WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Nine West Development Corporation v. William Vaughan, smtm investments ltd

Case No. D2008-0098

 

1. The Parties

The Complainant is Nine West Development Corporation of White Plains, New York, United States of America, represented internally by Jennifer Shmulewitz.

The Respondent is William Vaughan, smtm investments ltd of Queensland, Australia.

 

2. The Domain Name and Registrar

The disputed domain name <9westshoes.com> is registered with InnerWise, Inc. d/b/a ItsYourDomain.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 23, 2008. On January 24, 2008, the Center transmitted by email to InnerWise, Inc. d/b/a ItsYourDomain.com a request for registrar verification in connection with the domain name at issue. On January 24, 2008, InnerWise, Inc. d/b/a ItsYourDomain.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 January 31, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 20, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 21, 2008.

The Center appointed Johan Sj÷beck as the sole panelist in this matter on February 26, 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 has provided evidence showing that it is the owner of the following trademark registrations issued by the United States Patent and Trademark Office (“USPTO”):

9 WEST, class 25 with registration number 1,170,312 registered September 22, 1981.

NINE WEST, class 25 with registration number 2,518,612 registered December 11, 2001.

NINE WEST, class 25 with registration number 2,272,307 registered August 24, 1999.

NINE WEST, classes 18, 25 and 35 with registration number 1,775,652 registered June 8, 1993.

NINE WEST, classes 9 and 25, with registration number 2,133,086 registered January 27, 1998.

NINE WEST, class 9 with registration number 2,246,350 registered May 18, 1999.

NINE WEST, class 14 with registration number 2,198,938 registered October 20, 1998.

NINE WEST, class 14 with registration number 2,322,474 registered February 22, 2000.

NINE WEST, classes 1, 3 and 21 with registration number 2,571,795 registered May 21, 2002.

NINE WEST (Stylized), classes 18 and 35, with registration number 1,829,417, registered April 5, 1994.

NINE WEST (Stylized), class 25, with registration number 1,685,412, registered May 5, 1992.

NINEWEST.COM, class 35, with registration number 2,394,900, registered October 17, 2000.

NINE WEST STUDIO, class 25 with registration number 2,856,725, registered June 22, 2004.

NINE WEST STUDIO, class 18 with registration number 2,984,262, registered August 9, 2005.

9 NINE WEST, class 25 with registration number 2,775,692, registered October 21, 2003.

9 NINE WEST, class 18, with registration number 2,786,445, registered November 25, 2003.

9 NINE WEST, class 14 with registration number 2,915,272, registered December 28, 2004.

9 NINE WEST, class 25 with registration number 2,938,312, registered April 5, 2005.

9 NINE WEST, class 9 with registration number 2,942,212, registered April 19, 2005.

9 NINE WEST NINEWEST.COM, class 18, with registration number 2,797,607, registered December 23, 2003.

9 NINE WEST NINEWEST.COM, class 25, with registration number 2,771,726, registered October 7, 2003.

NINE 9 WEST, class 14 with registration number 2,794,769, registered December 16, 2003.

NINE 9 WEST, class 25 with registration number, 2,938,313, registered April 5, 2005.

NINE WEST HOT 9, class 25 with registration number, 2,774,159, registered October 14, 2003.

9 DEGREES NINE WEST, class 25 with registration number, 3,182,559, registered December 12, 2006.

The disputed domain name <9westshoes.com> was registered by the Respondent on April 15, 2003.

 

5. Parties’ Contentions

A. Complainant

The Complainant is Nine West Development Corporation, a corporation organized and existing under the laws of the state of Delaware, United States of America. The Complainant was established in 1978. The Complainant with its affiliates are leading designers, developers, manufacturers and marketers of fashionable women’s footwear, clothing and accessories marketed under the trademarks NINE WEST and 9 WEST.

The Complainant’s searches show that the Respondent’s website to which the disputed domain name <9westshoes.com> resolves has been inactive for periods. When active, the Respondent’s website has contained various sponsored links to the Complainant and to competitors of the Complainant, including “Ugg Boots” and “Timberland Boots”. The Respondent’s website appears to be a “link farm”.

