WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Levi Strauss & Co. v. Shotgun

Case No. D2014-0276

1. The Parties

The Complainant is Levi Strauss & Co. of San Francisco, California, United States of America (“US”), represented by Kilpatrick Townsend & Stockton LLP, US.

The Respondent is Shotgun of London, United Kingdom of Great Britain and Northern Ireland (“UK”).

2. The Domain Names and Registrar

The disputed domain names <levis-red.com> and <levisred.com> are registered with Network Solutions, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 21, 2014. On February 24, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 24, 2014, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on March 7, 2014.

The Center verified that the Complaint together with the 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 7, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 27, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 28, 2014.

The Center appointed Assen Alexiev as the sole panelist in this matter on April 3, 2014. 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 Levi Strauss & Co. started its business in the 1850’s. It manufactures and sells a variety of clothing products, including its LEVI’S jeans, throughout the world. The Complainant sells its products through retail partners and directly to consumers worldwide, including through its website at “www.levi.com”. In 1999, the Complainant introduced a new line of premium jeans and garments under the brand LEVI’S RED.

The Complainant is the registered owner of the following trademarks, registered in the US (the “LEVI’S trademarks”):

- the word trademark LEVI’S with reg. No. 250,265, registered on December 4, 1928 for goods and services in International Class 25;

- the word trademark LEVI’S with reg. No. 581,610, registered on October 27,1953 for goods and services in International Classes 10, 25 and 26; and

- the word trademark LEVI’S with reg. No. 1,140,011, registered on September 30, 1980 for goods and services in International Class 25.

The disputed domain names were both registered on March 1, 2000.

5. Parties’ Contentions

A. Complainant

The Complainant contends that its LEVI’S trademarks and products marked with these trademarks have gained wide recognition and popularity throughout the world as a result of extensive advertising and sales for a long period of time.

The Complainant submits that the disputed domain names are confusingly similar to the LEVI’S trademarks. They represent a combination of the element “levis”, which is identical to the LEVI’S trademarks, and the element “red”, which refers to the Complainant’s brand for premium jeans and garments. This combination may lead to consumer confusion as to the source behind the disputed domain names. The likelihood of confusion between a mark and a domain name is not eliminated by the addition of terms, particularly when those terms refer to or suggest a connection with the Complainant or its products. Given the renown of the LEVI’S trademark, consumers will have the impression that the disputed domain names are related to the Complainant.

According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant has never authorized the Respondent to use the LEVI’S trademarks. The Respondent has never been known by the disputed domain names. The Respondent is not using the disputed domain names for a bona fide offering of goods or services. Instead, the Respondent has registered the disputed domain names to passively hold them and to divert consumers seeking the Complainant’s goods. The Respondent’s use of the disputed domain names is not legitimate, noncommercial or fair. Rather, the Respondent’s objective is to mislead and divert online customers and to prevent the Complainant from interacting with consumers seeking the Complainant's goods.

The Complainant submits that the Respondent has registered and is using the disputed domain names in bad faith. The Respondent has acted with prior knowledge of the Complainant’s LEVI’S trademarks and its LEVI’S RED line of products. The disputed domain names were registered only a few months after the Complainant introduced its LEVI’S RED collection, and are confusingly similar to the Complainant’s LEVI’S trademarks. The timing of the registration and the choice of domain names show the Respondent’s intent to trade on the Complainant’s brand and to prevent the Complainant from registering domain names that correspond directly to its brand, and the Respondent’s intention to create confusion and attract Internet users to its own benefit. The Respondent has passively held the infringing domain names after their registration.

The Complainant refers to the decision in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, and claims that the facts in the present case are comparable. It submits that the passive holding by the Respondent of the disputed domain names amounts to their use in bad faith. The circumstances identified in paragraph 4(b) of the Policy are not limited, and other circumstances can also be evidence for the registration and use of a domain name in bad faith. The Complainant’s LEVI’S trademark is well known and reputable, and has enjoyed such status for a long period of time. The Complainant’s LEVI’S RED collection has attracted the attention of the fashion community and the consumers since its debut in 1999. According to the Complainant, these circumstances show that the Respondent was aware of the Complainant’s LEVI’S trademarks and of its LEVI’S RED collection prior to the registration of the disputed domain names, which was effected just months after the Complainant introduced its LEVI’S RED line for the first time. Because of the Respondent’s knowledge of Complainant’s trademark rights and lack of good faith use of the disputed domain names, their passive holding by the Respondent constitutes bad faith use of the disputed domain names.

The Complainant requests the transfer of the disputed domain names.

B. Respondent

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

6. Discussion and Findings

Pursuant to Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain names:

(i) That the disputed domain names are 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 names; and

(iii) That the Respondent has registered and is using the disputed domain names in bad faith.

By Rules, paragraph 5(b)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”

In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.

