The Complainant is Stuart Weitzman IP, LLC of New York, New York, United States of America, represented by The Gioconda Law Group PLLC, United States of America.
The Respondent is Zhao Ke of Shanghai, China. 2. The Domain Name and Registrar
The disputed domain name is registered with 1API GmbH (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 28, 2014. On October 29, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 4, 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 November 6, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 26, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 1, 2014.
The Center appointed James Bridgeman as the sole panelist in this matter on December 19, 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 and is the registered owner of the following registered trademarks and service marks in the United States of America (hereinafter "Complainant's trademarks"):
STUART WEITZMAN registration number 1,386,002 registered on the Principal Register on March 11, 1986 for the following goods in International classes 18 and 25 for "Handbags and shoes"
STUART WEITZMAN registration number 2,749,908, registered on August 12, 2003 for the following goods and services in international class 35: "Retail store services featuring shoes, handbags and pocketbooks".
STUART WEITZMAN design, registration number 3,474,821 registered on the Principal Register on July 29, 2008 for the following goods and services in International classes 18, 25 and 35: "Handbags, shoes, and retail store services featuring shoes, handbags and pocketbooks"
As no Response or other communication was received from the Respondent, the only information available about the Respondent is that submitted in the Complaint.
The print-out from the WhoIs database submitted by the Complainant gives two dates for the creation of the disputed domain name on August 25, 2014 and August 26, 2014. The date August 26, 2014 was confirmed by the Registrar in its reply to the Center's request for verification as the date on which the disputed domain name was created. The disputed domain name resolves toa website which is a landing page containing pay-per-click hyperlinks of sponsored advertisement, including products sold by the Complainant. In addition, at the bottom of the landing page it states that the disputed domain name is for sale.
It is furthermore noted on the copy of the WhoIs database submitted by the Complainant that the Respondent is associated with 872 other domain names. 5. Parties' Contentions A. Complainant
The Complainant submits that it has rights in the trademark STUART WEITZMAN, relying on the above-listed registered trademarks and its rights at common law established through its long-standing use and promotion of the mark in the United States and throughout the world.
The Complainant submits that it has expended a great deal of time, effort and money in developing and promoting its name and STUART WEITZMAN products including women's footwear and handbags.
The Complainant submits that the disputed domain name is at least confusingly similar to the Complainant's STUART WEITZMAN trademark and personal name. The disputed domain name fully appropriates the STUART WEITZMAN mark. The only distinction between the Complainant's mark and the disputed domain name is that the latter does not have the space found between the words "Stuart" and "Weitzman" and the country code top-level domain ("ccTLD") ".tv" is added.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name, arguing that the Respondent is not currently using the disputed domain name in connection with any bona fide offering of goods or services because the disputed domain name resolves to a parked website that promotes various generic hyperlinks, including a number of links that lead directly to industry competitors of the Complainant.
The Complainant further argues that the Respondent is not commonly known by any name consisting in whole or in part of the wording "Stuart Weitzman" or its substantial equivalent. The WhoIs record shows that the Respondent is commonly known as "Zhao Ke" and not as "".
The Respondent is not an agent of the Respondent. Neither has the Respondent been granted any license to use the STUART WEITZMAN name or mark by the Complainant and is not entitled to use the name or mark without the authorization from the Complainant.
The Respondent has offered the disputed domain name for sale to the general public for an amount in excess of the costs of registration. A copy of the page displaying the disputed domain name for sale on the "Sedo" domain marketplace is attached as an annex to the Complaint.
The Complainant offered to purchase the disputed domain name for USD 100 and received a counter-offer from the Respondent in the sum of USD 8000. A copy of the page displaying the bidding thread for the disputed domain name is attached as an annex to the Complaint. The Complainant submits that the Respondent's willingness to sell the disputed domain name is evidence that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name and therefore lacks rights or legitimate interests in the domain name under Policy, paragraph 4(a)(ii).
The Complainant submits that the disputed domain name was registered and is being used in bad faith arguing that the Respondent registered the disputed domain name in August 2014 which was long after the Complainant's registration of the STUART WEITZMAN trademark. The Complainant submits that the Respondent had at least constructive knowledge of the Complainant's prior rights. These circumstances strongly suggest an opportunistic registration of the disputed domain name by the Respondent to trade off the Complainant's goodwill in its trademark and personal name.
