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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Saks & Company v. Whois Privacy Management Service

Case No. D2013-0992

1. The Parties

The Complainant is Saks & Company of New York, New York, United States of America (“US”), represented by Loeb & Loeb, LLP, USA.

The Respondent is Whois Privacy Management Service of Lewes, Delaware, US.

2. The Domain Name and Registrar

The disputed domain name <saksofffifth.com> is registered with EPAG Domainservices GmbH (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 3, 2013. On June 4, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 5, 2013, 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 and informed the Center that the language of the registration agreement for the disputed domain name was German. On June 6, 2013, the Center requested the Complainant to provide a) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceeding should be in English; b) submit the Complaint translated into German; or c) submit a request for English to be the language of the administrative proceeding. The parties didn’t submit any comments in this respect. Although in its Complaint, the Complainant had already requested that English be the languages of the proceedings. The Center proceeded in both languages, German and English.

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 June 14, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 4, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 5, 2013.

The Center appointed Stefan Naumann as the sole panelist in this matter on July 10, 2013. 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 Saks & Company is a well-known US retail store chain. It has submitted evidence that it owns the following trademarks amongst others:

- US trademark SAKS FIFTH AVENUE OFF 5TH for retail department store services N°3551064 registered on December 23, 2008;

- US trademark OFF 5TH for retail clothing mail and telephone other services N°1976296 registered on May 28, 1996;

- US trademark SAKS FIFTH AVENUE for retail department store services N°737308 registered on September 4, 1962;

- European Community Trademark SAKS for retail department store services N°3344678 registered on May 6, 2005.

These trademarks were filed before the disputed domain name <saksofffifth.com> was registered on March 30, 2011.

The Complainant has registered and/or operates websites at the following domain names amongst others: <saksoff5th.com>, <off5th.com>, <offfifth.com>, <saksfifthavenueoff5th.com>, <saksfifthavenueofffifth.com>, <saks.com>, and <saksfifthavenue.com>.

The evidence shows that the website that appears at “www.saksofffifth.com” contains links to websites under ccTlds “.de” and “.ch” titled Sneakers Online Shop, Design Outlet Online, texts in German and English, links titled Saks Fifth Ave, Saks Off Fifth, Saks 5th Avenue, etc. as well as a photograph of mannequins in clothing with the terms “Saksofffifth.com”.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that its SAKS, SAKS FIFTH AVENUE and SAKS FIFTH AVENUE OFF 5TH marks are famous in the US and in other countries, that the Respondent chose the disputed domain name to profit from confusion with the SAKS and SAKS OFF 5TH marks, that the website features sponsored links to the Complainants’ website and to third party websites featuring goods and services that are similar or identical to those offered by the Complainant, that the Respondent uses the disputed domain name to run a pay-per-click parking service business, that the disputed domain name is confusingly similar to the Complainant’s marks, that the terms “off fifth” and “off 5th” are identical according to established trademark principles, the variant spelling of “5th” being a form of typosquatting.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In order to succeed in its claim, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests with respect to the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Language of Proceedings

Pursuant to Article 11 of the Rules, the language of the administrative proceeding should be that of the registration agreement, subject however to the Panel’s authority to determine otherwise having regard to the circumstances of the administrative proceeding.

The Complaint was filed in English. The Registrar informed the Center that the language of the registration agreement for the disputed domain name was German. The Center proceeded in both languages once it received the Registrar’s response on June 6, 2013 and offered the parties the opportunity to comment on this issue. The Complainant submitted with the Complaint a copy of the Registrar’s general terms and conditions in English. Although, the Complainant already included a request for English to be the language of the administrative proceedings, the Complainant did not reply to the Center’s request of June 6.

The Panel notes that on June 5, 2013, the Registrar responded to the Center’s request for registrar verification in English, that the Registrar’s website is available in English as well as German, that the Registrar has made available its general terms and conditions in English since the Complainant was in a position to submit an English language version on the Registrar’s letterhead, and that the Parties are both US companies.

It thus seems that all entities that may be affected by or have to deal with the decision in this proceeding would be able to understand a decision written in English, whereas the Parties may have to have a decision written in German translated into English.

Based on the available evidence, the Panel therefore considers that its decision can be validly rendered in English and would be understood by all involved.

B. Identical or Confusingly Similar

The disputed domain name combines the terms “Saks” and ”Off fifth”. The Complainant’s trademarks combine the terms “Saks” and “Fifth Avenue”, or “Off” and “5th”, or “Saks”, “Fifth Avenue” and “Off 5th”, but not the terms “Saks” and “Off Fifth”. The Respondent filled this gap with the disputed domain name. The disputed domain name is confusingly similar to the Complainant’s trademarks since consumers may expect to write a number in letters when entering a domain name and may confuse or associate “Off 5th” and “Fifth Avenue” with “Off fifth”, particularly since the Complainant itself uses both “off 5th” and “off fifth” for its domain names. In addition, the Panel finds that the combination of the identical term “Saks” together with a term that is confusingly similar to the Complainant’s OFF 5TH and SAKS FIFTH AVENUE trademarks is confusingly similar.

The Panel is satisfied that the disputed domain name is confusingly similar to the Complainant’s trademarks for the purposes of the Policy.

C. Rights or Legitimate Interests

The Respondent has chosen not to reply to the Complaint. The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests and finds no indication in the evidence that the Respondent claims or could have claimed rights or legitimate interests of its own in the terms “Saks off fifth”. To the contrary, the Respondent is a privacy management service behind which the actual operator of the website is hiding its identity. The Panel finds that in this case, the use of a privacy service is a further indication that the operator behind the Respondent is not attempting to operate a business other than that of taking advantage of the reputation of the Complainant’s marks and of the gap between those marks, which cover the terms “Saks Fifth Avenue Off 5th”, “Saks Fifth Avenue” and “Off 5th”, but not “Off fifth”. Since the Respondent has no permission from the Complainant, its use of the disputed domain name is without rights or legitimate interests.

The Panel considers that in the present case the Respondent does not have any rights or legitimate interests in the disputed domain name.

D. Registered and Used in Bad Faith

The Respondent’s use of a webpage with links to various websites offering products competing with those of the Complainant as well as to the Complainant’s website indicates that the Respondent registered and is using the disputed domain name in bad faith. The Respondent’s use of links on the website that include the Complainant’s marks indicate that the Respondent must have been fully aware of the Complainant’s various marks.

In view of the above, the Panel also finds that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s marks as per paragraph 4(b)(iv) of the Policy.

7. Decision

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 <saksofffifth.com> be transferred to the Complainant.

Stefan Naumann
Sole Panelist
Date: July 25, 2013

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