WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kate Spade, LLC v. Ming Tuff
Case No. D2012-1907
1. The Parties
Complainant is Kate Spade, LLC of New York, New York, United States of America, represented by Davis Wright Tremaine LLP, United States of America.
Respondent is Ming Tuff of Winchester, Virginia, United States of America.
2. The Domain Name and Registrar
The disputed domain name <katespade.xxx> is registered with 101domain, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 26, 2012. On September 26, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 27, 2012, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the disputed domain name.
On October 1, 2012, the Center contacted the Registrar regarding the expiration of the disputed domain name, which was set for December 6, 2012, and requested confirmation that the disputed domain name be placed in “Registrar Lock” status pending completion the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) proceedings hereunder. The Center also requested whether any action was required by either Respondent or Complainant to keep the disputed domain name under “Registrar Lock”. Registrar confirmed the “Registrar Lock” and that no further action was required on October 1, 2012.
The Center verified that the Complaint satisfied the formal requirements of 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 Respondent of the Complaint, and the proceedings commenced on October 2, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 22, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 31, 2012.
The Center appointed Timothy D. Casey as the sole panelist in this matter on November 28, 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
Complainant has a large number of registered trademarks that include “Kate Spade” as the dominant portion of each trademark, including U.S. Trademark Registration No. 2,064,708 for KATE SPADE, which was registered on May 27, 1997, (the “Trademarks”).
The disputed domain name was registered by Respondent on November 25, 2011. On December 6, 2011, Respondent also registered <legos.xxx>, <dannon.xxx>, <absolutevodka.xxx>, <hellmanns.xxx>, <shopify.xxx> and <wachovia.xxx>.
5. Parties’ Contentions
Complainant contends that Complainant has registered and owns the Trademarks for clothing and accessories of its design, manufacture and distribution, and that the Trademaks have become famous in the Unites States and have obtained the status of notorious marks under the Paris Convention. Complainant has used the Trademarks for over 15 years and spent millions advertising and promoting Complainant’s products under the Trademarks.
Complainant contends that Respondent registered the disputed domain name in November 2011, that the disputed domain name is identical to the Trademarks (and the addition of the generic top-level domain is irrelevant), that Respondent has no rights or legitimate interests in the disputed domain name, and that Respondent currently only uses the disputed domain name for a “parking site” provided by the Registrar.
Complainant contends that use of its allegedly famous mark confers no rights or legitimate interests in the disputed domain name to Respondent, that “well-known” or “widely recognized” trademarks cannot be legitimately used by Respondent, that Respondent had to have known of the Trademarks prior to registering the disputed domain name, that no relationship exists between Complainant and Respondent that would give rise to any rights or legitimate interests in the disputed domain name, and that Respondent is not commonly known by the disputed domain name and is not making a legitimate noncommercial or fair use of the domain name.
Complainant contends that registering a domain name “obviously connected with well-known trademarks” of a third party suggests bad faith, as does the registration of other “.xxx” domain names. Complainant also provided a copy of a reverse WhoIs lookup of a person sharing the same name as Respondent that includes a list of 172 registered “.xxx” domain names including many other third-party trademarks as part of the domain names. Complainant contends that Respondent has engaged in a pattern of behavior that involves registering “infringing domain names”, which is also evidence of bath faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name includes many of the Trademarks without any modification or change aside from removing the space between the words “kate” and “spade”, which is inconsequential. The Panel agrees that the addition of the “.xxx” generic top-level domain is irrelevant. Accordingly, the dispute domain name is identical to a number of the Trademarks.
The Panel finds the disputed domain name to be identical or confusingly similar to the Trademarks and that the first element of the Policy has been met by Complainant.
B. Rights or Legitimate Interests
In order for Respondent to demonstrate rights or legitimate interests in the disputed domain name, Respondent may show:
“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.”
The Panel agrees that Respondent’s mere registration of the disputed domain name confers no rights or legitimate interests, but Complainant has failed to address whether Respondent’s use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services confers any such rights or interests. Since Respondent did not address this issue, the Panel will refer to the facts presented in the Complaint to determine if this aspect of the second element can be resolved.
