WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bestseller A/S & Aktieselskabet af 21. November 2001 v. Denny Doe
Case No. D2007-1523
1. The Parties
The Complainant is Bestseller A/S & Aktieselskabet af 21. November 2001 (the “Complainant”), Brande, Denmark, represented by DAHL Herning A/S, of Denmark.
The Respondent is Denny Doe, Shanghai, of China.
2. The Domain Name and Registrar
The disputed domain name <veramoda.com> is registered with Register.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 16, 2007. On October 18, 2007, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name at issue. On October 18, 2007, Register.com 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”), 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 October 24, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 13, 2007. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent’s default on November 14, 2007.
The Center appointed James A. Barker as the sole panelist in this matter on November 22, 2007. 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 are not contested.
The Complainant has registered word and device marks in the EC for VERO MODA. The Complainant’s word mark was registered on August 20, 2004. The device mark was registered on January 22, 2003. The marks are used in connection with clothes, footwear, headgear, leather, and advertising that relates to those goods.
The Complainant’s “Vero Moda” brand was established in 1987, and has been used continuously since that time. The Complainant maintains a website at “www.veromoda.com”.
The disputed domain name was first registered on June 9, 2000. On October 15, 2007 (as indicated in evidence of the Whois details attached to the Complaint) the registrant contact details, in addition to providing the registrant name “Denny Doe”, listed an address in “Zhang Yang Rd” Shanghai, China. The postal tracking details in the case file indicate that the Complaint, as formally notified, was received at that address. However, on October 24, 2007 (as indicated in the case file), the registrant details then listed an address in “Gang Bang Rd”, Beijing, China. The postal tracking details for another copy of the Complaint, as also formally notified to that other address, indicated that this other address was ‘incorrect’.
At the date of this decision, the disputed domain name reverted to a portal website. The heading of the homepage of that site is titled “veramoda.com”. That homepage displays a number of links, sorted under various categories. At the top of the page, under the heading “Top Five Links”, are further links titled “Footwear Sale”, “Designer Jewelry”, “Discount Fragrances”, “Designer Hand Bags”, and “Discount Gift Card”. To the left of the page, there are further links, including to “Vero Moda Shop”, “Online Clothing Catalogue”, and “Women’s Clothing”.
The Complainant also provided evidence of the website as it was on October 16, 2007. On that date, the disputed domain name also reverted to a portal website. Although that website had somewhat different links to those described above, it still contained links to, for example “Vero Moda”, and more generally to many links relating to clothing and fashion.
5. Parties’ Contentions
The Complainant makes each of the three assertions against the Respondent, as required to initiate this proceeding under the Policy.
In summary, the Complainant asserts that the disputed domain name is confusingly similar “to the Complainants domain name <veromoda.com>”, and is distinguished from its registered trademarks by only a single letter.
The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name. There is no relationship between the Complainant and the Respondent and the Respondent has no license from the Complainant. There is no evidence of the Respondent’s use or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services.
The Complainant also asserts that the disputed domain name was registered and has been used in bad faith. The disputed domain name is being used by the Respondent to misleadingly divert Internet consumers for commercial gain.
The Respondent did not formally reply to the Complainant’s contentions. However, the Respondent sent an email to the Center on November 14, 2007, in response to the Center’s notification of his default. In that email, the Respondent stated only that: “There is incorrect data which does not reflect whois and therefore it is invalid. But what do you WIPO Bolsheviks care…”.
6. Discussion and Findings
The Complainant has the burden of proving all of the following, if it is to succeed under paragraph 4(a) of the Policy:
(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 was registered and used in bad faith.
These three elements are discussed in turn as follows.
A. Identical or Confusingly Similar
The Complainant clearly has rights in its registered mark VERO MODA. The disputed domain name is not identical to that mark. But the Panel considers it to be confusingly similar. The disputed domain name is only relevantly different in replacing the first instance of ‘o’ with ‘a’. This minor difference does little to remove the overall impression of similarity, both visual and phonetic, with the Complainant’s mark.