In the event of a default, under Rules, paragraph (14)(b): “…the Panel shall draw such inferences therefrom as it considers appropriate.” As stated by the panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004: “Here, the potential evidence of good faith registration and use was in respondent’s control. Respondent’s failure to present any such evidence or to deny complainant’s allegations allows an inference that the evidence would not have been favorable to respondent.” As stated by the panel in Viacom International Inc. v. Ir Suryani, WIPO Case No. D2001-1443: “Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant. […] In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence.”

In this administrative proceeding, the Respondent has chosen not to submit a Response. Its default entitles the Panel to conclude that the Respondent has no arguments or evidence to rebut the assertions of the Complainant. The Panel has to take his decision on the basis of the statements and documents before it and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

A. Identical or Confusingly Similar

The Complainant has provided evidence and has thus established its rights in the LEVI’S trademarks, registered in the US.

It is a common practice under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) such as the “.com” section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). Therefore, the relevant part of the disputed domain name <levis-red.com> is its “levis-red” section. This section contains two distinct elements: “levis” and “red”. The element “levis” is distinctive and dominates the combination. It is identical to the Complainant’s LEVI’S trademarks, while the “red” element is descriptive. In this situation the Panel accepts that an average person may regard this domain name as referring to the Complainant and its LEVI’S trademarks. The same considerations are fully applicable to the other disputed domain name without the hyphen.

For these reasons, the Panel finds that the disputed domain names are confusingly similar to the LEVI’S trademarks in which the Complainant has rights.

B. Rights or Legitimate Interests

The Policy requires the Complainant to make at least a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain names. Once the Complainant makes such a showing, the Respondent may provide evidence to demonstrate that it has rights or legitimate interests in the disputed domain names. The burden of proof, however, always remains on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain names. See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).

The Complainant claims that the Respondent has no rights or legitimate interests in the disputed domain names, stating a number of arguments in this regard. Thus, the Complainant establishes a prima facie case under Policy, paragraph 4(a)(ii).

The Respondent has chosen not to present to the Panel any allegations or documents in its defense despite the burden under the Rules, paragraph 5(b)(i) and 5(b)(ix) or the consequences that the Panel may extract from the fact of a default (Rules, paragraph 14). If the Respondent had any justification for registering or using the disputed domain names, it could have provided it. In particular, the Respondent has not contended that any of the circumstances described in Policy, paragraph 4(c) — or any other circumstance — is present in its favor.

The only information available about the Respondent is the WhoIs information, provided by the Registrar.

The WhoIs information contains no evidence of rights or legitimate interests of the Respondent in the disputed domain names, which, as found above, are confusingly similar to the distinctive and popular LEVI’S trademarks of the Complainant. The Respondent makes no claims for having rights or legitimate interests in respect of the disputed domain names and provides no explanation whatsoever for their registration and use. As submitted by the Complainant and not denied by the Respondent, the disputed domain names were registered only months after the Complainant launched its LEVI’S RED line of products, and have been passively held by the Respondent thereafter.

In these circumstances, and in the absence of any rebuttal by the Respondent of the contentions of the Complainant or allegation to the contrary, the Panel is prepared to accept that it is more likely than not that the Respondent was aware of the Complainant, its LEVI’S trademarks and its new LEVI’S RED line of clothing products at the time of registration of the disputed domain names, and that this registration was made in view of the popularity of the Complainant and its products. In the Panel’s view, such actions of the Respondent cannot be regarded as giving rise to rights or legitimate interests in the disputed domain names.

Therefore, the Panel finds that the evidence appears to confirm the Complainant’s prima facie case, and the Respondent has no rights or legitimate interests in the disputed domain names within the meaning of the Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(i) circumstances indicating that you have registered or you have 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 your documented out of pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

As discussed in Section 3.2 of the WIPO Overview 2.0, panels have found that the apparent lack of so-called active use of a 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. 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. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration.

The Panel finds that the circumstances of the present case support a finding of bad faith of the Respondent. The Complainant’s LEVI’S trademarks are well known among consumers. The disputed domain names are confusingly similar to these trademarks and to the Complainant’s “LEVI’S RED” brand, and their registration was made soon after the launch by the Complainant of its LEVI’S RED line of products. Afterwards, the Respondent has not actively used the disputed domain names, but has maintained their registration. As evident from the case file, the contact details provided by the Respondent for the registration of the disputed domain names may be intentionally incorrect. In addition, the Respondent has not rejected any of the factual allegations of the Complainant, although it was given a fair chance to do so, and has not provided any evidence of any actual or contemplated good faith use of the disputed domain names.

Taking these circumstances into account, the Panel finds that at the time of the registration of the disputed domain names, the Respondent was aware of the Complainant and of its products, and that their registration and continued passive holding was made with the Complainant and its products’ popularity in mind, in an attempt to illegitimately benefit somehow from this popularity.

For these reasons, the Panel finds that the Respondent has registered and used the disputed domain names in bad faith.

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 disputed domain names <levis-red.com> and <levisred.com> be transferred to the Complainant.

Assen Alexiev
Sole Panelist
Date: April 23, 2014