WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Nine West Development Corporation v. Registrant [1168318] / Moniker Privacy Services / Registrant [1260512]: Domain Administrator

Case No. D2008-0154

 

1. The Parties

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

The Respondent is Registrant [1168318]; Moniker Privacy Services, of Pompano Beach, Florida; Registrant [1260512]: Domain Administrator, of Hong Kong, SAR of China.

 

2. The Domain Name and Registrar

The disputed domain name <ninewestoutlet.com> is registered with Moniker Online Services, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 30, 2008. On February 1, 2008, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On February 6, 2008, Moniker Online Services, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 6, 2008 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complaint filed an amendment to the Complaint on February 6, 2008. 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 February 13, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was March 4, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 6, 2008.

The Center appointed Johan Sj÷beck as the sole panelist in this matter on March 13, 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 <ninewestoutlet.com> was registered on December 25, 2001.

 

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 its NINE WEST and 9 WEST trademarks.

The Complainant argues that the disputed domain name <ninewestoutlet.com> is confusingly similar to its NINE WEST and 9 WEST trademarks.

The Respondent has no legitimate interest in the disputed domain name and neither uses it for any bona fide offering of goods or services nor makes non-commercial fair use of it. The Respondent has registered the disputed domain name in order to capitalize on the Complainant’s goodwill. The disputed domain name resolves to a website containing various suggested searches, including searches for “Nine West”, its competitors and shoe shopping sites that sell competing brands, such as “Steven Maddy Lefty”, “Shoes Steve Madden” and “DSW Shoe Warehouse Online”. Furthermore, the website contains a link for “Advertisers Info”, which brings Internet users to a page soliciting advertisers. The Complainant contends that the Respondent’s website is a “link farm” or a “domain parking page” used in order to collect financial remuneration when Internet users click on the hyperlinks and/or through advertising revenue. Therefore, the Respondent has misappropriated the Complainant’s trademark in order to attract Internet users to its website for its own commercial gain. The Respondent has used a privacy protection service to conceal its identity.

The Complainant is the owner of numerous trademarks including 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 NINE WEST trademark.

There are approximately 225 Nine West retail stores and 192 Nine West 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.

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 in 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 disputed domain name <ninewestoutlet.com> is confusingly similar to the Complainant’s NINE WEST trademark. The Respondent has simply added the generic word “outlet” to the Complainant’s mark, which intensifies the likelihood of confusion since “outlet” is commonly used in the retail industry to designate a type of store where manufacturers sell merchandise directly to consumers at discounted prices. Many of the Complainant’s outlet stores in the United States bear the name “Nine West Outlet”.

The Respondent has no rights or legitimate interests in respect of the disputed domain name <ninewestoutlet.com>. 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 and services and could not do so given the Complainant’s NINE WEST trademarks in connection with footwear. The website to which the disputed domain name resolves contains various suggested searches and “sponsored results”. Furthermore, the Respondent’s website solicits advertisers. The domain name appears to be used as a “link farm” or “parking site” that misleadingly diverts traffic to the Respondent for financial gain from click though and/or advertising revenue.

The Respondent is not and has never been commonly known by the name “Nine West”, “Nine West Outlet”, or the domain name <ninewestoutlet.com> and, therefore, does not have any trademark or servicemark rights therein or thereto, whether common law or otherwise, which might have accrued for such reason. The Respondent is not affiliated with the Complainant and has not sought or obtained consent to register the disputed domain name.

The Respondent registered the disputed domain name in bad faith to associate itself with the Complainant’s NINE WEST trademark and to trade off the Complainant’s goodwill in the trademark. It cannot be reasonably argued that the Respondent would have combined “Nine West” with “Outlet” without knowledge of the Complainant and its trademarks in the retail industry. The Respondent uses the disputed domain name for a parked website website designed to monetize traffic by providing sponsored links to generate pay-for-click revenue and seeking compensation from potential advertisers. Previous panels have found that such use constitutes bad faith.

The fact that the Respondent intentionally concealed its identity by using the “Private Whois” service of its Registrar and the fact that the Respondent did not reply to the letters sent by the Complainant are indications of bad faith.

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 NINE WEST trademarks which predate the registration of the disputed domain name <ninewestoutlet.com>. The disputed domain name incorporates the NINE WEST trademark in its entirety with the addition of the generic word “outlet”. 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.

Furthermore, as described by the Complainant, the generic term “outlet” is commonly used in the retail industry to designate a type of store where manufacturers sell products directly to consumers at discounted prices. The addition of the generic word “outlet” to the Complainant’s NINE WEST trademark may lead Internet users to believe that the Complainant operates the website associated with the disputed domain name and sells products through this website. The Complainant has submitted evidence that the NINE WEST trademark is registered for retail store services. It has been expressed in prior similar decisions, that confusion may be heightened when a generic word added to a domain name coincides with the goods or services for which the trademark is registered. See for example Harrods Limited v. Peter Pierre, WIPO Case No. D2001-0456 and Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin, WIPO Case No. D2003-0888.

Having the above in mind, the Panel concludes that the disputed domain name <ninewestoutlet.com> is confusingly similar to the Complainant’s NINE WEST trademarks 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 it 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 it is commonly known by the domain name, even if it has not acquired any trademark rights; or

(c) that it 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 has not licensed or otherwise consented to the Respondent’s use of the NINE WEST trademarks in connection with the disputed domain name <ninewestoutlet.com> which is confusingly similar to the trademarks. The Respondent has not submitted any evidence indicating that the Respondent is the owner of any trademark rights or that it is commonly known by the disputed domain name.

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. Furthermore, the submitted evidence shows that the Respondent is soliciting advertisers on the website to which the disputed domain name resolves. The Respondent’s use of the disputed domain name ostensibly serves the purpose of generating revenue via advertised pay-per-click 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 or 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 name. 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 NINE WEST trademarks predate the registration of the disputed domain name <ninewestoutlet.com> and the circumstances in the case before the Panel indicate that the Respondent was aware of the Complainant’s NINE WEST trademarks when registering the disputed domain name. The Complainant has submitted evidence showing that the disputed domain name resolves to a website which contains numerous advertising links to websites promoting and/or offering third party products, including products by competitors of the Complainant. Furthermore, it has been shown that the Respondent is using the disputed domain name in order to solicit advertisers. 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 submitted evidence in the case before the Panel indicate that the disputed domain name <ninewestoutlet.com> 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.

The Complainant sent two letters to the Respondent using the contact details provided in the Whois database but the Respondent did not reply. As the Respondent has not submitted a Response to the Complaint 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 <ninewestoutlet.com> has been registered and used in bad faith, and that the Complainant has proved the requirements under paragraph 4(a)(iii) of the Policy.

 

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, <ninewestoutlet.com> be transferred to the Complainant.


Johan Sj÷beck
Sole Panelist

Dated: March 27, 2008