Complainant is Sterling Jewelers Inc. of Akron, Ohio, United States of America, represented by Weil, Gotshal & Manges LLP, United States of America.
Respondent is Korey Jimenez / L of Conroe, Texas, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 10, 2012. On February 10, 2012, the Center transmitted by email to GoD, LLC a request for registrar verification in connection with the disputed domain name. On February 10, 2012, GoD, LLC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the disputed domain name.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy, approved by the doMEn d.o.o (“doMEn”) on April 30, 2008 (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy approved by the doMEn d.o.o (“doMEn”) (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy approved by the doMEn d.o.o (“doMEn”) (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on February 21, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 12, 2012. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 13, 2012.
The Center appointed Sandra A. Sellers as the sole panelist in this matter on March 22, 2012. 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 distributes, advertises, promotes and sells jewelry throughout the United States. Complainant has promoted and sold jewelry under the KAY JEWELERS mark and brand since 1919. Complainant was issued a federal registration for the KAY JEWELERS mark in 1999 for retail jewelry store services. Complainant also holds a Canadian trademark registration for the KAY JEWELERS mark. Complainant spends millions of dollars annually promoting the KAY JEWELERS mark through advertisements on television, newspapers, magazines, trade journals, the Internet and its catalog.
Complainant and its related entities have registered numerous domain names incorporating the KAY JEWELERS mark, including , , , , and various derivatives. Since October 1997, Complainant has used its “www.” website to promote its brand and reach potential customers.
Prior to registering the disputed domain name, Respondent registered . Respondent sold that domain name to Complainant in October 2011, two months prior to registering the disputed domain name. Respondent is not authorized or licensed to use any of Complainant’s marks.
Respondent operates businesses under the names “LegalR” and “JD Investment Firm, Inc”.
Respondent registered (and and , which are the subject of a pending UDRP proceeding) in December 2011. The disputed domain name reverts to a web page containing the “Texas Legal Directory”, which appears to be identical to the website that Respondent maintains for its business, LegalR. 5. Parties’ Contentions A. Complainant
Complainant alleges that its mark is internationally recognized, based on its extensive history of selling jewelry and operating retail jewelry stores since 1919, and the advertising, promotion, and sales of these products and services. Complainant alleges that the disputed domain name is confusingly similar to Complainant’s mark because it consists of Complainant’s mark KAY JEWELERS in its entirety, and that the only difference between Complainant’s mark and the disputed domain name is insertion of the country code top-level domain “me”. Complainant further alleges that Respondent has no rights or legitimate interests in the disputed domain name, and that it registered and uses the disputed domain name in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(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
As set forth above, Complainant has used the mark KAY JEWELERS in commerce since at least 1919 for its jewelry and retail jewelry store services. It has federally registered marks for such services, issued as early as 1999. Complainant also holds a Canadian trademark registration. Consequently, the Panel finds that Complainant has rights in the marks alleged to be contained in the disputed domain name.
Complainant also registered and uses and related domain names to promote its products and services. The domain name was registered October 2, 1997.
The disputed domain name consists of Complainant’s mark KAY JEWELERS in its entirety, and that the only difference between Complainant’s mark and the disputed domain name is insertion of the top-level domain “me”. It has long been held that the addition of a top-level domain is irrelevant to the determination of whether the domain name is identical or confusingly similar to a complainant’s mark. The Panel thus finds that the disputed domain name is identical to Complainant’s KAY JEWELERS mark.
Accordingly, the Panel finds that Complainant has rights in the mark and that the disputed domain name is confusingly similar to Complainant’s mark. Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Because it is generally difficult for a complainant to prove the fact that a respondent does not have any rights or legitimate interests in a disputed domain name, previous UDRP decisions have found it sufficient for a complainant to make a prima facie showing of its assertion in the absence of a response.
Respondent is not affiliated with or related to Complainant, nor is Respondent licensed or authorized to use the KAY JEWELERS mark. On the evidence before the Panel, Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name. The Panel is satisfied that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in the disputed domain name.
Respondent is in default, and has not provided any evidence in its own favor.
The Panel finds that the evidence is sufficient to establish that Respondent has no rights or legitimate interests in the disputed domain name, and thus Complainant meets the second criterion of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Respondent clearly had knowledge of Complainant’s KAY JEWELERS mark prior to registering and using the disputed domain name. Respondent previously registered another domain name incorporating Complainant’s mark in its entirety, , which Respondent sold to Complainant for USD 7500.00 in October 2011. Just two months later, Respondent registered the domain name that is the subject of this dispute (as well as and , which are the subject of a separate UDRP case), again incorporating Complainant’s mark in its entirety. Less than a month after registering this disputed domain name, Respondent sent a Domain Name Purchase Agreement to Complainant in an effort to sell this domain name and and to Complainant for USD15,000.00.
The Panel finds that Respondent clearly acquired this domain name for the purpose of transferring it to the Complainant for valuable consideration far in excess of Respondent’s out-of-pocket costs. Respondent, in the Panel’s view, also has engaged in a pattern of abusive registration designed to prevent Complainant from using its mark in corresponding domain names. On these bald facts, this Panel finds Respondent’s registration and use of the disputed domain name to be egregiously and reprehensibly 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 disputed domain name be transferred to Complainant.
Sandra A. Sellers
Sole Panelist
Dated: March 26, 2012
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