The Complainant is Loeffler Randall, Inc., United States of America (“United States”), represented by Tucker & Latifi, LLP, United States.
The Respondent is Lingling Xu, Hong Kong, China. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 20, 2019. On May 21, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 22, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on May 23, 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 4, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 24, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 26, 2019.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on July 9, 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 trades in, among other items, designer handbags, clothing, accessories and footwear. It was established in 2005 and its products are sold in over 250 stores worldwide and online including through Barneys New York, Bergdorf Goodman, Saks Fifth Avenue, Neiman Marcus, Nordstrom, and Net-A-Porter. The Complainant is named after its designer and founder Jessie Loeffler Randall and is the owner of the following trademarks:
LOEFFLER RANDALL, United States Patent and Trademark Office (“USPTO”), registered June 5, 2007, registration number 3249377, class 18;
LOEFFLER RANDALL, USPTO, registered September 25, 2007, registration number 3299090, class 25;
LOEFFLER RANDALL, USPTO, registered September 21, 2010, registration number 3850477, class 25;
LOEFFLER RANDALL, USPTO, registered October 23, 2012, registration number 4230318, class 35.
The Complainant also owns the domain name and the associated website from which it offers goods and services online.
Nothing is known about the Respondent except for the contact details provided when registering the disputed domain name, which was registered on July 19, 2018, and which resolves to a website displaying the Complainant’s trademark and offering clothes, shoes and accessories for sale. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to the trademark LOEFFLER RANDALL in which the Complainant has rights. The Complainant’s trademark predates the disputed domain name. The word RANDALL has been replaced with “outlet” in the disputed domain name with intent to confuse Internet users into associating it with the Complainant.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has not been authorised to use the Complainant’s trademark and has no right to do so. Furthermore, the Respondent is not commonly known by the disputed domain name, which is being used to mislead the public into believing that the associated website is associated with or endorsed by the Complainant.
The Complainant further contends that the disputed domain name was registered and is being used by the Respondent in bad faith. The Respondent is intentionally attempting to attract Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark for commercial gain. The Respondent’s website advertises and offers for sale a variety of products similar to the Complainant’s products and does so in the manner and style of the Complainant’s own website. The Complainant says the images on the Respondent’s website have been copied from the Complainant’s website and appear as though they are the Complainant’s products offered at a large discount.
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
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute-resolution provider, in compliance with the Rules, that:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith”.
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute. A. Identical or Confusingly Similar
The Complainant has produced documentary evidence of its rights in the registered trademark LOEFFLER RANDALL. Confusing similarity with the disputed domain name is to be established by an objective comparison between the two. The generic Top-Level Domain (“gTLD”) “.com” may be disregarded for the purpose.
The disputed domain name reads plainly as “Loeffler outlet”, i.e., suggesting an outlet, being an online or other outlet, for LOEFFLER RANDALL products. The Panel notes that the disputed domain name does not contain the element RANDALL of the Complainant’s trademark and is not identical to the trademark.
The test for confusing similarity under paragraph 4(a)(i) of the Policy is generally an objective, side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. In certain circumstances it may be necessary to extend the consideration into “the overall facts and circumstances of a case (including relevant website content) [that] may support a finding of confusing similarity, particularly where it appears that the respondent registered the domain name precisely because it believed that the domain name was confusingly similar to a mark held by the complainant” (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.7 and 1.15).
Taking into account the nature of the website to which the disputed domain name resolves, the extensive use thereon of the Complainant’s trademark, and the Respondent’s failure to provide any alternative explanation, the Panel finds, on balance, confusing similarity between the disputed domain name and the Complainant’s trademark, and accordingly finds for the Complainant under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has stated a prima facie case to the effect that the Respondent has no rights or legitimate interests to use the Complainant’s trademark in the disputed domain name and has not been authorised or licensed to use the trademark.
Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:
“(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 mark at issue”.
The Respondent has not replied to the Complaint, has not asserted any rights or legitimate interests in the disputed domain name in the terms of paragraphs 4(c)(i), (ii) or (iii) of the Policy or otherwise, and the Panel cannot see any evidence that the Respondent would be likely to establish such rights or legitimate interests. In particular, the Respondent has not claimed to be an authorised reseller of the Complainant’s products or that the offering of goods or services through the Respondent’s website constitutes a bona fide use.
Accordingly, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name, and finds for the Complainant under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or location”.
The provisions of paragraph 4(b) of the Policy are without limitation and bad faith may be found alternatively by the Panel. In the present instance, paragraph 4(b)(iv) of the Policy is pertinent.
The Panel has compared screen captures of the Complainant’s website produced in evidence with those of the Respondent’s website at the disputed domain name (both are undated). The Complainant’s website showed pictures of models wearing variously footwear or a dress, and pictures of one or more shoes, hats, handbags and accessories such as bracelets. The background was predominantly white.
The Respondent’s website showed modelled shoes, a modelled handbag, and a number of photographs of shoes and handbags. The background was predominantly white.
Both the Complainant’s and the Respondent’s websites were headed LOEFFLER RANDALL in a distinctive style in which notably the word RANDALL was in a slightly larger font than LOEFFLER. Both websites had the same look and feel and both offered online shopping.
A notable difference was in the much lower prices shown on the Respondent’s website. A particular style of shoe featured and modelled on the Complainant’s website was named “EMI Block Heel Sandal”, in a silver colour with other colours available, and a raised heel. The model’s pink skirt stopped well above the ankle to show off the shoe. The Complainant’s price was USD 325. The Respondent’s website featured either the same or an apparently indistinguishable version of the shoe that was labelled, not merely “EMI Block Heel Sandal”, but “Loeffler Randall EMI Block Heel Sandal”. It was also modelled below a pink but different skirt of similar length, and priced in the discounted format “$325.00 $41.88”.
The Respondent’s website carried a large banner “UP TO 75% OFF / Spring is Coming / SALE / Right Now! / SHOP NOW”. Few opportunities were available to compare identical products between the websites, but it was clear that the typical Complainant shoe prices were, for example, USD 250 to USD 395. The Respondent offered shoes, every one of them described in the style “Loeffler Randall Juno Kitten Heel Mule Cherry Blossom Velvet”, “Loeffler Randall ... [etc]”, with prices typically in the $35 to $45 range. The Respondent’s purported “Loeffler Randall ...” handbags were typically priced around $50, compared with the Complainant’s handbags in the region of USD 250.
The Complainant has dissociated itself from the products offered for sale on what it refers to as the Respondent’s “Counterfeit Loeffler Randall Website”. On the evidence and on the balance of probabilities, the Panel finds the Respondent to have used the disputed domain name with intent to attract Internet users by confusion with the Complainant’s trademark, for commercial gain, constituting use in bad faith under paragraph 4(b)(iv) of the Policy. The Panel further finds, on the evidence and on the balance of probabilities, and in the absence of any alternative explanation, that the disputed domain name was registered in bad faith for the purpose for which it has been used. Accordingly, the Panel find the disputed domain name to have been registered and used in bad faith 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.
Dr. Clive N.A. Trotman
Sole Panelist
Date: July 15, 2019
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