The Complainant further argues that by intentionally misappropriating the Complainant's mark and personal name and by the manner in which the disputed domain name is being used, the Respondent is creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name. The Respondent's actions pose serious harm to the Complainant's goodwill and will continue to tarnish the distinctive, unique, and source-identifying function of the Complainant's trademarks and cause substantial damage to both the Complainant and its reputation.
The Complainant submits that the Respondent's specific goal is to substantially profit from the sale of the disputed domain name. The Complainant's STUART WEITZMAN trademark and personal name have acquired secondary meaning so that the public associates the STUART WEITZMAN trademark exclusively with the Complainant and not with the Respondent.
The Complainant submits that although the disputed domain name resolves to a parked website operated by a domain parking company, the Respondent remains responsible for the content of the website associated with the disputed domain name. The disputed domain name currently resolves to a website that supplies a number of links that lead directly to industry competitors of Stuart Weitzman, and the Respondent is commercially profiting from its promotion of competing hyperlinks in the form of click-through fees (or at least free parking). B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
The Uniform Domain Name Dispute Resolution Policy (hereinafter the "Policy") applies to the Tuvalu ccTLD. In order to succeed in this Complaint, in accordance with to Policy ¶4 the Complainant is obliged prove that
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the 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
The Complainant has established that it has long-standing rights in the STUART WEITZMAN mark through the above-listed United States of America trademark and service mark registrations and use of the mark in commerce.
Having compared the disputed domain name and the Complainant's trademarks this Panel finds that the disputed domain name is identical to the Complainant's STUART WEITZMAN mark. It is well established that when making a comparison for the purposes of the Policy, the TLD suffix ( which in this case is the ccTLD element) may be ignored. Furthermore this Panel finds that the omission of the single space between the words "STUART" and "WEITZMAN" in the disputed domain name does not distinguish the mark and name in any way and may be ignored for the purposes of comparison in the circumstances of the present case.
In the circumstances this Panel finds that the Complainant has succeeded in the first element of the test in Policy ¶4. B. Rights or Legitimate Interests
This Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interest in the disputed domain name arguing that the Respondent is not commonly known by the disputed domain name, that the Respondent is engaged in a commercial use of the disputed domain name; that the disputed domain name is taking unfair advantage of the Complainant's goodwill and reputation in the STUART WEITZMAN mark; that the Respondent has parked the disputed domain name on a website from which it is apparently receiving benefit; that the Respondent is not using the disputed domain name for any bona fide offering of goods or services; that the Respondent is neither an agent or licensee of the Complainant which claims exclusive right to use the STUART WEITZMAN trademark.
In such circumstances it is well established under the Policy that the burden of evidence shifts to the Respondent. In casu, the Respondent has failed to discharge that burden. The Respondent has not filed any Response or made any submissions with regard to the Complaint.
This Panel finds therefore that the Complainant has succeeded in the second element in Policy 4 also. C. Registered and Used in Bad Faith
It is clear from the evidence on file that the Respondent has a wide global reputation and goodwill in the use of the STUART WEITZMAN trademarks in relation to the sale of handbags, shoes, and related goods and retail store services. The Complainant's first trademark registration dates back to March 11, 1986.
Furthermore the disputed domain name is distinctive, being an unusual combination of two personal names. This Panel finds that it is most improbable that the registrant of the disputed domain name was not aware of the Complainant's trademarks and reputation when the disputed domain name was chosen and registered.
Furthermore this Panel finds that on the balance of probabilities the disputed domain name was chosen and registered in order to take predatory advantage of the Complainant's goodwill and reputation in the STUART WEITZMAN mark and name.
The behavior of the Respondent since registration of the domain name supports this finding.
The Respondent has caused the domain name to resolve to a parking page which suggests that the disputed domain name is offered for sale. When the Complainant via the parking page, offered to purchase the disputed domain name, the Respondent requested a price well in excess of what on the balance of probabilities would be the documented out-of-pocket costs directly related to the domain name.
The Respondent, as registrant, remains responsible for the manner in which the disputed domain name is being used. The Respondent is causing, permitting or allowing the disputed domain name to resolve to a website that contains links to competitors of the Complainant thereby using the Complainant's trademarks to attract Internet users by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the website.
In the circumstances this Panel finds that the disputed domain name was registered and is being used in bad faith.
As the Complainant has succeeded in each of the three elements of the test in Policy ¶4, it is entitled to succeed in this Complaint. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, this Panel orders that the disputed domain name be transferred to the Complainant.
James Bridgeman
Sole Panelist
Date: December 22, 2014
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