WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Redcats USA, L.P. v. Modern Empire Internet Ltd., Administrator
Case No. D2007-1668
1. The Parties
The Complainant is Redcats USA, L.P., Indianapolis, Indiana, of United States of America, represented by Baker & Daniels, United States of America.
The Respondent is Modern Empire Internet Ltd., Administrator, Tseung Kwan O, Hong Kong, SAR of China.
2. The Domain Name and Registrar
The disputed domain name <womenwithin.com> is registered with Fabulous.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 13, 2007. On November 15, 2007, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the domain name at issue. On November, 16, 2007, Fabulous.com 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 a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 26, 2007. The Center verified that the Complaint together with the amendment to 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 November 27, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 17, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 21, 2007.
The Center appointed The Hon. Sir Ian Barker as the sole panelist in this matter on January 9, 2008. 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.
On January 18, 2008, the Panel made the following order pursuant to paragraph 12 of the Rules:
“1) The Complainant does not claim to have registered trademarks in any country other than the United States. Nor does the Complainant give any indication of the extent of its business in Hong Kong where the Respondent is located in 2002.
2) The Complainant is required to prove bad faith by the Respondent at the date of registration of the disputed domain name, November 24, 2002. The Complainant is requested, within 4 working days, to provide evidence from which the Panel could infer bad faith registration as at that date. The Respondent may reply to the Complainant’s submissions within a further 4 working days.”
The Complainant filed a submission in reply to the Panel’s order on January 23, 2008. The Respondent filed no submission.
4. Factual Background
The Complainant is a wholly-owned subsidiary of Redcats Group which is involved globally in the fashion and home decoration industries. The Redcats Group has sourcing offices in Hong Kong, China and other Asian countries. The Complainant has 5,000 employees and offers 11 worldwide brands. The Redcats Group operates in 28 countries and has 60 e-commerce sites.
The Complainant has had a history of using the mark THE WOMAN WITHIN for its mail order catalogue services for apparel since 1990 when it first used the mark in commerce in the United States of America. It owns a United States of America registered trademark for THE WOMAN WITHIN which was registered on October 16, 1990. It also owns United States of America trademark registrations for WW WOMAN WITHIN (September 11, 2001) and WOMAN WITHIN (March 20, 2007). It owns 23 domain names incorporating the expression ‘Woman Within’.
The trademarks are used on women’s apparel of various kinds. The WOMAN WITHIN trademark is particularly used for online retail store services featuring women’s clothing, shoes and accessories.
The disputed domain name was registered on November 24, 2002. The Complainant gave the Respondent no rights to use any of its trademarks.
The website accessed by the disputed domain name is a parked page providing various links. The Registrar with which the Respondent registered the disputed domain name advertises a “Fabulous Premium Program” a revenue-sharing scheme whereby a domain name may be parked and the registrar will populate the page with ‘pay per check’ links.
5. Parties’ Contentions
The disputed domain name is confusingly similar to the Complainant’s trademarks. The Respondent is ‘typosquatting’ by substituting the letter ‘e’ with the letter ‘a’ in the word woman.
The Respondent has no right or legitimate interest in the disputed domain name. The Complainant gave it none. The Respondent is using the disputed domain name for commercial gain by use of a parking site with ‘click through’ links to competitors of the Complainant.
The Respondent’s use of the disputed domain name is not justified by the principal that a mark may be used legitimately without its owner’s consent to promote a bona fide offering of goods or services placed on the market by its owner. Cases such as Oki Data Americas Inc .v ASD, Inc., WIPO Case No. D2001-0903 hold that this principle can be invoked under the Policy only if inter alia the Respondent:
a) is actually offering the goods or services at issue;
b) uses the website to sell only the trademarked goods and services; and
c) discloses the relationship (or otherwise) with the trademark owner.
The disputed domain name was registered in bad faith because the Complainant has been using the marks since 1990, in connection with its mail-order women’s apparel business.
Under paragraph 4(b)(iv) of the Policy bad faith registration and use can be shown where registration occurs to utilize a well-known trademark in order to attract Internet access to a website for commercial gain.
The Complainant’s parent company has sourcing offices in Hong Kong and its affiliate has its corporate office there. The Complainant began using the mark 12 years before the disputed domain name was registered. Because of the Complainant’s global presence and its affiliate’s offices in Hong Kong, the Respondent would have known of the Complainant’s mark at the time of registration of the disputed domain name. The Respondent has given no explanation as to why the name was chosen.
The Respondent made no submissions.
6. Discussion and Findings
The Complainant is required by para 4(a) of the Policy to establish:
(i) The disputed domain name is identified 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 by the Respondent.
A. Identical or Confusingly Similar
The disputed domain name is confusingly similar to the Complainant’s trademarks WW WOMEN WITHIN, THE WOMAN WITHIN and WOMAN WITHIN. The only real differences are the absence of the definite article and the use of the plural ‘women’ instead of the singular ‘woman’: The Panel agrees with the Complainant’s submission that this is a clear example of ‘typosquatting’ of which there have been many examples in Policy jurisprudence e.g. Six Continents Hotels Inc v. null John Zuccarini d/b/a Country Walk, WIPO Case No. D2003-0161.
Accordingly the first limb of paragraph 4(a) is established.
B. Rights or Legitimate Interests
The Complainant gave the Respondent no rights or interests in its trademarks. Consequently, in the absence of any evidence suggesting otherwise, the Complainant has at least on a primer facie basis established the second limb of paragraph 4(a).
The Respondent could have sought to invoke paragraph 4(c) of the Policy which sets out certain situations of which, one or more if proved by the Respondent, could have afforded a defence to the Respondent. However, it elected not to file a response.
C. Registered and Used in Bad Faith
There can be no doubt that the ongoing parking of the disputed domain name by the Respondent on a site which provides ‘click through’ links to goods and services offered by the Complainant’s competitors constitutes ongoing bad faith use. The exception under trademark law referred to by the Complainant and noted above cannot apply to the Respondent’s operation. However, a Complainant is required to prove bad faith registration as well as ongoing bad faith use.
The apparent difficulty is that the disputed domain name was registered by a resident of Hong Kong some five years before the Complaint was brought. However the Complainant has supplied details of the world-wide scope of the operations of its parent company and particulars of the operations of the parent in Hong Kong. There is no explanation given as to why the Complainant filed its complaint 5 years after registration of the disputed domain name.
The Panel is prepared to apply paragraph 4(b)(iv) of the Policy which speaks of utilizing another’s trademark by attracting Internet users to a website for commercial gain – as the Respondent clearly is doing. This provision can be used to demonstrate bad faith registration as well as bad faith use.
The Panel is able to infer bad faith registration in all the particular circumstances of this case because the disputed domain name is fairly particular. It is likely, by its very terms, to refer to some business offering goods of interest to women. There is no explanation from the Respondent as to why this particular domain name was chosen by it. No legitimate reason is apparent.
The Complainant’s 23 domain names (Complaint, Annex 7) certainly give it an Internet presence associated with its mark. One can safely assume that some of its websites preceded the disputed domain name registration.
Accordingly in the circumstances of this case the Panel infers bad faith registration as well as bad faith use. The third limb of Paragraph 4(a) of the Policy is established.
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 <womenwithin.com> be transferred to the Complainant.
Sir Ian Barker
Dated: January 30, 2008