The Complainants are Kenneth Cole Productions, Inc. of New York, United States of America and Kenneth Cole Productions (LIC), Inc. of Nassau, Bahamas, internally represented.
The Respondent is A Domain Serve of Bad Duerkheim, Germany.
The disputed domain name <kenethcole.com> (the “Domain Name”) is registered with DSTR Acquisition VII, LLC d/b/a Dotregistrar.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 18, 2009. On February 19, 2009, the Center transmitted by email to DSTR Acquisition VII, LLC d/b/a Dotregistrar.com a request for registrar verification in connection with the disputed domain name. On February 19, 2009, DSTR Acquisition VII, LLC d/b/a Dotregistrar.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” or “UDRP”), 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 24, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 16, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 17, 2009.
The Center appointed Tan Tee Jim S.C. as the sole panelist in this matter on March 25, 2009. 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.
Since 1983, the Complainants and their licensees offer a selection of high-end leather footwear and clothing for men and women, as well as other related goods, including fashion accessories. The Complainants' goods can be purchased in more than 3,700 department and specialty store locations, including the Complainants' own retail stores numbering nearly 86 and through their Internet web sites.
The Complainants are the owners of several United States trademark registrations for KENNETH COLE covering a wide range of goods (and retail store services pertaining to the same), including sunglasses, eyeglasses, jewelry, watches, leather, imitation leather, umbrellas, wallets, travelling bags, clothing (namely, men's and women's neckwear and scarves, suits, sport coats, dresses, dress shirts, knit shirts, woven shirts, sweaters, denim jeans, underwear, sleepwear, dress slacks and casual slacks, blouses, shorts, skirts, leather and fabric coats, jackets, overcoats and rainwear, t-shirts), footwear (namely, shoes, boots, sandals, slippers, sneakers, espadrilles), belts, hosiery and socks.
The Complainants are also the owners of several KENNETH COLE trademark in several other countries, including Republic of Korea, People's Republic of China, Spain, India, etc.
Further, the Complainant, Kenneth Cole Productions, Inc., has, through its subsidiary Kenneth Cole Catalog, Inc., used the website “www.kennethcole.com” for many years. The founder and chairman of the Complainants, Mr. Kenneth Cole, appears to be a well-known figure not just in the fashion industry but also for his public charity work.
The Respondent is the registrant of the Domain Name at which the website “www.kenethcole.com” is located. Screenshots of the website show that the Respondent had previously sought to generate revenue by including automatically generated pay-per-click (“PPC”) links on the page. The website also contained links to goods which compete with the Complainants.
The Complainants have requested for the Domain Name to be transferred to Kenneth Cole Catalog, Inc., which is wholly owned by the Complainant, Kenneth Cole Productions, Inc.
The Complainants contend that:
(1) The Domain Name is confusingly similar to a trademark in which the Complainants have extensive rights, both registered and otherwise.
a The Complainants have registered rights to the KENNETH COLE mark around the world;
b The Complainants have rights in the KENNETH COLE mark through the use of the mark as a trade name, on the Internet, and through the notoriety of their founder and chairman;
c The only difference between the Domain Name and the Complainants' mark is the omission of a single “n” from the first name “Kenneth”;
d “Keneth” is phonetically equivalent to “Kenneth”;
e The Respondent intended to capture traffic from Internet users who mistakenly spell “Kenneth” with one “n” instead of two, i.e., typo-squatting.
(2) The Respondent has no rights or legitimate interests in respect of the Domain Name.
a The Complainants have not authorized the Respondent to use the KENNETH COLE mark or to register domain names implementing the mark;
b Given the highly distinctive and famous nature of the Complainants' KENNETH COLE mark, it is reasonable to assume that the Respondent has no rights or legitimate interests in the mark.
(3) The Respondent registered and is using the Domain Name in bad faith in regards to paragraph 4(b)(iv) of the UDRP.
a The Respondent registered the Domain Name in bad faith;
b The Respondent is using the Domain Name in bad faith;
(i) The Respondent's use of an obvious misspelling of a trademarked term is sufficient to demonstrate bad faith use;
(ii) The Respondent previously linked the Domain Name to a landing page designed to generate pay per click revenue.
The Respondent did not reply to the Complainant's contentions.
