WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Coast Fashions Limited v. Joseph Kerr
Case No. D2012-1641
1. The Parties
The Complainant is Coast Fashions Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by Heatons LLP, United Kingdom.
The Respondent is Joseph Kerr of Shanghai, China.
2. The Domain Name and Registrar
The disputed domain name <coastdressesireland.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on August 16, 2012. On August 16, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 20, 2012, the Registrar 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 August 24, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 13, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 18, 2012.
The Center appointed Michelle Brownlee as the sole panelist in this matter on September 25, 2012. 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 is the owner of United Kingdom Trade Mark Registration Number 2168211A, issued April 14, 2000, for the mark COAST in block letter and stylized form in connection with goods in classes 3, 14, 18 and 25, including a variety of clothing items. The Complainant also owns European Community Trade Mark Registration Number 4382339 for the mark COAST in connection with goods in classes 3, 9, 14, 18 and 25 and services in class 35. This registration was issued on August 4, 2010, and also covers a wide range of clothing items.
The Domain Name was registered on May 7, 2012.
5. Parties’ Contentions
The Complainant has been using the COAST trademark in connection with the retail sale of clothing since 1981. The Complainant trades from over 344 COAST stores in 24 countries located throughout Europe, the United States, the Russian Federation, Australasia and the Middle East. The Complainant has an international web site located at “www.coast-stores.co.uk” from which it sells and delivers clothing. The international retail value of products sold under the COAST brand directly and through authorized resellers/partners was GDP 130 million for the year ending January 31, 2012.
The Complainant argues that the Domain Name is “virtually identical” to its COAST trademark because the distinctive element of the Domain Name is COAST. The Complainant also contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant alleges that the Respondent is not connected with nor licensed by the Complainant to use the Domain Name, and the Respondent been offering COAST branded products for sale which have been verified as being counterfeit. The Complainant submits that the Respondent has registered and is using the Domain Name in bad faith. The Complainant argues that the Domain Name was registered by the Respondent solely for the purpose of establishing a web site where counterfeit COAST branded products are sold. The Complainant alleges that consumers have purchased poor quality garments from the web site hosted at the Domain Name and have complained to the Complainant’s customer service, and such products were determined to be counterfeit.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant must prove the following three elements:
(1) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns rights in the trademark COAST. There is much support in precedent interpreting the Policy for the proposition that the pairing of a distinctive trademark with less distinctive terms does not prevent a finding of confusing similarity with the distinctive trademark. See, e.g., MasterCard International Incorporated v. Michael J Yanda, Indy Web Productions, WIPO Case No. D2007-1140; Parfums Christian Dior v. 1 Netpower, Inc., WIPO Case No. D2000-0022 (<christiandiorcosmetics.com> and <christiandiorfashions.com> confusingly similar to CHRISTIAN DIOR); Toyota Motor Sales USA v. Rafi Hamid dba ABC Automobile Buyer, WIPO Case No. D2001-0032 (<leasinglexus.com> and <lexuselite.com> confusingly similar to LEXUS). Accordingly, the Panel finds that the Domain Name, which pairs the COAST trademark with the less distinctive terms “dresses” and “Ireland,” as well as the gTLD “.com” (which may be disregarded for purposes of the Policy) is confusingly similar to the Complainant’s COAST trademark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that a respondent can demonstrate rights to or legitimate interests in a domain name by demonstrating one of the following facts:
(i) before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent 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 at issue.
The Respondent has not presented evidence that the Respondent used or made preparations to use the Domain Name in connection with a bona fide offering of goods or services, that the Respondent is commonly known by the Domain Name or that the Respondent is making a noncommercial or fair use of the Domain Name, or in any other way refuted the Complainant’s prima facie case. The Complainant has alleged that the Respondent used the Domain Name in connection with a web site that offered counterfeits of the Complainant’s COAST branded clothing for sale, and the Respondent has not denied the allegation. The Respondent’s web site also includes the title “Welcome To Coast Dresses Online Store” and a copyright notice “Copyright © 2011 Coast Dress Ireland Discount Sale”, without any disclaimers or other notices. In the Panel’s view, this cannot be considered a bona fide offering of goods or services. Accordingly, the Panel finds that the Complainant has established this element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances are evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.
The Complainant has established bad faith under paragraph 4(b)(iv) of the Policy. The Respondent registered the Domain Name long after the Complainant began using the COAST mark in connection with clothing. Further, the Respondent is using the Domain Name in connection with a web site that allegedly offers counterfeit versions of the Complainant’s COAST branded clothing for sale and which uses titles and notices which may confuse Internet users into believing that the web site is associated with the Complainant, which demonstrates that the Respondent was well aware of the Complainant’s rights when the Respondent registered and used the Domain Name. There is no question that the Respondent’s use of the Domain Name was an intentional attempt to divert Internet traffic to the Respondent’s site by creating a likelihood of confusion with the Complainant’s trademark.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <coastdressesireland.com> be transferred to the Complainant.
Dated: October 6, 2012