The Complainant is Stuart Weitzman IP, LLC of New York, New York, United States of America (“USA”), represented by The Gioconda Law Group PLLC, USA.
The Respondent is Ye Li of Shanghai, China. 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 October 7, 2014. On October 8, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 9, 2014, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 21, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 10, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 11, 2014.
The Center appointed Dawn Osborne as the sole panelist in this matter on November 18, 2014. 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 a designer, manufacturer and retailer of women’s footwear and handbags. The Complainant is the owner of registered trade marks in the USA for STUART WEITZMAN for handbags, shoes and retail store services with first use in commerce recorded as 1978.
The Domain Name was registered in 2011. It has been offered for sale on the Sedo domain name marketplace and has been used as a parking page with links to products similar to those offered by the Complainant, but offered by its competitors. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions can be summarized as follows:
The Complainant is a well-known and successful designer, manufacturer and retailer of women’s footwear and handbags. The Complainant sells its goods to consumers through its chain of retail stores, partnerships with department stores and on its web site “www.m”. As a result of extensive sales, marketing and advertising in the USA and throughout the world the Complainant has developed a substantial reputation and goodwill worldwide in its business, in its trade marks and in the goods and services to which it supplies by reference to its marks.
The Complainant is the owner of registered trade marks in the USA for STUART WEITZMAN for handbags, shoes and retail store services. The Complainant has made substantially exclusive and continuous use of the STUART WEITZMAN mark in commerce long prior to the registration of the Domain Name. The STUART WEITZMAN mark is highly distinctive and symbolizes substantial goodwill.
The Domain Name fully incorporates the STUART WEITZMAN mark. A domain name is confusingly similar to a complainant’s mark even though the domain name eliminates a space found between words in the mark and adds a country code Top-Level Domain (“ccTLD”) such as “.co”. As such, the Domain Name is confusingly similar to the Complainant’s trade mark.
The Respondent is not using the Domain Name in connection with any bona fide offering of goods and services because the Domain Name resolves to a parked web site that promotes various generic hyperlinks including “Fashion Designer Bags” , “Womenas [sic] Shoes” , “Leather Women’s Clothing”, “Designer Shoes Brands”, and “Clothing Designer”. A number of the links lead to industry competitors of the Complainant. Nor is this use legitimate noncommercial use or fair use of the Domain Name. The Respondent is not commonly known by the Domain Name and has no authorisation to use it from the Complainant. The Respondent has no rights or legitimate interests in respect of the Domain Name
The Respondent registered the Domain Name well after the Complainant’s registration of the STUART WEITZMAN trade mark. As such, it is an opportunistic registration to trade off the goodwill inherent in that mark.
The Respondent has offered the Domain Name for sale to the general public for an amount in excess of the costs of registration showing its bad faith under the Policy.
Finally, the Domain Name is being used to attract Internet users to a parked web site for the Respondent’s commercial gain. When a domain name is parked, the Respondent is still responsible for the content attached to the Domain Name and is benefitting from the misleading domain name by receiving click through fees or free parking.
As such, the Domain Name was registered and is being used in bad faith.
The Domain Name is being offered for sale on the Sedo domain marketplace. The Complainant has offered to buy the Domain Name twice for USD 100 and received multiple counteroffers from the Respondent in the sum of USD 8,000. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
The Respondent has no rights or legitimate interests in respect of the Domain Name; and
The Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Domain Name consists of the Complainant’s mark STUART WEITZMAN registered in the USA. The use of the cctld “.co” for Colombia and sometimes used to mean “company” does not serve to distinguish the Domain Name from the Complainant’s STUART WEITZMAN trade mark. As such, the Domain Name is confusingly similar to a trade mark in which the Complainant has rights for the purpose of the Policy. B. Rights or Legitimate Interests
The Respondent has not filed a Response, does not appear to have any trade marks associated with the name Stuart Weitzman. There is no evidence that it is commonly known by this name and it does not have any consent from the Complainant to use this name. It does not appear to have used the Domain Name for any bona fide offering of services of its own. Accordingly, the Panel finds that the Respondent does not have any rights or legitimate interests in the Domain Name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out non-exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including:
“circumstances indicating that [the Respondent has] registered or [has] 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 [its] documented out-of-pocket costs directly related to the domain name;” (paragraph 4(b)(i))
The Respondent has offered the Domain Name for sale generally and, specifically to the Complainant for USD 8,000. The Respondent has given no satisfactory reason why it has registered a domain name comprising the trade mark STUART WEITZMAN belonging to the Complainant and a ccTLD. Accordingly, the Panel finds on the balance of probabilities that the Respondent has registered or acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring them to the Complainant who is the owner of the trademark STUART WEITZMAN or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name. The Panel, therefore, finds that bad faith has been demonstrated under paragraph 4(b)(i) of the Policy.
Paragraph 4(b) of the Policy also says that, inter alia, it shall be evidence of the registration and use in bad faith of a domain name where there are circumstances where, by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location. Reviewing the evidence of third party hyperlinks posted at the Domain Name web site which point to third party web sites competing with the Complainant, the Panel finds that the Respondent has attempted to attract and cause confusion amongst Internet users between the Complainant’s marks and its goods and the goods offered by third party competitors of the Complainant on links operated at the website attached to the Domain Name for commercial gain. As such, the Panel finds that the Complainant has made out its case under para 4(b)(iv) of the Policy.
Accordingly, the Panel finds that the Domain Name has been registered and used 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 Domain Name be transferred to the Complainant.
Dawn Osborne
Sole Panelist
Date: November 25, 2014
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