Under paragraph 4(a) of the Policy, the Complainants must prove that all of the following three elements are present in order to succeed in this Complaint:
(i) The Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainants have 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.
In accordance with paragraph 14(a) of the Rules, if the Respondent, in the absence of exceptional circumstances, does not submit the Response, the Panel shall decide the dispute based on the Complaint.
The Complainants have provided evidence of their registrations of the KENNETH COLE trademark in the United States of America as well as other countries worldwide. The Complainants have also shown that their founder and chairman, Mr. Kenneth Cole, is a renowned individual in the fashion industry. Further, the Complainants have been using “www.kennethcole.com” as their website for sometime. Accordingly, the Complainants have sufficiently demonstrated their rights in their mark.
The Panel accepts that the Domain Name is visually very similar to the Complainants' KENNETH COLE mark, albeit with a missing “n”. The Domain Name is also phonetically identical to the mark, save for the “.com” generic top-level domain. The Domain Name is virtually identical and, confusingly similar to the Complainants' trademark.
The Panel accordingly finds for the Complainants in relation to the first element.
According to paragraph 4(c) of the Policy, the Respondent may establish its rights to or legitimate interests in the Domain Name by showing any of the following:
(i) Its use of, or demonstrable 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; or
(ii) It has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) It is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
As the Respondent failed to file a Response, the Panel does not have before it any evidence in the present record of the circumstances specified in paragraph 4(c) of the Policy, or of any other circumstances which might reasonably be said to give the Respondent a right to or a legitimate interest in the Domain Name. In this Panel's view, in the present circumstances, the Respondent's failure to provide the circumstances is itself an acknowledgement that it has no rights or legitimate interests in the Domain Name.
There is no evidence that the Respondent was commonly known by the Domain Name prior to its registration or that it has been dealing in goods or services under or by reference to the mark KENETH COLE. Indeed, its website bearing the Domain Name does not identify the Respondent or indicate that the Respondent is in some way associated with the name “keneth cole”. It appears that the purpose of the website is to misleadingly divert consumers to the website by capturing and diverting Internet users who intend to visit the Complainants' website, “www.kennethcole.com”. The Panel is satisfied that the Respondent's use of the Domain Name, which contains a misspelling of the Complainants' KENNETH COLE trademark, was indeed for the purpose of taking commercial advantage of the trademark by creating the erroneous impression that its website is the Complainants' or is associated with the Complainants. The Panel does not consider such use to be fair use.
The Panel therefore finds for the Complainants in relation to the second element.
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the Domain Name in bad faith, namely:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainants who are the owners of the subject trademark or service mark, or to a competitor of the Complainants, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances showing that the Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) circumstances showing that the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances showing that the Respondent has, by using the Domain Name, intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainants' mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on the Respondent's website or location.
By failing to file a Response, the Respondent has failed to invoke any of the circumstances that could demonstrate that it did not register and use the Domain Name in bad faith and to assist the Panel in this regard. In this Panel's view, the Respondent's failure, in the present circumstances, amounts to an acknowledgement that it could not justify its registration and use of the Domain Name.
The Respondent's website bearing the Domain Name is typical of “typo-squatting” practices. Reference is made in this regard to the decision in The Nasdaq Stock Market, Inc. v. NSDAQ.COM, NASDQ.COM and NASAQ.COM, WIPO Case No. D2001-1492 where the respondent registered domain names with a missing letter from the relevant trademark.
The Complainants have also adduced evidence that the website bearing the Domain Name contained unauthorized use of their KENNETH COLE trademark, as well as automatically generated PPC links on their website. The website bearing the Domain Name also lists “Kenneth Cole” as a sponsored listing. This raises a strong presumption that the Respondent had the intention to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainants' mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on the Respondent's website or location. No evidence has been tendered with regard to the use of “keneth cole” in relation to any goods or services on the Respondent's own website, and this lends further support to the existence of the Respondent's awareness of the Complainants' mark and its intention to derive commercial gain by creating a likelihood of confusion.
The Panel therefore finds for the Complainants in relation to the 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 <kenethcole.com> be transferred to the Kenneth Cole Catalog, Inc., which is wholly owned by the Complainant, Kenneth Cole Productions, Inc.
Tan Tee Jim, S.C.
Dated: April 6, 2009