Westmore · UDRP DecisionSohofifthavenue.com
The Panel ordered transfer of <sohofifthavenue.com> to Saks & Company. It found the domain confusingly similar to the SAKS FIFTH AVENUE mark based on visual, phonetic, and conceptual similarities, with the website’s imitation of the Complainant’s branding confirming the intended confusion. The Respondent’s use was neither bona fide nor legitimate, and the website showed knowledge of the mark and an intentional attempt to attract Internet users for commercial gain through confusion under paragraph 4(b)(iv) of the Policy.
The timeline behind sohofifthavenue.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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This decision is notable because the domain did not reproduce the entire trademark: it replaced “Saks” with “Soho.” The Panel nevertheless found confusing similarity through the shared “Fifth Avenue” wording and the visual, phonetic, and conceptual relationship between the two expressions. The imitative website played an unusual confirmatory role under the first element and was central to the findings on legitimate interests and bad faith.
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. Sohotofifth / Soho Fifth Case No. D2015-0759 1. The Parties Complainant is Saks & Company of New York, New York, United States of America, represented by Loeb & Loeb, LLP, United States of America. Respondent is Sohotofifth / Soho Fifth of Hyderabad, India. 2. The Domain Name and Registrar The disputed domain name <sohofifthavenue.com> is registered with Name.com LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 28, 2015. On April 28, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 1, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 21, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 22, 2015. The Center appointed Stephanie G. Hartung as the sole panelist in this matter on May 28, 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 Complainant is a company with legal domicile in the State of New York, United States of America that operates a retail store chain. Complainant has provided evidence that it is the registered owner of numerous trademarks worldwide relating, inter alia , to the designation “Saks Fifth Avenue”, e.g. : - Word mark SAKS FIFTH AVENUE, United States Patent and Trademark Office (USPTO); Registration No. 1,994,280; Registration Date: August 20, 1996; registered for various goods in class 25; Status: Active; - Word-/device mark SAKS FIFTH AVENUE (see below), United States Patent and Trademark Office (USPTO); Registration No. 3,368,500; Registration Date: January 15, 2008; registered for various services in class 35; Status: Active; - Word mark SAKS FIFTH AVENUE, Office for Harmonization in the Internal Market (OHIM); Registration No. 00181206; Registration Date: March 28, 2001; registered for various goods and services in classes 14, 18, 25, 36, 39 and 42; Status: Active; - Word-/device mark SAKS FIFTH AVENUE (see below), Office for Harmonization in the Internal Market (OHIM); Registration No. 006406466; Registration Date: July 29, 2009; registered for various services in class 35; Status: Active. Moreover, Complainant has evidenced to be the owner, inter alia , of the domain name <saksfifthavenue.com>, which was created on November 11, 1998 and redirects to Complainant’s official website at “www.saksfifthavenue.com” promoting the SAKS FIFTH AVENUE brand and related products and services. The disputed domain name <sohofifthavenue.com> was created on March 23, 2015; by the time of the filing of this Complaint, it redirected to a website at “www.sohofifthavenue.com”, offering fashion products for online sale by copying the layout of Complainant’s official website and by using the following logo: Complainant requests that the disputed domain name be transferred to Complainant. 5. Parties’ Contentions A. Complainant Complainant contends to be one of the world’s premier retail store chain companies that has been a premier provider of luxury goods for almost 100 years. Complainant opened its first store in New York City in the early 1900s and meanwhile operates 42 “SAKS FIFTH AVENUE” stores and 80 “SAKS FIFTH AVENUE OF 5th” stores worldwide. Complainant purports that it has devoted many millions of dollars to advertising and promoting its services through many media throughout the United States and in other countries and that, as a consequence thereof, Complainant’s SAKS FIFTH AVENUE trademark has become famous throughout the world. Complainant suggests that the disputed domain name is clearly confusingly similar to Complainant’s SAKS FIFTH AVENUE trademark as (1) it subsumes material elements of Complainant’s SAKS FIFTH AVENUE trademark, adding only the modifiers “SOHO” thereto and (2) Respondent’s website leaves no doubt that Respondent’s business model depends on confusion. Complainant further claims that Respondent has no rights or legitimate interests in respect of the disputed domain name since (1) Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services, as it merely purports to offer goods for sale, but instead attempts to collect customer information, including financial information, (2) there is no evidence or reason to infer that Respondent is known as “SOHO FIFTH AVENUE”, and giving the long-standing fame and distinctive nature of Complainant’s SAKS FIFTH AVENUE trademark, it would be nearly impossible for Respondent ever to claim to be commonly known by any derivative thereof and (3) Respondent has not made any legitimate noncommercial or fair use of the disputed domain name, but rather is using it to generate profits through confusion. Finally, Complainant asserts that the disputed domain name was registered and is being used in bad faith by Respondent since there can be no doubt that Respondent registered the disputed domain name with full knowledge of Complainant’s SAKS FIFTH AVENUE trademark and (1) in order to use it to display competitive wares for online sale and/or (2) to treat consumers into providing their personal information without actually selling goods and thereby potentially divert business away from Complainant in a disruptive manner. