The Complainant is Coach, Inc. of New York, United States of America, represented internally.
The Respondent is Mr. Derrick Walker of Leeds, West Yorkshire, United Kingdom of Great Britain and Northern Ireland.
The disputed domain names <coachbags.biz> and <coachbagsoutlets.com> are registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 3, 2010. On June 3, 2010, the Center transmitted by email to
GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On June 7, 2010, GoDaddy.com, Inc. 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”).
On June 11, 2010, the Center received by e-mail a copy of a letter addressed to the Complainant from a solicitor for Mr. Clive Walker, stated to be formerly Derrick Walker. The letter advised that the solicitor's client had received the complaint, does not have any involvement with the websites under the disputed domain names, does not control them and has no dealings with them, and believes that the client's name and an address similar to his have been given by whoever set up the websites to hide their operation of a website trading illegally. The solicitor indicated he would contact the registrar of the disputed domain names with the same information. The Panel is not aware of any further correspondence on this subject from or to Mr. Clive Walker, said to be formerly known as Derrick Walker, or his Solicitor, or with the registrar.
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 June 14, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 4, 2010. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent's default on July 5, 2010.
The Center appointed Joan Clark as the sole panelist in this matter on July 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 is the owner of the trademark COACH registered in the United States Patent and Trademark Office on February 5, 2002 for home furnishings. Coach Services, Inc., declared by the Complainant to be its subsidiary, is the owner of registrations for the trademark COACH registered in the United States Patent and Trademark Office on April 27, 2004, on December 11, 2007 and on June 2, 2009 in respect of various products.
The Complainant declares it has been engaged in the manufacture, marketing and sale of fine leather and mixed material products bearing the name Coach since 1941.
The domain name <coachbags.biz> was registered on March 3, 2010 and <coachbagsoutlets.com> was registered on March 2, 2010 in the name of the Respondent with the registrar GoDaddy.com, Inc.
i. Confusing similarity
The Complainant maintains that the disputed domain names are confusingly similar to its incontestable and famous registered trademarks. In support of its claim to these trademarks, the Complainant relies on several registrations in the United States of the trademark COACH for women's handbags, carry-on luggage and leather goods as early as August 9, 1977 under various names, Coach Products, Inc., Saramar Corporation, Sara Lee Corporation and Coach Services, Inc. as well as Coach, Inc.
The Complainant also relies on a registration in the European Community of the trademark COACH and design (including the depiction of a horse drawn carriage above the words COACH LEATHERWARE EST. 1941) on July 2, 2007 in the name Coach Services, Inc., as well as a registration of the trademark COACH and a different design in the name of Sara Lee Corporation on December 1, 1999.
In addition the Complainant has produced registration certificates for the trademark COACH registered in the United Kingdom in the name Sara Lee Corporation on April 25, 1995 and October 27, 2000.
The Complainant declares that it is a retailer of high end handbags, footwear, eyewear, fragrances, outerwear and accessories all sold under the brand name COACH, that the COACH brand was founded in 1941 almost 70 years ago, and that since that time the Complainant or its predecessors in interest have continuously engaged in the manufacturing, marketing and sale of fine leather and mixed material products bearing the COACH name. The Complainant avers that it has substantial presence in over 30 countries and has become an internationally known and well respected company, that it is publicly traded on the New York Stock Exchange and has annual gross sales of more than USD 3 billion worldwide.
The Complainant states that it first registered the COACH word mark with the United States Patent and Trademark Office on August 9, 1977 and that, along with its subsidiary Coach Services, Inc., it now owns almost 1200 COACH-formative trademark registrations around the world including the COACH word mark and several design marks including the word COACH, for clothing, handbags, small leather goods, and other items.
The Complainant maintains that the Respondent knowingly, wilfully and in bad faith adopted the Complainant's registered trademark COACH as a portion of the disputed domain names, with the intention of relying on the goodwill and excellent reputation enjoyed by the Complainant's COACH word mark and COACH-formative trademarks around the world. The Complainant refers to WIPO Panel UDRP decisions that establish that a domain name incorporating a trademark in its entirety with the addition of non distinctive prefixes or suffixes is generally not distinguishable from the trademark itself. The Complainant argues that the words bags and outlets in the disputed domain names are non distinctive dictionary terms used in conjunction with the famous COACH word mark and could easily lead a reasonable consumer to believe that the Respondent's websites are established and operated by or affiliated with the Complainant's brick and mortar COACH outlet stores or “www.coach.com”. The Complainant states that the Respondent's attempt to manufacture a non existent affiliation with the COACH trademark in the mind of the consumer is further compounded by the Respondent's recreation or mimicking of the overall look and feel of the Complainant's website. The Complainant supports its argument that the Respondent has been successful in its attempt to confuse web users, as the Complainant first learned of the disputed domain name < coachbagsoutlets.com> after receiving a worrisome query from a Coach customer who had been confused about the affiliation between that disputed domain name and the Complainant's business.
