Westmore · UDRP DecisionStuartweitzman5050sale.com
The Panel ordered transfer of <stuartweitzman5050sale.com>. It found the domain confusingly similar to the Complainant’s registered STUART WEITZMAN mark because it incorporated the mark in its entirety and the additions “5050,” “sale,” and “.com” did not avoid confusing similarity. The Complainant made a prima facie showing that the Respondent lacked rights or legitimate interests, which the defaulting Respondent did not rebut. The Panel credited the unrebutted assertion that the website offered counterfeit products and also found that the website did not accurately and prominently disclose the registrant’s relationship with the trademark holder. Use of the trademark-bearing domain to sell counterfeit products was found to constitute bad-faith registration and use.
The timeline behind stuartweitzman5050sale.com
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
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The decision illustrates how a trademark-plus-sales-term domain used for allegedly counterfeit commerce can satisfy all three UDRP elements, particularly where the respondent defaults. It also shows that a respondent relying on possible reseller or distributor legitimacy would need supporting evidence and an accurate, prominent disclosure of its relationship with the trademark owner.
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 Stuart Weitzman IP, LLC v. Jimmy Choo Case No. D2014-2158 1. The Parties 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 Jimmy Choo of Virginia, United States of America. 2. The Domain Name and Registrar The disputed domain name <stuartweitzman5050sale.com> is registered with GoDaddy.com, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 11, 2014. On December 11, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 12, 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. In response to the Center request the Complainant filed an amended Complaint on December 15, 2014. 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 December 17, 2014. In accordance with the Rules, paragraph 5(a), the due date for response was January 6, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on January 9, 2015. The Center appointed Evan D. Brown as the sole panelist in this matter on January 19, 2015. 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 following facts, relevant to the Panel’s determination, are set forth in the Complaint and are not disputed by the Respondent. The Complainant is a well-known and successful designer, manufacturer, and retailer of women’s footwear and handbags. It holds several valid and subsisting trademark registration certificates for the STUART WEITZMAN word mark and a stylized form of same (hereinafter, the “WEITZMAN Trademarks”) for handbags, shoes, retail store services featuring shoes, handbags and pocketbooks (see United States trademark registration numbers 1,386,002, 2,749,908 and 3,474,821). The registration certificates for the WEITZMAN Trademarks predate registration of the disputed domain name. The Respondent registered the disputed domain name on November 1, 2014. The Respondent uses the disputed domain name in connection with a website that offers for sale counterfeit versions of the Complainant’s products branded under the WEITZMAN Trademarks. 5. Parties’ Contentions A. Complainant The Complainant asserts that the disputed domain name is identical or confusingly similar to the WEITZMAN Trademarks because, among other things, the disputed domain name fully incorporates the WEITZMAN Trademarks. The Respondent has no rights or legitimate interests in the disputed domain name, according to the Complainant, because the Respondent (a) has neither used nor made demonstrable preparations to use the disputed domain name in connection with any bona fide offering of goods or services, (b) is neither known nor licensed to be known as “Stuart Weitzman”, and (c) is making no legitimate noncommercial or fair use of the WEITZMAN Trademarks. The Complainant argues the disputed domain name was registered and is being used in bad faith because the Respondent, with knowledge of the Complainant’s rights, had the specific goal to profit from the sale of counterfeit or otherwise illegal versions of the Complainant’s products. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (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 mere addition of non-significant elements to a trademark comprising a domain name do not sufficiently differentiate the domain name from the registered trademark: “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark.” See Britannia Building Society v. Britannia Fraud Prevention , WIPO Case No. D2001-0505 . In this case, the disputed domain name contains the Complainant’s trademark STUART WEITZMAN in its entirety, as a dominant element, with additional word and numbers “5050” and “sale” that do not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant’s well-known STUART WEITZMAN trademark. Similarly, the addition of the generic Top-Level Domain (gTLD) “.com” to the disputed domain name typically does not avoid confusing similarity. See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A. , WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows , WIPO Case No. D2000-0003 . Here, the gTLD “.com” is without legal significance since use of a gTLD is technically required to operate the domain name and it does not serve to identify the source of the goods or services provided by the registrant of the domain name. A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen , WIPO Case No. D2014-0657 . The Complainant has demonstrated its rights because it has shown that it is the owner of multiple valid and subsisting trademark registrations for the mark STUART WEITZMAN, as noted above. Accordingly, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests The Panel evaluates this element of the Policy by first looking to see whether the complainant has made a prima facie showing that the respondent lacks rights or legitimate interests in respect of the disputed domain name. If the complainant makes that showing, the burden of production shifts to the respondent. Canon U.S.A., Inc. v. Miniatures Town , WIPO Case No. D2014-0948 , citing: WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1 (after complainant makes prima facie case, the burden of showing rights or legitimate interests in the domain name shifts to the respondent). The Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. By failing to respond to the Complaint, the Respondent did not pick up its burden to demonstrate rights or legitimate interests. And no other facts in the record tip the balance in the Respondent’s favor. Paragraph 4(c) of the Policy instructs respondents on a number of ways they could demonstrate rights or legitimate interests (“you” and “your” in the following refers to the particular respondent): (i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. In this case, the purported offering for sale of unauthorized products cuts against a finding that the Respondent is engaged in a bona fide offering of goods or services. Had the Respondent submitted a response to the Complaint, it might have submitted evidence that the products offered at the disputed domain name were genuine, and advanced an argument casting it as a "reseller" or "distributor." Absent any such evidence, however, the Panel credits the Complainant's assertions that the products on the Respondent's website are counterfeit. In any event, it appears that the website does not accurately and prominently disclose the registrant's relationship with the trademark holder. Therefore, the relevant criteria for determining whether the Respondent is an authorized "reseller" or "distributor" (see Oki Data Americas, Inc. v. ASD, Inc. , WIPO Case No.D2001-0903) have not been met in this case. Further, it does not appear that the Respondent is commonly known by the disputed domain name – the WhoIs record identifies the registrant as “Jimmy Choo.” Nor does it appear that use of the disputed domain name is noncommercial or otherwise a fair use – the website to which the disputed domain name resolves offers for sale products bearing the WEITZMAN Trademarks. The Panel concludes that the Complainant has established that the Respondent lacks any rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith The Policy requires a complainant to establish the domain name was registered and is being used in bad faith. The Policy describes several non-exhaustive circumstances demonstrating a respondent’s bad faith use and registration. Under paragraph 4(b)(iv) of the Policy, a panel may find bad faith when a respondent “[uses] the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent’s] web site or other on-line location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] web site or location or a product or service on [the respondent’s] web site or location.” The Respondent registered and is using the domain name in bad faith. Establishing a website to sell counterfeit products using a domain name that incorporates the Complainant’s mark is what appears to be an example of bad faith registration and use under 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 disputed domain name <stuartweitzman5050sale.com> be transferred to the Complainant Evan D. Brown Sole Panelist Date: January 23, 2015
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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