Complainant is Lernco, Inc. of Wilmington, Delaware, United States of America, represented by Colucci & Umans, United States.
Respondent is La Duzi of Shanghai, China.
The disputed domain name <lernersny.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com (hereinafter “the Domain Name”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 16, 2009. On July 17, 2009, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the Domain Name. On July 21, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on July 22, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 11, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on August 12, 2009.
The Center appointed Clive L. Elliott as the sole panelist in this matter on August 20, 2009. 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.
Complainant trades in the fashion industry. It is the owner of the LERNER NEW YORK and LERNER trademarks, as well as the owner of registrations in the U.S. of the trademarks and service marks LERNER NEW YORK and LERNER for jewelry, handbags, clothing and retail store services and further pending applications.
The Domain Name was registered on March 30, 2000.
Complainant asserts that as a result of its long-term use of the LERNER NEW YORK and LERNER trademarks and service marks it has acquired widespread public recognition and goodwill. It does not however indicate how long such use has been or exactly what it relates to or in what areas or territories such use has occurred.
Complainant contends that the Domain Name incorporates Complainant's registered LERNER mark and legal equivalent of Complainant's registered mark LERNER NEW YORK. It further asserts that the website accompanying the Domain Name has no independent content and that the website contains links to third-party commercial sites.
Complainant asserts that because of its use of the LERNER NEW YORK and LERNER trademarks and service marks, the Respondent's use of the Domain Name is likely to give rise to confusion as to an association or affiliation between Complainant and Respondent.
Complainant advises that, through its authorized representative, it sent letters to Respondent requesting that Respondent cease using the Domain Name and to transfer the Domain Name to Complainant. Complainant advises that it received a response from Respondent offering the Domain Name for sale as follows:
US$ 999 only
Buyer pays escrow fees”
Complainant asserts that Respondent does not have a connection with Complainant; it does not deal in Complainant's products and is not a licensee of Complainant. Complainant submits that there is no evidence of Respondent's 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. Further, Complainant maintains that Respondent registered the Domain Name with the intent of trading on the goodwill of the owner of Complainant. Complainant asserts that as it owns federal registrations of the LERNER NEW YORK and LERNER marks, Respondent is deemed to have constructive notice of the marks and maintains that it cannot claim it was unaware of Complainant's rights.
Complainant submits that Respondent's refusal to transfer the Domain Name to Complainant at no cost, coupled with Respondent's offer to sell the Domain Name for US $999 plus escrow fees of US $75 is further evidence of Respondent's bad faith, given that Respondent is not using the Domain Name in connection with a bona fide offering of goods or services.
Complainant advises that the Domain Name was formerly owned by Hen You Qian and that the address and phone number in whois information that was provided for Hen You Qian is identical to the address and phone number for Respondent, La Duzi, and that both Respondent and Hen You Qian use “www.startseek.com” as their email provider.
Complainant asserts that Hen You Qian and Respondent are one and the same person, or are related individuals with joint control over the Domain Name and that the change in ownership of the Domain Name was a tactic to delay and/or prevent Complainant from filing a complaint in connection with the Domain Name. Complainant also asserts that Respondent has engaged in a pattern of conduct in bad faith without any apparent intention to trade under the Domain Name.
Respondent did not reply to Complainant's contentions.
Complainant is the owner of the LERNER NEW YORK and LERNER trademarks and service marks, by virtue of its registration of the said trademarks and service marks (hereinafter “the Trademarks”). Complainant relies also on its reputation and goodwill by virtue of its alleged extensive use of the Trademarks. However, no details are provided and the Panel is unable to rely on a mere assertion of rights. Accordingly, any findings below are based solely on the Trademarks as defined in this paragraph.
The Domain Name comprises in material form either an abbreviation of the LERNER NEW YORK mark or an adaption of the LERNER mark, namely with the addition of the letter “S” and the letters “NY”, which denote the state and city of New York. On this basis the Trademarks are clearly identifiable in the Domain Name. As a result, the Panel finds that the Domain Name is confusingly similar to the Trademarks.
It is therefore found that Complainant has rights in the Trademarks, that these are found in the Domain Name, and that the requirements of paragraph 4(a)(i) of the Policy are met.
Respondent is not affiliated with Complainant in any way and has not been authorized by Complainant to use and register its trademarks or to seek the registration of any domain name incorporating the Trademarks.
The registration of individual trademarks comprising the Trademarks as referred to above preceded the registration of the Domain Name. The Domain Name makes a clear reference to the Trademarks.
There is no evidence of Respondent's 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. Instead, it is asserted by Complainant that the website accompanying the Domain Name has no independent content but contains links to third-party commercial sites. This assertion is not disputed.
In the circumstances of this case, this assertion, accompanied by a failure to deny is sufficient for the Panel to draw an inference that Respondent has no rights or legitimate interests in respect of the Domain Name. Complainant thus succeeds in meeting the requirements of paragraph 4(a)(ii) of the Policy.
Paragraph 4(a)(iii) of the Policy requires that Respondent has registered and uses the domain name in bad faith.
Given the lack of evidence to the contrary, the Panel infers on the available record that Respondent knew or must have known of Complainant's Trademarks at the time it registered the Domain Name.
Whether or not the Trademarks were used in the course of trade and whether or not Complainant had any reputation and/or goodwill in the Trademarks, the fact remains that they were registered well before the registration of the Domain Name. Further, Complainant submits that Respondent's refusal to transfer the Domain Name to Complainant at no cost, coupled with Respondent's offer to sell the Domain Name for an amount greater than its nominal value is further evidence of Respondent's bad faith.
On this basis it is established that Respondent both registered and used the Domain Name in bad faith in accordance with paragraph 4(a)(iii) of the Policy.
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 Name <lernersny.com> be transferred to Complainant.
Clive L. Elliott
Dated: September 7, 2009