The Complainant concludes that the disputed domain names are confusingly similar to the Complainant's registered trademarks and caused actual confusion in the mind of the consumer.
ii. Respondent has no Rights or Legitimate Interests
The Complainant states that it has given no authorization or consent of any form to the Respondent to use the Complainant's trademarks within the disputed domain names. The Complainant believes that all goods for sale on the Respondent's websites are counterfeit and maintains the Respondent could have no legitimate interest in disputed domain names used solely for the sale of counterfeit goods. The Complainant adds that the disputed domain names do not contain common surnames to which the Respondent has a legitimate right and that there is no evidence that the Respondent is commonly and legitimately known in the normal course of business by the domain names or any variation thereof. The Complainant continues that the Respondent is not making any legitimate fair use of the disputed domain names, and believes that the disputed domain names exist only to divert customers from the Complainant's own website “www.coach.com” and to mislead customers into buying the Respondent's counterfeit merchandise based on the assumption that the goods offered are genuine and in some way affiliated with the Complainant.
iii. Registered and Used in Bad Faith
The Complainant refers to its manufacturing of high quality handbags and accessories for nearly 70 years and states that its first domain name < coach.com> has been operational since April 3, 1996 and currently has over 67, 000 unique visits per day. The Complainant states that the disputed domain names were registered in March 2010 long after the fame and reputation of the Complainant's trademarks had been established on the Internet, and with the bad faith intention of exploiting the COACH brand and selling counterfeit handbags.
The Complainant has attached a list of other domain names registered by the Respondent which include: < justdosports.biz>, < hervelegerdress2010.com>, < guccioutletonline.com>, < vibramfingershoes.com>, < focusluxury.com> and <christianlouboutinsaleshoes.com>. The Complainant maintains that all these websites offer for sale goods that bear third party trademarks. The Complainant states it has no reason to believe that the Respondent is licensed to use the trademarks Hervé Leger, Gucci, or Christian Louboutin for the domain names contained in this list.
The Complainant states its belief that the disputed domain names were registered by the Respondent in bad faith, solely for the purpose of trading on the Complainant's good name and reputation by selling counterfeit goods for which the Complainant owns all of the relevant trademarks and copyrights. The Complainant states that while <coachbags.biz> was inactive as of June 2, 2010, <coachbagsoutlets.com> is presently displaying a wide selection of handbags bearing the Complainant's trademarks and is an egregiously confusing example of a trademark counterfeiter's website.
The Complainant concludes that the disputed domain names were registered and are being used in bad faith.
The Complainant requests that the administrative panel issue a decision that the disputed domain names be transferred to the Complainant.
The Respondent did not reply to the Complainant's contentions.
A solicitor for Mr. Clive Walker, stated to be formerly Derrick Walker, advised the Center that the solicitor's client had received the Complaint, does not have any involvement with the websites under the disputed domain names, does not control them and has no dealings with them, and believes that the client's name and an address similar to his have been given by whoever set up the websites to hide their operation of a website trading illegally.
Identity of the Respondent
In view of the communications from the solicitor of Mr. Clive Walker stating that his client's former name was Derrick Walker with an address close to that shown in the complaint, and further declaring that the said Clive Walker, formerly Derrick Walker, has no involvement with the websites for the disputed domain names, does not control them and has no dealings with them, the question arises as to the true identity of the Respondent.
A respondent is defined in the Rules as “the holder of a domain-name registration against which a complaint is initiated”. The Panel assumes this to mean the registrant of the domain name. This is consistent with paragraph 3(b)(v) of the Rules which requires that a complainant shall:
“Provide the name of the Respondent (domain-name holder) and all information (including any postal and e-mail addresses and telephone and telefax numbers) known to Complainant regarding how to contact Respondent or any representative of Respondent, including contact information based on pre-complaint dealings, in sufficient detail to allow the Provider to send the complaint as described in Paragraph 2(a).”
Such information is available from the registrar's records for the registrant.
Unless a complainant believes the address and name of the registrant as recorded by the registrar are false, and if the true owner of the domain name be known, it should be disclosed and the true owner should be notified of the complaint. But when this is not known to a complainant, it is sufficient that the complaint simply identifies the registrant recorded in the WhoIs search results. See Mrs. Eva Padberg v. Eurobox Ltd., WIPO Case No. D2007-1886.
In the present case it may be, as the solicitor for Mr. Clive Walker (formerly Derrick Walker) suggests, that some other person has used the name of Derrick Walker fraudulently to register the disputed domain names. The identity of such other person, if existing, is not known and so such other person could not be named or notified.
From the administrative point of view, the Panel finds that the Complainant in this case has complied with paragraph 3(b)(v) of the Rules by naming as the Respondent the registrant of the disputed domain names, and the Complaint is not deficient in this respect.
The Panel agrees with the position expressed in. Mrs. Eva Pagberg v Eurobox supra that “. . .what is important here is that proceedings are brought in respect of the domain name and that the procedures are then followed to ensure that the person or persons who are reasonably identifiable as having an interest in that name are properly notified.”