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, Complainant carries the burden of proving: (i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) That Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) That the disputed domain name has been registered and is being used in bad faith. Respondent's default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(e) of the Rules provides that if Respondent does not submit a Response, in the absence of special circumstances, the Panel is to decide the dispute solely based upon the Complaint. A. Identical or Confusingly Similar The Panel concludes that the disputed domain name is confusingly similar to the SAKS FIFTH AVENUE trademark in which Complainant has shown to have rights. It has become a consensus view among panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, 2nd Edition (“WIPO Overview 2.0”), paragraph 1.2 ) that the application of the confusing similarity test under the UDRP would typically involve a straight forward visual or aural comparison of the concerned trademark with the alphanumeric string in the disputed domain name and that the test is satisfied if the relevant trademark would generally be recognizable as such therein. By the same time, the content of a website under the disputed domain name would usually be disregarded in the threshold assessment of risk of confusing similarity under the first element of the UDRP. Complainant’s trademark SAKS FIFTH AVENUE is composed of Complainant’s company name “Saks” and the term “Fifth Avenue” which refers to a very well-known boulevard in Manhattan/New York City. The disputed domain name is also composed of two terms, namely “Soho”, a well-known neighborhood in lower Manhattan/New York City, and again “Fifth Avenue”. The disputed domain name, therefore, is identical to Complainant’s SAKS FIFTH AVENUE trademark with respect to the term “Fifth Avenue”. It differs therefrom only with respect to the term “Soho” vis-à-vis “Saks”. These two terms, however, again show similarities in that they both start with the letter “s” and that they consist of a total of four letters each. In the Panel’s assessment, Complainant’s SAKS FIFTH AVENUE trademark and the disputed domain name, therefore, show relevant visual as well as phonetic similarities, which are even being rounded up by conceptual similarities, too, resulting from the fact that the terms “Soho” and “Fifth Avenue” both refer to locations in Manhattan/New York City. The Panel agrees with the principle approach that the confusing similarity test under the UDRP is not of similarity between businesses or websites which is why, as a general rule, “the content of a website (whether it is similar or different to the business of a trademark owner)” is irrelevant in the finding of confusing similarity ( WIPO Overview 2.0, paragraph 1.2 ). Looking at the website under the disputed domain name at “www.sohofifthavenue.com”, however, clearly demonstrates that the alphanumeric string “sohofifthavenue” within the disputed domain is identical with the word elements “Soho Fifth Avenue” used by Respondent on that very website to imitate Complainant’s SAKS FIFTH AVENUE word/device mark, presumably for the sake of creating a likelihood of confusion therewith. Against this particular background, the Panel indeed accepts to take knowledge in the case at hand of the content of the website under the disputed domain name as a confirmation of the finding that the disputed domain name has been set up in order to be confusing similar and that it will be perceived as such by the relevant Internet users. As a result, the Panel holds that Complainant has in fact met the burden of the threshold similarity test under the UDRP with sort of a “helping hand” by Respondent (see: RapidShare AG and Christian Schmidt v. majeed randi , WIPO Case No. D2010-1089 ). Therefore, the first element under the Policy as set forth in paragraph 4(a)(i) in the case at hand is fulfilled. B. Rights or Legitimate Interests The Panel is further convinced that on the basis of Complainant’s undisputed contentions, Respondent apparently has neither made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent makes a legitimate, noncommercial or fair use thereof without intent for commercial gain. As already mentioned under Section A. above, looking at the website under the disputed domain name at “www.sohofifthavenue.com”, there can be little doubt that this website has been set up by Respondent in order to create a likelihood of confusion both with Complainant’s SAKS FIFTH AVENUE trademark as well as with Complainant’s official website at “www.saksfifthavenue.com”. Regardless of whether Respondent in fact intends to sell fashion goods via this website, or – as assumed by Complainant – simply attempts to collect customer information, including financial information, such use of the disputed domain name neither fulfills the prerequisites of a bona fide use nor of a legitimate non-commercial or fair use as set forth by paragraph 4(c)(i) and 4(c)(iii) of the Policy. Moreover, even though the disputed domain name has been registered under a Registrant named “Soho Fifth”, given the website under the disputed domain name and the way in which the alphanumeric string in the disputed domain name appears thereon as an imitation of Complainant’s SAKS FIFTH AVENUE trademark, the Panel has no reason to believe that Respondent has ever been commonly known under the name of “Soho Fifth” in a way that would confer rights or legitimate interests in the disputed domain name according to paragraph 4(c)(ii) of the Policy. Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 2.0 paragraph 2.1 ). In the case at hand, Respondent did not reply to Complainant’s allegations as they were included in the Complaint duly notified to Respondent by the Center on May 1, 2015, nor did it come forward with any other reasonable explanation that might have thrown a different light on Respondent’s possible rights or legitimate interests in the disputed domain name. Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy. C. Registered and Used in Bad Faith The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith. The Panel concludes from the Internet presence under the disputed domain name at “www.sohofifthavenue.com” that Respondent certainly had knowledge of Complainant’s SAKS FIFTH AVENUE trademark at the time of registering the disputed domain name and that the latter has been registered and is being used by Respondent intentionally attempting to attract, for commercial gain, Internet users to said website, by creating a likelihood of confusion with Complainant’s SAKS FIFTH AVENUE trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Such circumstances are evidence of registration and use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. Therefore, the Panel finds that also the third element under the Policy as set forth by paragraph 4(a)(iii) is fulfilled and that, accordingly, Complainant has satisfied all of the three requirements of paragraph 4(a) 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 disputed domain name <sohofifthavenue.com> be transferred to Complainant. Stephanie G. Hartung Sole Panelist Date: June 11, 2015
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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