WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nine West Development Corporation v. Private Whois for Ninewestshoes.com/Comdot Internet Services Private Limited.
Case No. D2007-1723
1. The Parties
The Complainant is Nine West Development Corporation, Wilmington, Delaware, United States of America, represented by its internal representative.
The Respondent is Private Whois for Ninewestshoes.com/Comdot Internet Services Private Limited., Mumbai, Maharashtra, India.
2. The Domain Name and Registrar
The disputed domain name <ninewestshoes.com> is registered with Lead Networks Domains Pvt. Ltd..
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 21, 2007. On November 23, 2007, the Center transmitted by email to Lead Networks Domains Pvt. Ltd. a request for registrar verification in connection with the domain name at issue. On December 5, 2007, Lead Networks Domains Pvt. Ltd. transmitted by email to the Center its verification response disclosing registrant and contact information for the domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 5, 2007, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on December 5, 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 December 7, 2007. On December 19, 2007, the Respondent contacted the Centre to enquire about the procedure in case it needed further time to file a response. The Centre replied by email the necessary information. Since then, there does not appear to have been any communication from the Respondent. In accordance with the Rules, paragraph 5(a), the due date for Response was December 27, 2007. The Respondent did not submit a response within that time limit. Accordingly, the Center notified the Respondent’s default on December 28, 2007. The Respondent subsequently submitted a late reply by email on January 3, 2008.
The Center appointed Adam Samuel as the sole panelist in this matter on January 7, 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.
4. Factual Background
The Complainant owns a number of US trademark registrations for the marks NINE WEST and 9 WEST, going back to 1992 and 1981 respectively. The disputed domain name was registered on June 15, 2000.
5. Parties’ Contentions
The Complainant’s submissions are set out in this section. They do not necessarily reflect the views of the Panel.
The Complainant and its affiliates design, develop, manufacture and sell quality fashionable footwear, clothing and accessories under the NINE WEST and 9 WEST trademarks. Sales in 2006 of NINE WEST branded footwear exceeded $600 million.
The disputed domain name is confusingly similar to the Complainant’s trade mark because it consists of that mark with only the addition of the generic word “shoes”. The confusion is intensified by the fact that the Complainant is first and foremost a footwear company. The addition of the generic top level domain “.com” is of no legal significance.
The Respondent has no rights or legitimate interests with respect to the disputed domain name. The Respondent has neither used nor made any demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services and could not do so given the fame of the Complainant’s NINE WEST marks in connection with footwear. Instead, the disputed domain name resolves to a website entitled “www.ninwestshoes.biz” with various “sponsored” links of both competitors of the Complainant and the Complainant itself. The sponsored links offer online shoe shopping. The use of a domain name for a link farm does not constitute a legitimate use of the domain.
The Respondent has concealed its identity by using the Private Whois service of its registrar. The Complainant believes, though, that the Respondent is not and has never been commonly known by the name NINE WEST or anything similar. The Respondent is not affiliated with the Complainant and has not sought or obtained consent to register the domain name.
The Respondent registered the disputed domain name in bad faith to associate itself with the NINE WEST brand and to trade off the Complainant’s goodwill in the latter’s related trade marks. Those marks have been widely used for footwear and fashion items for nearly three decades and have acquired a worldwide reputation. It cannot reasonably be argued that the Respondent would have combined “Nine West” with “shoes” without knowing of the Complainant’s reputation and its marks in the footwear industry. Registration of a well-known trademark in conjunction with link farms constitutes bad faith. The Respondent intentionally concealed its identity by using the privacy protection service of the Registrar – another indicia of bad faith.
The Respondent did not submit a reply to the Complainant’s contentions until after the expiry of the deadline for responding. For reasons that will become apparent, the Panel does not have to decide whether this late response should be considered since it makes no difference to the overall result of the case.
The Respondent submits that it purchased the domain name for a client or its representative that ultimately failed to pay. They suspect that it was the Complainant who instructed it to purchase the domain name. It claims that it approached the Complainant offering to sell the domain name for its reasonable out-of-pocket expenses. The Respondent claims to be unaware of the Complainant’s trademark rights. The domain name, it says, is not confusingly similar “as the complainant was claiming the same to be from their trademarks.” The domain is parked by the registrar of the domain name. The Respondent’s use of the registrar’s whois service is common practice to prevent the receipt of spam e-mails. As the Respondent has paid money to buy and renew the domain name, it claims to have the right to the domain name. The web page to which the disputed domain name resolves is that of the registrar. The Respondent says it has gained nothing from any click-throughs, and that there is no evidence of bad faith on the part of the Respondent.