On October 22, 2007, the Complainant wrote to “Domain Administration Limited”, the entity identified in the Whois database at this time. The Complainant received no response. On November 26, 2007, the Complainant noted that the Whois database for the disputed domain name had been modified on November 21, 2007. The Complainant sent a new letter to the Respondent on November 26, 2007 but received no response.

The Complainant is the owner of numerous trademarks NINE WEST, 9 WEST and related marks. The Complainant has submitted copies of registration certificates from the USPTO. In addition, the Complainant has submitted a list summarizing the Complainant’s 423 registrations for the NINE WEST trademark worldwide.

The Complainant offers not only footwear, but also handbags, sportswear, jeans, dresses, suits, eyewear, sunglasses, legwear, outerwear, jewelry, belts, hats, cold weather accessories, luggage and children’s footwear under the trademark NINE WEST.

There are approximately 417 NINE WEST retail stores and outlet stores in the United States of America, selling almost exclusively products bearing the NINE WEST trademark. The Complainant’s products are also sold in department stores such as Macy’s, Bloomingdale’s and Nordstrom’s.

The Complainant has over 967 retail locations, including 352 retail locations in Asia, 299 in Europe, 143 in the Middle East, 45 in Australia, 23 in Central America, 14 in Africa, 75 in North America outside the United States and 16 in South America.

The Complainant’s trademark NINE WEST has been ranked as one of the most highly recognized brands in the fashion industry and the Complainant has submitted copies of various trade publications containing the above mentioned ranking lists.

From 2004 to 2006, the Complainant spent more than USD 20 million to advertise and promote the NINE WEST trademarks and the goods sold under those marks. Advertisements for the Complainant’s products have appeared in magazines such as Vogue, Elle, Glamour, Vanity Fair, Lucky, InStyle, Women’s Wear Daily, Footwear News and on the Internet on websites such as “glam.com”, “style.com” and “people.com”. The Complainant has submitted copies of recent media coverage of the Complaint.

In 2006 alone, the Complainant’s sale of footwear, apparel and accessories under the trademark NINE WEST well exceeded USD 600 million. These sales figures exclude licensed goods sold by other affiliates or licensees.

The Complainant argues that the disputed domain name <9westshoes.com> is confusingly similar to the Complainant’s NINE WEST and 9 WEST trademarks. The Respondent has added the generic word “shoes” to the Complainant’s trademark which intensifies the likelihood of confusion since the Complainant is first and foremost a footwear company that sells shoes under its NINE WEST trademarks.

The Respondent has no rights or legitimate interests in respect of the disputed domain name <9westshoes.com>. The Respondent is not and has never been commonly known by the name “Nine West” or “9 West” or the domain name <9westshoes.com>. The Respondent is not affiliated with the Complainant and never sought nor obtained consent to register the disputed domain name.

Furthermore, the Respondent has neither used nor made any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The disputed domain name either resolves to an inactive website or to a website with various sponsored links to online shopping sites and competitors of the Complainant. Neither use represents a legitimate use of the disputed domain name.

The Respondent registered the disputed domain name in bad faith to associate itself with the Complainant’s trademark NINE WEST and to take advantage of the Complainant’s goodwill in the trademark. It cannot reasonably be argued that the Respondent would have combined “9 west” with “shoes” without knowledge of the Complainant and its trademarks in the footwear industry. The Respondent’s passive holding of the disputed domain name and the Respondent’s failure to respond to the Complainant’s letters further demonstrate use in bad faith.

The Complainant requests that the Panel issue a decision that disputed domain name <9westshoes.com> be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:

(i) that the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant is, according to the submitted evidence, the owner of several registered trademarks including 9 WEST and NINE WEST which predate the registration of the disputed domain name. The Complainant’s trademark NINE WEST is phonetically and interpretatively equivalent to the trademark 9 WEST in the English language. In previous cases it has been held that replacing a word with the corresponding numerical figure may result in confusingly similarity. See for example CPP, Inc. v. Virtual Sky, WIPO Case No. D2006-0201.

