from me, make me an offer. Otherwise, stop harassing me”. 5. Parties’ Contentions A. Complainant
Complainant contends, in relevant part, as follows:
- The Disputed Domain Names are confusingly similar to the BADGLEY MISCHKA Trademark because “[i]n creating the Disputed Domain Names, Respondent has added the generic, descriptive terms ‘swim’ and ‘swimwear’ to Complainant’s BADGLEY MISCHKA trademark, thereby making the Disputed Domain Names confusingly similar to Complainant’s trademark. The fact that such terms are closely linked and associated with Complainant’s brand and trademark only serves to underscore and increase the confusing similarity between the Disputed Domain Names and Complainant’s trademark”.
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because, inter alia, “Respondent is not sponsored by or affiliated with Complainant in any way”; “Complainant has not given Respondent permission to use Complainant’s trademarks in any manner, including in domain names”; and “Respondent is not commonly known by the Disputed Domain Names” given that “the pertinent WhoIs information identifies the Registrant as ‘Ariel Fein’ which does not resemble the Disputed Domain Names in any manner”.
- The Disputed Domain Names were registered and are being used in bad faith because, inter alia, “[b]y registering domain names that incorporate the Complainant’s BADGLEY MISCHKA trademark in its entirety and including terms like ‘swim’ and ‘swimwear’ which relate to Complainant’s business, the Respondent has created domain names that are confusingly similar to Complainant’s BADGLEY MISCHKA trademark”; “[t]he presence of third-party, pay-per-click links at the Disputed Domain Names’ websites is evidence of bad faith registration and use”; and “the pay-per-click links found at the Disputed Domain Names would be the result of, at minimum, Respondent’s inactive, non-use of the domain names, or at worst, a concerted effort to participate in and facilitate the monetization of the Disputed Domain Names by parking it and featuring third-party links”. B. Respondent
Respondent did not submit a formal Response. However, Respondent sent an email to the Registrar on September 5, 2018 (which the Registrar forwarded to the Center), stating, “You can transfer these domains to them. Let me know what you need from me”. Thereafter, on September 6, 2018, the Center sent an email to the parties regarding “settlement options”, after which Complainant sent an email to the Center on September 7, 2018, stating, “After much careful consideration, Complainant has decided to proceed with the UDRP proceeding”. In response thereto, Respondent sent an email to the Center on September 7, 2018, stating, “I don’t get it. They want the websites. I’m willing to give it to them. What’s the point of all this?” 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and (iii) the Disputed Domain Names have been registered and are being used in bad faith. Policy, paragraph 4(a). A. Identical or Confusingly Similar
Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the BADGLEY MISCHKA Trademark.
As to whether the Disputed Domain Names are identical or confusingly similar to the BADGLEY MISCHKA Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Names only (i.e., “badgleymischkaswim” and “badgleymischkaswimwear”) because “[t]he applicable Top-Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1.
Each of the Disputed Domain Names contains the BADGLEY MISCHKA Trademark in its entirety. As set forth in section 1.7 of WIPO Overview 3.0, “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”. Here, the additional words “swim” and “swimwear” do not prevent a finding of confusing similarity between the BADGLEY MISCHKA Trademark and the Disputed Domain Names. WIPO Overview 3.0, section 1.8.
Accordingly, the Panel finds that Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Respondent is not sponsored by or affiliated with Complainant in any way”; “Complainant has not given Respondent permission to use Complainant’s trademarks in any manner, including in domain names”; and “Respondent is not commonly known by the Disputed Domain Names” given that “the pertinent WhoIs information identifies the Registrant as ‘Ariel Fein’ which does not resemble the Disputed Domain Names in any manner.”
WIPO Overview 3.0, section 2.1, states: “While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”.
The Panel finds that Complainant has established its prima facie case and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the Policy. C. Registered and Used in Bad Faith
Numerous UDRP panels have found the registration and use of a domain name that is confusingly similar to a complainant’s trademark to constitute bad faith pursuant to paragraph 4(b)(iv) of the Policy where, as here, the domain names are associated with monetized parking pages that contain links for goods or services related to the complainant. See, e.g., Wal-Mart Stores, Inc. v. Whois Privacy, Inc.,WIPO Case No. D2005‑0850; Columbia Pictures Industries, Inc. v. North West Enterprise, Inc.,WIPO Case No. D2006‑0951; and Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Private Whois Service,WIPO Case No. D2011-1753.
Further, as set forth in section 3.5 of WIPO Overview 3.0:
Particularly with respect to “automatically” generated pay-per-click links, panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name (nor would such links ipso facto vest the respondent with rights or legitimate interests).
Neither the fact that such links are generated by a third party such as a registrar or auction platform (or their affiliate), nor the fact that the respondent itself may not have directly profited, would by itself prevent a finding of bad faith.
In addition, the Panel notes that the terms “swim” and “swimwear” in the Disputed Domain Names are clearly related to Complainant’s business.
Accordingly, the Panel finds that Complainant has proven the third element 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 Names and be transferred to Complainant.
Douglas M. Isenberg
Sole Panelist
Date: October 7, 2018
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