Paragraph 4(a) of the Policy states that, in order to be successful with respect to the disputed domain name, the Complainant has the burden of providing that all three elements are present in the Complaint, namely:
(i) that the disputed 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 disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances which, for the purpose of paragraph 4(a)(iii) above, shall be evidence of registration and use of a domain name in bad faith but are not limitative.
Paragraph 4(c) of the Policy sets out three illustrative circumstances each of which, if proven, shall demonstrate the Respondent's rights or legitimate interests in the disputed domain name for purposes of paragraph 4(a)(ii) above.
The trademark COACH forms the first, prominent and distinctive part of the disputed domain names <coachbags.biz> and <coachbagsoutlets.com>. The suffix “bags” is a generic term descriptive of many of the goods which the Complainant has established have been sold under the trademark COACH, and the suffix “outlets” is a generic term descriptive of the points of sale of many of such goods. Many WIPO UDRP decisions have held that a domain name incorporating a trademark in its entirety with the addition of non-distinctive prefixes or suffixes is generally not distinguishable from the trademark itself. When the suffixes, as in this case, describe goods or points of sale usually associated with the trademark and its owner, the probability of confusion is increased. See Chanel Inc. v. Dong Jiancai, WIPO Case No. D2010-0144 and Kate Spade LLC v. Karen Vog, WIPO Case No. 2005-0284.
The Panel concludes that there is confusing similarity between each disputed domain name and the trademark COACH.
In order for the Complaint to succeed under the first element described above, it must be established that the trademark, with which the disputed domain names are confusingly similar, is a trademark in which the Complainant has rights. The Complainant has relied upon registrations in the United States Patent and Trademark Office of the trademark COACH going back to 1963 and 1977, the first registered in the name of Gail Leather Products, Inc., and the second in the name of Coach Products, Inc., followed by several registrations in the names of Saramar Corporation and Sara Lee Corporation. While these may be predecessors in title to the Complainant, there is no clear statement to this effect, and the Panel relies upon the registration of the trademark COACH on February 5, 2002 in the name of the Complainant and subsequent registrations of the trademark COACH in the name of Coach Services, Inc., which the Complainant has stated to be its subsidiary.
The Panel concludes that the Complainant has rights in the trademark COACH, as shown in the registrations in the name of Coach Inc. and its subsidiary Coach Services, Inc.
The first element in order for the Complaint to succeed has therefore been satisfied.
The Complainant has established that it knows of no circumstance which would indicate the Respondent has rights or legitimate interests in either of the disputed domain names. The Respondent has not filed a Response, other than the letter from a solicitor for Mr. Clive Walker, and the negative inference suggested by the Complainant has not been refuted.
As there is no evidence that the Respondent ever obtained authorization or consent from the Complainant to use its trademark COACH in the disputed domain names, no evidence that the Respondent was ever known by either of these domain names, and no evidence that the Respondent was making a legitimate fair use of the disputed domain names, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain names.
The second element for the Complaint to succeed has therefore been satisfied.
The Complainant has asserted its continuous use of the trademark COACH since 1941 in the manufacture, marketing and sale of fine leather and mixed material products bearing that trademark., and has stated that it has a substantial presence in over 30 countries, is publicly traded on the New York Stock Exchange and has annual gross sales of more than USD 3 billion worldwide. It may be concluded that the Complainant's trademark COACH was widely known. No justification has been put forward by the Respondent for adoption of the disputed domain names which contain both the Complainant's trademark and descriptions of the goods and points of sale of same, which it would be unreasonable to consider a coincidence. The reasonable conclusion is that the disputed domain names were adopted in order to take advantage of the renown and goodwill associated with the Complainant's trademark, and to attract to the websites for the disputed domain names Internet viewers familiar with and looking for products sold under the trademark COACH by creating a likelihood of confusion with the Complainant's trademark. The Panel has no hesitation in concluding that the disputed domain names were adopted in bad faith.
Further evidence of the bad faith of the Respondent is to be found in the design of a horse drawn carriage with driver above a rectangle bearing the words COACH LEATHERWARE below, and below that “EST. 1941”. This design is the subject of the Complainant's European Community trademark registration, registered July 2, 2007, and appears on the reproductions produced by the Complainant of the web pages of the Complainant's website “www.coach.com”, as well as on the website for each of the disputed domain names. This egregious use of the Complainant's detailed and highly distinctive design mark which would enhance the likelihood of confusion [which according to the Complainant has already occurred] is clearly intentional and reinforces the finding of bad faith.
The Complainant states that <coachbags.biz> is inactive as of June 2, 2010. Such inactivity may be considered to be a passive use. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The very existence of this disputed domain name precludes the owner of the trademark with which it is confusing from itself adopting such disputed domain name.
The other disputed domain name, <coachbagsoutlets.com>, appears to have been in active use when the Complaint was filed.
For the same reasons that the Panel concludes the disputed domain names were registered in bad faith, the Panel concludes that they have been used, actively or inactively, 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 names <coachbags.biz> and <coachbagsoutlets.com> be transferred to the Complainant.
Dated: July 22, 2010