The Complainant is APP Group (Canada) Inc. of Montreal, Quebec, Canada, represented by SafeBrands, France.
The Respondent is Emily Furr of Palm Springs, California, United States of America (“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 October 22, 2018. On October 22, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 22, 2018, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 31, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 20, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 23, 2018.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on December 3, 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 Complainant was established in 1990 and is based in Montreal as a well-known and prestigious Canadian fashion retailer. Moreover, the Complainant is the parent company of Mackage. The brand Mackage has been launched in 1999 and since then it has become one of the most prestigious contemporary outware and accessories brands worldwide. The Complainant’s products are sold in over twenty countries and three continents, with over 295 stores in the United States.
The Complainant is the owner of numerous registrations throughout the world for the trademark MACKAGE including, among others:
- Canadian Registration No. TMA674998 for MACKAGE registered on October 16, 2006;
- Canadian Registration No. TMA818068 for MACKAGE, registered on February 21, 2012;
- United States Registration No. 4859728 MACKAGE registered on November 24, 2015.
The Complainant is also the owner of numerous domain names composed of the term MACKAGE alone or combined with another element. One of them is the domain name registered since April 28, 1999.
The Disputed Domain Name was registered on July 13, 2016.
The Disputed Domain Name resolves to a website which displays the Complainant’s trademark and its logo in order to sell heavily discounted fashion goods supposedly coming from the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions can be summarized as follows:
Identical or confusingly similar
The Complainant alleges that the Disputed Domain Name reproduces identically the trademark MACKAGE, which is the only distinctive element of the Disputed Domain Name since the word “coats” only, refers to the Complainant’s products and the acronym “us” which refers to one of the main selling country of the trademark MACKAGE. Thus, these additions do not prevent the existence of likelihood of confusion between the Disputed Domain Name and the Complainant’s trademark.
Consequently, the identical reproduction of the trademark MACKAGE into the Disputed Domain Name is sufficient to establish the infringement of the trademark MACKAGE.
Rights or legitimate interests
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. Moreover, the Respondent is not commonly known by the name MACKAGE.
In addition, the Complainant states that the Respondent did not obtain any authorization from the Complainant to use it trademark.
The Complainant alleges that the Respondent could not have ignored the prior rights of the Complainant.
What is more, the Respondent is not using the Disputed Domain Name for a bona fide offering of goods or services.
Registration and use in bad faith
The Complainant alleges that the Respondent has intentionally registered and is using the Disputed Domain Name in bad faith.
The Complainant states that the Respondent registered the Disputed Domain Name with knowledge of the Complainant’s well-known trademark. Moreover, the Respondent website is used in reference to the Complainant. The website linked to the Disputed Domain Name offers for sale products supposedly coming from the Complainant and competing products at discounted price.
In addition, the Complainant attempted to resolve the matter amicably but the Respondent did not collaborate and remained silent. This behavior reinforces the inference of bad faith registration and bad faith use.
Finally, the Respondent registered and used the Disputed Domain Name in an abusive way to take advantage of Internet Users by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which the Complainant must satisfy with respect to the Disputed Domain Name at issue in this case:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which 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 has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Based on the evidence submitted, the Panel finds that the Disputed Domain Name is confusingly similar to the Complaint’s trademark MACKAGE. The Disputed Domain Name wholly incorporates the Complainant’s trademark as its only distinctive element.
Furthermore, the Disputed Domain Name contains the Complainant’s MACKAGE trademark in its entirety; the addition the generic term “coats”, the hyphen and the generic term “us” does not prevent a finding of confusing similarity. Indeed, the addition of the of the terms “coats” increases the confusingly similarity since it refers to the products that are sold under the trademark MACKAGE.
Therefore, the Panel concludes that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service at issue.
There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the trademark in the Disputed Domain Name. The Complainant has prior rights in the trademark, which precede the Respondent’s registration of the Disputed Domain Name. In addition, the Respondent is not known by the Disputed Domain Name.
The Respondent has failed to show that it has acquired any rights with respect to the Disputed Domain Name. Moreover, it had the opportunity to demonstrate its rights or legitimate interests, but it did not reply to the Complainant’s contentions.
As such the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The fact the Disputed Domain Name fully incorporates the Complainant’s trademark is clear evidence that the Respondent was well aware of the Complainant’s trademark at the time the Respondent proceeded with the registration of the Disputed Domain Name. The Disputed Domain Name is comprised of the MACKAGE trademark with addition of the term “coats”, which refers to the products that the Complainant sells under the trademark MACKAGE, a hyphen and the term “us”. The use of “-us” can lead to an inference of being a domain name related to the Complainant’s business in the United States of America, the United States being one of the main selling countries of the products of the Complainant. In addition, many Internet users would assume that the Disputed Domain Name had been registered by the Complainant or an affiliate of the Complainant to promote its business in the United States.
Moreover, the Respondent had created a website using the Complainant’s MAKAGE trademark and its logo. In the website, the Respondent offers Mackage coats at a very low cost. This clearly shows that the Respondent was well aware of the Complainant’s trademark at the time it proceeded with the registration of the Disputed Domain Name, and that the Respondent registered and using the Disputed Domain Name in bad faith.
Paragraph 4(b)(iv) of the policy states: “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
Therefore, taking all the circumstances into account and for all the above reasons, the Panel concludes that the Respondent has 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.
Pablo A. Palazzi
Sole Panelist
Date: December 11, 2018
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