6. Discussion and Findings
Under the Policy, the Complainant must prove that
(i) the domain name is identical or confusingly similar to a trademark or service mark in which it has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The dispute domain name consists of the Complainant’s trademark NINE WEST with the addition of the word “shoes” and the generic top level domain “.com”.
The Complainant’s trademark NINE WEST has no particular meaning except to describe the Complainant’s goods or in the unconnected world of navigation. The addition of the common generic word “shoes” to it does not remove the confusing similarity between the disputed domain name and the Complainant’s trademark. Similarly, the addition of “.com” makes no difference to this.
The Panel was faced with the identical issue in Calzaturificio Luigi Baracchino & C. S.p.A. v. Quickserf Kyriacos Kakofegitis WIPO Case No. D2007-1489. It said:
“The disputed domain name consists of SAX and a descriptive word, “shoes.” The former is identical to the Complainant’s registered SAX trademark, and the latter refers to the goods in respect of which that mark is used.
It is well-established that descriptive or generic additions to a trademark, and particularly those that designate the goods or services in respect of which it is used, do not avoid confusing similarity of domain names and trademarks (See inter alia Toyota Motor Sales USA v. Rafi Hamid dba ABC Automobile Buyer, WIPO Case No. D2001-0032, involving 13 trademarks incorporating the word LEXUS and geographic, surnominal or generic descriptive words; and PRL USA Holdings, Inc. v. LucasCobb, WIPO Case No. D2006-0162, concerning the domain name <ralphlaurenpants.com>).
The Complainant’s SAX trademark is both registered and used in respect of shoes. The Respondent’s adoption of a domain name comprising the Complainant’s trademark and a descriptive element denoting footwear is likely to give rise to confusion because it points to the field of goods in which the Complainant’s mark is protected and used.
The Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.”
For the same reasons, the Panel in this case concludes that the domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
There is no evidence that the Complainant has authorized the Respondent to use any of its trademarks. There is no evidence that the Respondent has rights or legitimate interests in the name “NINE WEST”. The absence of any ordinary meaning for the word, away from the world of navigation, would suggest otherwise.
The Respondent’s late submission asserts without any evidence that the Complainant may have asked it to purchase the domain name. The relevance of this submission is not apparent. One would have expected the Respondent to have kept a record of such a request and to have submitted it to the Panel. In the absence of any such evidence, this point must be ignored.
The Respondent also argues that paying for the registration and renewal of the domain name entitles it to the domain name. If that submission was correct, the Policy would have no meaning since all respondents in domain name panel cases will have paid for the registration and renewal of the domain name. See e.g. AT&T Corp. v. Swarthmore Associates LLC, WIPO Case No. DBIZ2002-00077 and Pharmacia & Upjohn Company v. Peoples Revolutionary Suicide Jazz Band, WIPO Case No. D2000-0816. The Policy must be referring here to the Respondent having a right or legitimate interest in the name used in the domain name. The Respondent has not provided any evidence of that in this case.
For these reasons, and in the absence of evidence to the contrary, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the domain name in issue.
C. Registered and Used in Bad Faith
It is unlikely that the Respondent would have registered the disputed domain name unless it was aware of the Respondent’s trade mark or activity using that name and its connection with shoes. The mark has no independent meaning except as a trading name for the Complainant’s products or in the completely unrelated area of navigation.
The Respondent’s answer to this point is to assert that somebody, possibly the Complainant, asked it to buy the domain name but failed to pay for it. It provides no evidence of any such instructions. In the absence of any evidence of such an instruction, the Panel is unable to accept the Respondent’s assertion. One would have expected the Respondent to have submitted copies of it with their response if such an instruction had existed. The Panel considers it unlikely that the Respondent purchased the domain name without knowing of the Complainant’s trademark and being aware that using the domain name would involve infringing that mark. The Panel considers it likely that the Respondent selected the domain name in order to attract the Complainant’s customers to its website.
The same comments apply equally to the question of whether the Respondent is or has been using the domain name in bad faith. The Respondent argues that the website to which the domain name resolves is just the registrar’s parking site. It remains the case, though, that the Respondent was aware that it was maintaining a domain name in breach of the Complainant’s trademark. This presumably was to attract customers of the Complainant away from the Complainant’s websites and onto the Respondent’s for whatever reason.
For these reasons, the Panel concludes that the Respondent has both registered and is using the domain name in issue in bad faith.
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 <ninewestshoes.com> be transferred to the Complainant.
Dated: January 21, 2008