The disputed domain name <9westshoes.com> incorporates the trademark 9 WEST in its entirety with the addition of the generic word “shoes”. The Panel agrees with the Complainant’s contention that the ability for such a descriptive word to distinguish the disputed domain name from the trademark of the Complainant is limited. The fact that the word “shoes” coincides with the specific goods for which the Complainant’s trademark 9 WEST is registered, further adds to the confusion and similarity between the disputed domain name and the trademark. This has been expressed in prior decisions; see for example Harrods Limited v. Peter Pierre, WIPO Case No. D2001-0456.

Having the above in mind, the Panel concludes that the disputed domain name <9westshoes.com> is confusingly similar to the Complainant’s trademarks 9 WEST and NINE WEST and that the Complainant has proved the requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests with respect to the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

(a) that he has made 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 prior to the dispute; or

(b) that he is commonly known by the domain name, even if he has not acquired any trademark rights; or

(c) that he intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

The Complainant sent two letters to the Respondent using the respective contact details found in the Whois database. The Respondent did not reply to either of the two letters. Furthermore, the Respondent has not submitted any evidence indicating that the Respondent is the owner of any trademark rights or that he is commonly known by the disputed domain name.

The Complainant has not licensed or otherwise consented to the Respondent’s use of the trademarks 9 WEST or NINE WEST in connection with the disputed domain name <9westshoes.com> which is confusingly similar to the trademarks.

From the submitted evidence in this case, it is clear that the Respondent’s website, to which the disputed domain name resolves, contains numerous sponsored commercial links, some of which lead to competitors of the Complainant. The Respondent’s use of the disputed domain name ostensibly serves the purpose of generating revenue via advertised pay-per-click products and links and it has been held in previous cases that such use in the circumstances does not represent a use in connection with a bona fide offering of goods and services. See e.g., Sigikid H. Scharrer & Koch GmbH & Co. KG, MyBear Marketing-und Vertriebs GmbH, Mr. Thomas Dufner v. Bestinf, WIPO Case No. D2004-0990.

By not submitting a Response, the Respondent has failed to invoke any circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in respect of the disputed domain names. Thus, there is no evidence in the case that refutes the Complainant’s submissions, and the Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include:

(i) circumstances indicating the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the domain name was registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided it is a pattern of such conduct; or

(iii) circumstances indicating that the domain name was registered primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the domain name has intentionally been used in an attempted to attract, for commercial gain, Internet users to a website or other on-line location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on a website or location.

The Complainant’s registered trademarks 9 WEST and NINE WEST predate the registration of the disputed domain name <9westshoes.com> and it has been argued by the Complainant that it is obvious that the Respondent knew or must have known about the Complainant’s trademarks when registering the disputed domain name, especially due to the fact that the Respondent combined the trademark 9 WEST with the generic term “shoes” as the Complainant is first and foremost a footwear company.

This is supported by evidence showing that the disputed domain name has at times resolved to a website which contains numerous advertising links to websites promoting and/or offering third party products, particularly products by competitors of the Complainant. Such exploitation of the reputation of trademarks to obtain click-through commissions from the diversion of Internet users is an indication of use in bad faith according to previous case law. See e.g., L┤OrÚal, Biotherm, Lanc˘me Parfums et BeautÚ & Cie v. Unasi, Inc, WIPO Case No. D2005-0623 and F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451.

The circumstances in the case before the Panel indicate that the Respondent was aware of the Complainant’s trademarks 9 WEST and NINE WEST when he registered the disputed domain name <9westshoes.com> and that it has intentionally been and is being used in an attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on a website.

There is no evidence in the case that refute the Complainant’s submissions.

The Panel concludes that the Complainant has proved the requirements under paragraph 4(b) of the Policy and that the domain name <9westshoes.com> has been registered and used in bad faith.

 

7. Decision

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, <9westshoes.com> be transferred to the Complainant.


Johan Sj÷beck
Sole Panelist

Dated: March 11, 2008