The only demonstrated use Respondent appears to have made of the disputed domain name prior to notice of the Complaint was to park the domain name at a “parking site” provided by the Registrar. According to WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) paragraph 2.6: “Panels have generally recognized that use of a domain name to post parking and landing pages or PPC links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a bona fide offering of goods or services," or from "legitimate noncommercial or fair use" of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder.”
At the date of this decision the disputed domain name no longer resolved to any website, so the Panel can only consider the parking website provided in the Complaint. That website did not appear to provide any connection to goods or services competitive with Complainant. Nevertheless, the Panel does not see that merely parking a disputed domain name at a registrar parking website can be considered to demonstrate any use or preparation to use the dispute domain name in connection with the bona fide offering of goods or services by Respondent.
Respondent has not replied to Complainant’s contention that Respondent is not commonly known by the disputed domain name and there are no facts to indicate otherwise; therefore the Panel accepts this contention as true.
Likewise, Respondent has not replied to Complainant’s contention that Respondent is not making a legitimate noncommercial or fair use of the dispute domain name. While Complainant contends that Respondent’s registration of the disputed domain name deprives Complainant of the ability to register the same domain name, this argument rings hollow as Complainant appears to run a legitimate business designing, manufacturing and distributing a wide variety of goods and the “.xxx” domain is generally associated with adult websites; a business in which Complainant seems unlikely to engage. Nevertheless, Complainant does provide some evidence that Respondent’s use of the disputed domain name could misleadingly divert consumers to a website not operated by Complainant. At the same time, while Complainant has not made the argument, the Panel can certainly see that associating the Trademarks with websites potentially affiliated with adult services or pornography could serve to tarnish the Trademarks, especially if Complainant’s contentions that the Trademarks are famous and notorious are true. As there are no facts to indicate otherwise, the Panel accepts this later possibility as true and finds that Respondent use is not a legitimate, noncommercial or fair use of the dispute domain name.
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name and that the second element of the Policy has been met by Complainant.
C. Registered and Used in Bad Faith
Complainant contends, and the Panel agrees, that Respondent was likely quite aware of the Trademarks prior to registration of the disputed domain name. The evidence provided by Complainant indicates that Respondent registered a number of other domain names based on third-party trademarks. It is beyond the realm of reasonable possibilities that Respondent’s registration of all of these domain names during the same time period, using third party trademarks, was by pure chance.
Once again, Complainant has failed to provide any argument or evidence related to an element of the Policy, namely providing some argument and proof that the disputed domain name was not only registered in bad faith, but has been used in bad faith as well. The Policy requires “registration and use in bad faith” (emphasis added) in order for the third element to have been met by Complainant. However, as Respondent has not replied to counter Complainant’s lack of contention in this regard, the Panel will consider the evidence presented to see whether this issue can be resolved.
According to WIPO Overview 2.0, “panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith” and that the “panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity.” Complainant contends, and Respondent does not contest, the fact that the Trademarks are well-known, and Respondent has not replied to the Complaint, so at least these two elements are present. Assuming, however, that “Ming Tuft” is actually Respondent’s name, and there is no evidence to indicate otherwise, it does not appear that Respondent has attempted to conceal his or her identity.
However, the Panel is encouraged to examine all of the circumstances of the case, which includes Respondent’s apparent pattern of conduct. Again, according to WIPO Overview 2.0, a “pattern of conduct can involve multiple UDRP cases with similar fact situations or a single case where the respondent has registered multiple domain names which are similar to trademarks.” Complainant has not provided any evidence of prior UDRP cases involving similar facts related to this Respondent, which the Panel finds strange given the fact that many of the domain names incorporating third-party marks were registered over a year ago and should have resulted in at least one other complaint if trademark infringement was involved. Nevertheless, the Panel recognizes many of the other trademarks used in the list of domain names provided in the WhoIs lookup and is willing to consider as true the fact that such trademarks do not belong and are not otherwise licensed to Respondent. Accordingly, given the fact that Respondent appears to have engaged in a pattern of conduct that involves the registration and possible use of many domain names that include third party trademarks in which Respondent has no rights or legitimate interest, the Panel finds that Respondents use of the disputed domain name is in bad faith.
The Panel finds that Respondent has registered and is using the disputed domain name in bad faith and that the third element of the Policy has been met by Complainant.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <katespade.xxx> be transferred to the Complainant.
Timothy D. Casey
Date: December 12, 2012