The Complainant is River Light V, L.P. and Tory Burch LLC, United States of America (the “United States” or “U.S.”), represented by Dorf & Nelson LLP, United States.
The Respondent is Domain Admin, Privacy Protect, LLC, United States / Domain Admin, Domain Privacy Guard Sociedad Anónima Ltd, Panama. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 6, 2019. On September 9, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 10, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 10, 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 September 12, 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 September 13, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 3, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 9, 2019.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on October 11, 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 an American lifestyle brand. The Complainant’s collection includes ready-to-wear, shoes, handbags, accessories, and beauty. The Complainant started with a boutique in Manhattan in 2004. Since that time, it has grown into a billion-dollar fashion company with more than 3,000 employees and more than 250 Tory Burch stores worldwide. Annual global sales revenues are in excess of USD 1 billion. The Complainant’s brand has strong media presence in fashion blogs, magazines, newspapers, and talk shows. The Complainant has received many fashion awards.
The Complainant has since 2005 used the trademark TORY BURCH in the United States and in numerous other jurisdictions throughout the world since 2004 / 2005. The Complainant has several U.S. trademark registrations, such as no. 3428373 (registered on May 13, 2008, with a first use in commerce of January 15, 2006). The Complainant registered and launched a web page in 2004. The webpage is home to Tory Daily, an online magazine featuring original content, and the Complainant has an app by that name, which is available on Apple’s App Store, on the Windows Phone Store, and from Google Play.
According to the Registrar, the Respondent registered the Domain Name on April 2, 2007. The Domain Name resolves to a website offering woman clothing and the Domain Name for sale. 5. Parties’ Contentions A. Complainant
The Complainant has documented trademark registrations in the Complaint. According to the Complainant, the Domain Name registration is an example of typosquatting in order to disrupt the business of a legitimate trademark owner.
The Complainant argues that the Respondent has not been commonly known by the Domain Name, and that the Respondent has no history of using the Domain Name in connection with a bona fide offering of goods and services. There is no relationship between the parties. The Respondent offers the Domain Name for sale.
Finally, the Complainant argues that the practice of typosquatting, of itself, is evidence of bad faith, and the use of a proxy server to hide the identity of a registrant, when done in combination with typosquatting, is further evidence of bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has established rights in the trademark TORY BURCH.
The test for confusing similarity involves the comparison between the trademark and the Domain Name. In this case, the Domain Name is identical to the Complainant’s trademark, save the omission of the letter “r”. For the purposes of assessing confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) “.com”.
The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Respondent has no registered trademarks or trade names corresponding to the Domain Name. Nor is there any evidence suggesting that the Respondent has been using “Tory Burch” in a way that would give it rights or legitimate interests in the Domain Name. The Complainant has not granted any authorization to the Respondent.
The Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. It seems the Respondent has registered the Domain Name to sell it.
The Panel finds that the Complainant has made out an unrebutted case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Based on the evidence, it is likely that the Respondent knew of the Complainant’s trademark and its business when the Respondent registered the Domain Name. The Complainant has used its trademark since 2005. The Domain Name was registered in 2007. The fact that the Domain Name resolves to a web page with links to women clothing, and the Domain Name is offered for sale, indicate both bad faith registration and use. The Panel agrees with the Complainant that, in the absence of any credible explanation from the Respondent, this case seems to be a clear example of typosquatting.
The Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of the 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 Domain Name be transferred to the Complainant.
Mathias Lilleengen
Sole Panelist
Date: October 24, 2019
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