The Complainant has established this first element.
B. Rights or Legitimate Interests
The only evidence of the Respondent’s use of the disputed domain name is to revert to a portal website, which includes clothing and fashion-related links, including one link to “Vero Moda Shop”. The latter link however, only reverts to further links to a number of other fashion and clothing related websites, rather than any website relating directly to the Complainant.
Other than what is self-evident by visiting the Respondent’s website, and the evidence of the Respondent’s website provided by the Complainant, the Respondent provided no evidence of his use of the disputed domain name. In particular, there is no evidence of any of the circumstances set out in paragraph 4(c) of the Policy, that would be demonstrative of a right or legitimate interest.
The issue, therefore, is whether the Respondent’s portal website demonstrates, by itself, that he has a right or legitimate interest in the disputed domain name. The Panel finds that he does not particularly where (as here) many of the links on the site appear to relate to the trademark value of the disputed domain name. See mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc. WIPO Case No. D2007-1141. Moreover the content of the Respondent’s website indicates that he has used the disputed domain name to advertise products that compete with the Complainant’s. As the disputed domain name is confusingly similar to the Complainant’s mark, it is also likely that Internet consumers would be confused about the website’s association with the Complainant. The Panel has inferred that the Respondent derives some commercial benefit from his website. The links it contains are to commercial goods and services. The nature and number of those links suggest that the Respondent intended to derive some amount of ‘click through’ revenue. Similar websites have been found insufficient to demonstrate a right or legitimate interest in previous decisions under the Policy. See, for example, Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964.
For these reasons, the Complainant has established this second element.
C. Registered and Used in Bad Faith
In this case, the Respondent cannot have been aware of the Complainant’s registered marks when the domain name was first registered in 2000. The Complainant’s registered rights only date from 2003. The Complainant does not alternatively argue that it acquired unregistered rights before that date. While Complainant states in the Complaint and on its website, and the Respondent did not deny, that it (the Complainant) has used VERO MODA continuously as a ‘brand’ from 1987, the Complainant did not provide substantial evidence of this.
However, in the circumstances of this case, the Complainant’s lack of registered rights when the disputed domain name was registered, do not prevent a finding of bad faith. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, which summarizes the general consensus of Panel views on various issues, notes that (at item 3.1), normally speaking, when a domain name is registered before a trademark right is established, that registration was not in bad faith because the registrant could not have contemplated the complainant’s non-existent trademark rights. An important qualification to this is that:
“In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found.”
The circumstances of this case indicate that it is one where this qualification applies. The Panel considers that the Respondent was more than likely aware of the Complainant when he registered the disputed domain name. The Respondent’s website includes a prominent link to “Vero Moda Shop”, and includes links to products that compete with those of the Complainant. Although the Complainant provided no evidence of it, the term “Vero Moda” appears to the Panel to be invented and, as such, distinctive. It does not appear to be a term the Respondent would have chosen by accident, if not for its association with the Complainant. The Respondent’s case is also not enhanced by the provision in the Whois, shortly before the formal notification of these proceedings, of what would appear to be fictitious contact information in China.
The circumstances of this case also suggest that the Respondent intended to take advantage of confusion between the disputed domain name and the Complainant’s VERO MODA brand. This much is suggested by the fact that the Respondent’s website promotes competing goods; uses a confusingly similar domain name; and there is no self-apparent reason for the connection between the term ‘Vera Moda’ and the Respondent or his website. The Respondent has provided no evidence to the contrary. The Respondent’s only response in an email received after the due date for response had passed, was to state, without further useful explanation, that there is ‘incorrect data’ relating to the Whois details. However, the registrar confirmed the registrant’s details in this case. As such, the Respondent’s statement does not appear to be correct, and so does not affect the conclusions set out above.
Particularly given the absence of substantive Response, the Panel is satisfied that the Complainant has therefore established, on balance, this third element.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <veramoda.com>, be transferred to the Complainant.
James A. Barker
Dated: December 6, 2007