The Complainant is Lemco, Inc. of Delaware, United States of America, represented by Colucci & Umans, United States of America.
The Respondent is Transure Enterprise Ltd of Tortola, British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
The disputed domain names <mewyorkandcompany.com>, <neworkandcompany.com> and <newyorkandcompamy.com> (the “Domain Names”) are registered with Above.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 25, 2010. On February 26, 2010, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the Domain Names. On March 1, 2010, Above.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 3, 2010 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 amended Complaint on March 8, 2010. The Center verified that the Complaint and amended 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 March 10, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 30, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Parties of the Respondent's default on March 31, 2010.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on April 8, 2010. 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.
The Complainant, Lemco, Inc., owns a number of trademark and service mark registrations in the United States, consisting of NEW YORK & COMPANY and variations thereof, including NY&C, NEW YORK JEANS and NEW YORK JEANS NEW YORK & COMPANY (the “Trademarks”).. The Trademarks cover clothing, accessories, personal care products and credit card services.
The Complainant is the proprietor of the domain names <nyandcompany.com> and <newyorkandcompany.com>, both of which resolve to the same website, which offers for sale clothes, accessories and other items sold under the brand name “New York & Company”.
The Complainant uses its Trademarks by licensing them to New York & Company, Inc., which owns and operates over 500 New York & Company retail stores across the United States, and sells its products online via the Complainant's website.
The Domain Names were registered on the following dates: <mewyorkandcompany.com> was registered on July 24, 2008; <neworkandcompany.com> was registered on November 25, 2009; and <newyorkandcompamy.com> was registered on November 9, 2009.
At the time the Complaint was filed, all three Domain Names resolved to websites displaying sponsored links and click-through advertising for other brands and products, including clothing brands.
On July 29, 2009, August 31, 2009, and January 4, 2010, the Complainant, through its legal counsel, dispatched “cease and desist” letters to Above.com Domain Privacy, the listed registrant of the Domain Names according to the WhoIs search results. In these letters, the Complainant informed the Respondent of the Complainant's extensive use of the NEW YORK & COMPANY trademark and the associated trademarks and drew the attention of the addressee to the fact that the Policy is incorporated into the registrant's service agreement with the Registrar. The Complainant received two responses to these letters, one in relation to <mewyorkandcompany.com> and one in relation to <neworkandcompany.com> and <newyorkandcompamy.com> from an individual, D. Smith, who offered to sell the Domain Names to the Complainant for USD 250.00 and USD 500.00 respectively.
The Complainant's contentions can be summarised as follows:
(a) the Domain Names are mere misspellings of the Complainant's NEW YORK & COMPANY trademark and are therefore confusingly similar;
(b) the Respondent is not making any bona fide use of the Domain Names, as evidenced by the fact that all three Domain Names have no independent content and contain links to third party commercial sites;
(c) the extensive and widespread use of the Complainant's Trademarks and the Respondent's use of the Domain Names mean that there is a likelihood of confusion as to association or affiliation between the Respondent and the Complainant, when in fact there is no such association or affiliation;
(d) to the best of the Complainant's knowledge, the Respondent has not used, nor made any demonstrable preparations to use, the Domain Names in connection with a bona fide offering of goods or services;
(e) to the best of the Complainant's knowledge, the Respondent is not commonly known by the Domain Names and is not making a legitimate, fair, noncommercial use of the Domain Names, without the intent for commercial gain;
(f) the evidence indicates that the Respondent has registered the Domain Names that incorporate misspellings of a well-known trademark in order to trade on the goodwill of the Complainant as owner of the trademark;
(g) the Respondent has used the Domain Names to create a likelihood of confusion with the Complainant's trademark as to source, sponsorship, affiliation or endorsement of the Respondent's website, and is using this confusion to entice Internet users to third party websites linked to the Respondent's website, thereby achieving commercial gain for the Respondent through revenue from pay-per-click advertising; and
(h) the Respondent's responses to the “cease and desist” letters sent by the Complainant, in which the Respondent (via its agent D. Smith) offered to sell the Domain Names to the Complainant, are further evidence of bad faith on the part of the Respondent.
The Respondent did not reply to the Complainant's contentions.
The fact that the Respondent has not submitted a Response does not automatically result in a decision in favour of the Complainant. However, the failure of the Respondent to file a Response may result in the Panel drawing certain inferences from the Complainant's evidence. The Panel may accept all reasonable and supported allegations and inferences following from the Complaint as true: Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403; Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437.
