The Complainant is ESCADA Luxembourg S.à r.l., Luxembourg, represented by BPM Legal, Germany.
The Respondent is Super Privacy Service LTD c/o, United States of America (“U.S.”). 2. The Domain Name and Registrar
The disputed domain name is registered with Dynadot, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 19, 2019. On May 20, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 21, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 27, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 29, 2019.
The Center verified that the Complaint together with the amended 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 June 3, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 23, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 25, 2019.
The Center appointed Alvaro Loureiro Oliveira as the sole panelist in this matter on July 2, 2019. 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 ESCADA Luxembourg S.a.r.l., the parent company of the ESCADA Group of Companies. The ESCADA Group originated in 1976 and concentrates on luxury womenswear under the ESCADA trademark. The ESCADA Group now comprises several businesses with over 1,500 employees worldwide, operating throughout Europe Union and the U.S..
The Complainant is the owner of the ESCADA trademark and company name, and owns over 750 trademark registrations granted worldwide for the ESCDA Mark, including the U.S. Registration No. 1219137, registered on September 14, 1982. The Complainant has been using the ESCADA Mark since the seventies.
As evidenced by the documents attached to the Complaint, the Complainant’s mark ESCADA was extensively promoted, without limitation, in print advertisements, promotional materials, Internet forums, etc. As stated, the Complainant has a significant portfolio of trademark registrations, domain registrations and a reputation in the ESCADA brand.
The disputed domain name was registered on November 20, 2018 and resolves to a webpage that offers for sale all kinds of shoes. 5. Parties’ Contentions A. Complainant
The Complainant is the owner of the trademark ESCADA, which object of a considerable number of registrations worldwide. Besides the Complainant also owns several domain name registrations. Proof of these allegations was presented as Annexes 5 to 7 to the Complaint. Due to the Complainant’s operations, the ESCADA Mark has acquired international recognition and is necessarily linked to the Complainant.
The ESCADA Mark is associated with the Complainant’s core business. The use of the mark has started more than 40 years ago. The Complainant has been recognized for its luxury products and brand recognition, as show an extensive list of publications and articles from the press, presented as Annex 10 to the Complaint.
Further, as stated by the documents presented, the registration and use of the ESCADA Mark predate the registration of the disputed domain name, and the disputed domain name is confusingly similar to the ESCADA Mark.
The disputed domain name contains the mark ESCADA in association with the term “dresses”. The disputed domain name contains the ESCADA trademark in its entirety. On the other hand, the word “dresses” can be considered as suggestive, as it refers to women’s apparel – and the ESCADA Group is widely known exactly for the luxury women’s apparel, which includes “dresses”.
The disputed domain name directs to a webpage that sells all kinds of shoes, some of them under famous marks but which origin can be questioned. Further, the Complainant alleges that the Respondent falsely states to be “affiliated with the most reputable online retailers (…)”, which can lead the consumers to consider the Complainant validating the trade.
Additionally, the Complainant alleges that the registration and use of the disputed domain name intentionally mislead Internet users, and that the disputed domain name was registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Policy, in its paragraph 4(a), determines that three elements must be presented and duly proven by a complainant to obtain relief. These elements are:
(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 has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The disputed domain name is, indeed, confusingly similar to the ESCADA Mark, as the latter is entirely incorporated in the disputed domain name with the addition of the term “dresses”.
The Complainant has presented consistent evidence of ownership of the ESCADA Mark in jurisdictions throughout the world, by presenting international trademark registrations, as well as comprehensive evidence of the use of the trademark.
The use of the ESCADA Mark with the addition of the term “dresses” in the disputed domain name does not prevent a finding of confusing similarity, on the contrary, leads to it.
Given the above, the Panel finds that the Complainant has met the requirements under the first element of the Policy. B. Rights or Legitimate Interests
There is clear evidence that the ESCADA Mark is registered in the Complainant’s name and is widely known as identifying the Complainant’s activities, and that the Complainant has not licensed this trademark to the Respondent. Hence, the Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. In the absence of a Response, the Respondent has not rebutted such prima facie case.
It has also been shown that the Respondent is making questionable use of the disputed domain name, redirecting it to a website that sells shoes in a clear attempt to relate to the Complainant’s activities.
Besides, the Complainant provided enough evidence of the renown of the mark, especially in the U.S. where the Respondent is based. Hence, the Panel understands that the Respondent should have been aware of the mark and its direct relation to the Complainant.
The Panel, thus, finds for the Complainant under the second element of the Policy. C. Registered and Used in Bad Faith
Given the circumstances of this case, the facts evidence the Respondent’s bad faith in the registration and use of the disputed domain name.
The Respondent intended to give an overall impression that the disputed domain name is associated with the Complainant’s business, and the Panel accepts that the disputed domain name may be intended for unlawful purposes. The Respondent’s redirection to a website that sells shoes further shows that it is attempting to mislead consumers into believing that the disputed domain name is associated or affiliated with the Complainant, when it is not.
All the points above lead to the conclusion by this Panel that the Respondent was fully aware of the Complainant and that the Respondent registered and is using the disputed domain name in bad faith.
The Panel finds that the Complainant has also proved 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 name be transferred to the Complainant.
Alvaro Loureiro Oliveira
Sole Panelist
Date: July 16, 2019
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