Complainants are Kenneth Cole Productions (LlC), LLC and Kenneth Cole Productions, Inc. of New York, United States of America (“United States” or “U.S.”), represented by Katten Muchin Rosenman LLP, United States. Complainants are collectively referred to below as “Complainant” unless the context requires otherwise.
Respondent is Laurie Udy of Layton, Utah, United States, self-represented. 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 25, 2017. On May 26, 2017, the Center transmitted by email to the Registrar a request for registrar verification for the disputed domain name. On May 26, 2017, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on May 31, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 20, 2017. On June 18, 2017, Respondent requested a four-day extension of the deadline to file a Response. In accordance with paragraph 5(b) of the Rules, the Center granted the extension of time. The Response was filed with the Center on June 24, 2017.
The Center appointed Mark Partridge as the sole panelist in this matter on July 3, 2017. 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
Complainant owns U.S. Trademark Registrations for the mark KENNETH COLE for various products and services. Some of the registrations have become incontestable and therefore constitute conclusive evidence of Complainant’s U.S. trademark rights in the mark KENNETH COLE for the goods identified in the registrations. The registrations established evidence of rights in the U.S. in the mark KENNETH COLE back to the earliest filing date for the registrations on July 22, 1983, with the earliest registration date being November 26, 1985.
Respondent acquired the disputed domain name in January 2016. The domain name currently resolves to a GoDaddy parking page. 5. Parties’ Contentions A. Complainant
Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which it has rights. It contends that Respondent has no rights or legitimate interests in the domain name, but is instead using the domain name to deliberately exploit users seeking Complainants website and products. Finally, Complainant contends that the domain name was registered and used in bad faith for commercial gain based on confusion with the Kenneth Cole website and products. B. Respondent
Respondent contends that she immediately disabled the domain name when she received the objection from Complainant. She asserts that she has a legitimate interest in the domain name because she is using the domain name in good faith for a nonprofit campaign in Africa, where the KENNETH COLE brand Is not well-known. Respondent requests that the Panel make a finding of reverse domain name hijacking. 6. Discussion and Findings A. Identical or Confusingly Similar
Complainant has provided evidence of its ownership U.S. Trademark Registrations for KENNETH COLE for a variety of goods and services. The earliest date of rights under these registrations goes back to Reg. No. 1,372,672, filed July 22, 1983, and registered on November 26, 1985. Thus, Complainant has established that it has trademark rights in the mark KENNETH COLE.
The disputed domain name is identical in material part to Complainant’s KENNETH COLE trademark.
The Panel finds that Complainant has met its burden on the first element of its claim. B. Rights or Legitimate Interests
Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. It is undisputed that Respondent is not known by that name, is not licensed or otherwise authorized to use that name, and does not own any trademark rights in the disputed domain name.
Respondent does not contest these facts, but instead asserts that it has a legitimate interest in the name for use in connection with a nonprofit organization in Africa. Respondent, however, has failed to show that it is making bona fide use of the KENNETH COLE name for a nonprofit organization. She seems to erroneously believe that nonprofit use is a defense. It is well-established that use of a mark or domain name for a nonprofit use may nevertheless be illegitimate. Respondent has failed to show that it is making legitimate or fair use of the KENNETH COLE name.
The Panel finds that Complainant has met its burden on the second element of its claim. C. Registered and Used in Bad Faith
Complainant contends that Respondent has registered and used the domain name in bad faith, for several reasons.
First, Complainant contends that the domain name was used in connection with a website for “Secretly Spoiled,” a commercial site selling girls’ apparel. In support of this, Complainant provides screen shots of the commercial site. The Panel agrees that the exhibit shows that the site is commercial, but it does not show use of the disputed domain name in connection with the site. Annex 6 of the Complaint. Complainant also provides a letter to Respondent asserting that that domain name was used in connection with the “Secretly Spoiled” website, but the letter does not show such use either. Annex 7 of the Complaint. Respondent argues the domain name was not used in connection with the Secretly spoiled website. The record is not adequate to resolve this issue. Since Complainant bears the burden of proof, the Panel concludes that the Complaint is not adequate to prevail on this point.
Second, Complainant contends that it is known for supporting charitable activities in Africa and therefore Respondent’s use of the disputed domain name in Africa trades on its goodwill. In support, submits a press release regarding the CFDA Fashion Awards’ Swarovski Award for Positive Change, and a blog post regarding its founder’s trip to Africa. Annex 5 of the Complaint. These efforts by the founder are commendable, of course, but the submission fails show a clear nexus between these efforts and the KENNETH COLE trademark, which is the basis for the Complaint. It is not shown, for example, that the KENNETH COLE trademark is used in connection with fundraising for African charities. Therefore, the Panel does not rely on this point for its decision.
Third, Complainant suggests that the passive holding of the domain name is bad faith registration and use of the disputed domain name because the KENNETH COLE trademark is famous and well-known. That may be, but Complainant has failed to support its bald allegation with evidence. The only evidence it submits on this point are eight U.S. registrations going back to 1985. Therefore, the Panel also does not rely on this point for its decision.
Finally, Complainant contends that bad faith registration and use is established by Respondent’s pattern of registering the well-known names and marks of others. Here, the record is clear and undisputed. Respondent has acquired many domain names associated with others, including (Annex 9 of the Complaint):
GOODYEAR TIRES
AMERICAN GIRLS DOLLS
OLD SPICE
YAHOO NEWS
MOTLEY CRUE
NICK JONAS
PAULA ABDUL
CLAY AIKEN
SARAH MCLACHLAN
Moreover, the registration of obviously prevents Complainant from using its trademark in the .co country code Top-Level Domain (“ccTLD”). The Panel finds that these facts establish a prima facie case for bad faith use and registration.
Respondent attempts to justify registration of these names by stating:
In fact, Respondent has never sold or transferred a domain name to any other person or company. The hope and goal of the nonprofit campaign has been to assist clients with the setup and management of domain names and websites upon which the same would be transferred to the individuals or organizations. These transfers would be the measure of the nonprofits efforts to close the digital divide and will reflect the efforts made by the organization as well as the participants.
In other words, it appears that Respondent intends to give domain names associated with famous names and trademarks of others to individuals and organizations for their use to bridge the digital divide. She may legitimately help bridge the digital divide without taking the names and marks of others and she may certainly operate a nonprofit organization for that purpose without doing so. The Panel finds Respondent’s conduct constitutes bad faith registration and use of the disputed domain name in violation of the Policy.
Respondent’s request for a finding of reverse domain name hijacking is denied. Complainant has a valid interest to protect in the KENNETH COLE trademark and Respondent does not have a legitimate justification for registration and use of the disputed domain name. 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 Complainant.
Mark Partridge
Sole Panelist
Date: August 11, 2017
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