Under paragraph 4(a) of the Policy, the burden of proof lies with the Complainant to show each of the following three elements:
(i) the Domain Names are identical 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 Domain Names; and
(iii) the Domain Names have been registered and are being used by the Respondent in bad faith.
The Panel accepts that the Complainant has rights in the NEW YORK & COMPANY trademark and the associated trademarks. The question is therefore whether the Respondent's Domain Names are identical or confusingly similar to the trademarks in which the Complainant has rights.
The Domain Names are all misspellings of the Complainant's NEW YORK & COMPANY mark, and incorporate the word “and” rather than the ampersand logogram. The substitution of “&” for “and” is legally insignificant and does not serve to distinguish the Domain Names in any way.
The misspellings are, in the case of <mewyorkandcompany.com>, the substitution of “m” for “n” at the beginning of the Domain Name; with respect to <neworkandcompany.com>, the removal of the letter “y” from the beginning of the word “york” in the Domain Name; and in relation to <newyorkandcompamy.com>, the common misspelling of the word ‘company'.
None of the above misspellings serve to distinguish the Domain Names from the Complainant's trademark. Rather, all three Domain Names constitute common and foreseeable misspellings of the Complainant's trademarks (as well as the Complainant's own domain name). It is well-established that domain names incorporating a slightly misspelled version of a trademark may be held to be confusingly similar to such trademark. See, for example, Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775 and Swarovski A.G v. Modern Empire Internet Ltd, WIPO Case No. D2006-0148.
The Panel finds that the Domain Names are confusingly similar to the mark NEW YORK & COMPANY in which the Complainant has rights. Element 4(a)(i) of the Policy is made out.
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions states that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of the respondent, the respondent carries the burden of demonstrating it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel finds that there is no evidence to show that the Respondent has any rights in any trademarks or service marks which are identical, similar or related to the Domain Names. Therefore, the Panel will assess the Respondent's rights in the Domain Names (or lack thereof) based on the Respondent's use of the Domain Names in accordance with the available record.
All three of the Domain Names point to websites which feature sponsored links and click-through advertising. The use of a domain name containing a complainant's trademark or service mark for the purpose of collecting referral fees from sponsored advertising links has been consistently held in the appropriate circumstances not to be a legitimate offering of goods or services (PRL USA Holdings, Inc. v. LucasCobb, WIPO Case No. D2006-0162; Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437). Based on the evidence submitted by the Complainant, the Panel finds that the Respondent's use of the Domain Names is not legitimate.
The Panel finds that, in the circumstances of the present case, the Complainant has satisfied paragraph 4(a)(ii) of the Policy in respect of each of the disputed Domain Names.
The Panel accepts that the Complainant has made extensive commercial use of its mark so that there is a substantial amount of goodwill attached to the NEW YORK & COMPANY trademark and the associated trademarks owned by the Complainant.
The circumstances of the case also indicate that the Respondent must have known of the Complainant's Trademarks and its rights therein. All three of the Domain Names incorporate misspellings of the Complainant's mark NEW YORK & COMPANY. It is therefore readily apparent that the Respondent trades on the likelihood that Internet users will assume that there is some connection between the Respondent and the Complainant, and will derive commercial advantage from that assumption, either by attracting users to the Respondent's own website, or from referral fees: Control Techniques Ltd. v. Lektronix Ltd., WIPO Case No. D2006-1052; Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556.
The Panel accepts that the individual, D. Smith, who the Complainant dealt with from the outset of the communications regarding the Domain Names, was an agent or representative of the Respondent. In this regard, the Panel notes that D. Smith is recorded as having been involved with the Respondent in other domain name disputes: see for example LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138. Mr. Smith offered to sell the Domain Names to the Complainant for USD 250.00 and USD 500.00. Such a request for valuable consideration above and beyond the Respondent's reasonable out-of-pocket expenses relating to the Domain Names indicates that the Domain Names are being used in bad faith (paragraph 4(b)(i) of the Policy).
Finally, the Panel notes that the Respondent's registration of domain names has been successfully challenged through UDRP proceedings on at least 37 occasions. These cases demonstrate that the Respondent has engaged in a pattern of domain name hijacking which, considered together with the use by the Respondent of a WhoIs privacy shield to conceal the Respondent's identity, further supports the Panel's finding that the Respondent has registered and used the Domain Names in bad faith.
The Panel therefore finds that the Respondent has registered and used the Domain Names in bad faith, and paragraph 4(a)(iii) of the Policy has been satisfied.
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 Names <mewyorkandcompany.com>, <neworkandcompany.com> and <newyorkandcompamy.com> be transferred to the Complainant.
Dated: April 20, 2010