Westmore · UDRP DecisionSaksfifthavenue-hours.net
The Panel ordered transfer of <saksfifthavenue-hours.net>. It found the Domain Name confusingly similar to the Complainant's SAKS FIFTH AVENUE mark because the addition of the ordinary word “hours” did not avoid confusing similarity. The Respondent's website prominently displayed the Complainant's device mark, offered products, and was presented in a manner calculated to make users believe that it was operated or authorized by the Complainant. The Panel held that this impersonation conferred no rights or legitimate interests and demonstrated bad-faith registration and use, irrespective of whether the Complainant's unsubstantiated phishing suspicion was correct.
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The case illustrates that a domain combining a trademark with an ordinary term may remain confusingly similar, while the associated website's presentation can decisively establish both lack of legitimate interests and bad faith. Here, prominent logo use and the absence of any clear indication of independence supported a finding of deliberate impersonation. The decision also shows that an unsupported phishing allegation need not undermine a complaint where other evidence independently proves the Policy elements.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Saks & Company v. saksfifthavenue-hours.net Case No. D2014-1194 1. The Parties The Complainant is Saks & Company of New York, New York, United States of America, represented by Loeb & Loeb, LLP, United States of America. The Respondent is “saksfifthavenue-hours.net” of Puente Viesgo, Spain. 2. The Domain Name and Registrar The disputed domain name <saksfifthavenue-hours.net> (the “Domain Name”) is registered with Web Commerce Communications Limited dba WebNic.cc (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2014. On July 9, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 10, 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 July 28, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 17, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 18, 2014. The Center appointed Matthew S. Harris as the sole panelist in this matter on August 27, 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 corporation registered in New York. It opened a retail store under the “Saks” name in New York in the early 1900s and has since then expanded its activities so as to open additional stores in various other cities in the United States. The Complainant also operates websites from the domain names <saks.com> and <saksfifthavenue.com>. Its revenues in the last fiscal year were in excess of USD 3 billion. The Complainant is the owner of various registered trade marks around the world that comprise or incorporate the terms “Saks” and “Saks Fifth Avenue”. These trade marks include: (i) United States registered trade mark no. 1,994,280 for the word mark SAKS FIFTH AVENUE for various goods in class 25, with a filing date of November 20, 1992 and a registration date of August 20, 1996; (ii) Community trade mark no. 181206 for the word mark SAKS FIFTH AVENUE for various goods and services in classes 14, 18, 25, 36, 39, and 42, with a filing date of April 1, 1996 and a registration date of March 28, 2001; and (iii) Community trade mark no. 6406466 for a device mark in respect of various services in class 35, with a filing date of November 5, 2007 and a registration date of July 29, 2009, and which takes the following form: It is not clear from the publically available WhoIs details what entity or person is responsible for the registration of the Domain Name, but those details suggest that the Respondent is located in Spain. The Domain Name was first registered on January 8, 2014. It has since that date been used for a website that offers for sale various products including jewellery, sunglasses, shoes, handbags and watches. The website prominently displays a version of the Complainant’s logo and no other person or entity is identified as being responsible for the operation of that website. This website is still operating as at the date of this decision. On one of the pages of that website is the following text: “With over a century in business, a satisfied customer is still our most important goal. We’re proud of our heritage and values, and we invite you to celebrate with exciting events and activities throughout the year. In the meantime, you’re welcome to browse the stories, facts and figures in this section and learn more about our company, our heritage and our history.” 5. Parties’ Contentions A. Complainant The Complainant refers to its corporate history and trade marks. It claims that as a result of its activities, its trade marks have become famous in the United States as well as in many other countries. The Complainant refers to the use of its logo on the Respondent’s website and alleges that this website slavishly copies the layout of the Complainant’s website. It maintains that the Domain Name is clearly confusingly similar to the Complainant’s name and marks in that it comprises the term “Saks Fifth Avenue” and the word “hours” in combination. The Complainant contends that the Respondent can have no rights or legitimate interests in the Domain Name in circumstances where it is being used to divert Internet users searching for the Complainant or its products and services online to the Respondent’s website. It further contends that none of the examples of rights or legitimate interests set out in paragraph 4(c) of the Policy applies. In this respect it asserts that it “believes that the [Respondent] does not actually sell goods to consumers but instead may simply collect customer information, including financial information”. However, the basis for that belief is not further explained or disclosed. So far as bad faith registration and use is concerned, the Complainant contends that “there can be no doubt” that the Respondent registered the Domain Name with full knowledge of the Complainant’s marks. Further it claims that the Domain Name is being used to redirect Internet users to a business in competition with the Complainant, and that this use is said to show bad faith registration and use. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the present dispute based upon the Complaint, notwithstanding the failure of any person to lodge a Response. Notwithstanding this default, it remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. Namely, the Complainant must prove that: (i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and (ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and (iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)). However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”. A. Identical or Confusingly Similar The Complainant clearly has trade mark rights in SAKS FIFTH AVENUE and the Panel accepts that the Domain Name can only sensibly be read as the words “Saks Fifth Avenue” in combination with the ordinary English word “hours” and the “.net” generic Top-Level Domain. The addition of the ordinary word “hours” does not so detract from the trade mark SAKS FIFTH AVENUE as to prevent a finding of confusing similarity under the Policy. The Complainant has, therefore, made out the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests, and Registered and Used in Bad Faith This is a case where it is convenient to consider the issues of “Rights or Legitimate Interests” and “Registered and Used in Bad Faith” together. The reason is that in essence the Complainant contends that the Respondent is impersonating the Complainant in order to lead Internet users into attempting to buy goods from the Respondent’s website in the false belief that they are dealing with the Complainant. The Complainant appears to believe that the Respondent is engaged in phishing from that website. However, whether or not this is the case, such impersonation provides no right or legitimate interest under the Policy and the registration and use of a domain name for such a purpose involves registration and use in bad faith (see paragraph 4(b)(iv) of the Policy and the decision of this Panel in Vestey Group Limited v. George Collins, WIPO Case No. D2008-1308 ). The Panel finds the evidence filed in this respect to be compelling. Particularly persuasive is the fact that the website operating from the Domain Name prominently displays the Complainant’s device mark. The way that this mark is being used on the website makes it clear beyond any reasonable doubt that the Respondent was not only aware of the Complainant’s marks and business when the Domain Name was registered in January this year, but that it is deliberately trying to mislead Internet users into believing that they have arrived at a website that is either operated or authorised by the Complainant. The Complainant may slightly overstate matters when it claims that the website “slavishly” copies the format of the Complainant’s own website. However, there are some similarities in format and there is nothing in the structure or layout of, or text that appears on, the Respondent’s website that would make it obvious to an Internet user that they are not dealing with the Complainant. Further, although it is not expressly relied upon by the Complainant, the Panel takes note of the statement on the Respondent’s website to the effect that the operators of the website have been in business for “over a century”. This can only be sensibly understood as a reference to the Complainant’s business. If this material were essential to the Panel’s finding in this case, the Panel might have put this to the parties for comment; see paragraph 4.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). However, since even in the absence of this material the Panel would have come to the same decision in this case, there is no need to do so. Given this, the Complainant has made out the requirements of paragraphs 4(a)(ii) and (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 <saksfifthavenue-hours.net> be transferred to the Complainant. Matthew S. Harris Sole Panelist Date: August 28, 2014
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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