Complainant is Lernco, Inc. of Wilmington, United States of America, represented by Colucci & Umans, United States.
Respondent is Dezider Banga of Prague, Czech Republic.
The disputed domain name <thenewyorkandcompany.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 24, 2010. On February 25, 2010, 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 disputed domain names. On February 26, 2010, 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 March 1, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 21, 2010. Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 22, 2010.
The Center appointed Mary Padbury as the sole panelist in this matter on March 26, 2010. 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.
On April 15, 2010, the parties were informed that the due to exceptional circumstances, the due date for Decision in this case was extended.
Complainant, Lernco, Inc. is the owner of registered United States trademarks for NEW YORK & COMPANY for clothing and retail store services which it licenses to New York & Company, Inc., who is the owner and operator of over five hundred (500) New York & Company retail stores throughout the United States.
Complainant also currently owns the domain names <nyandcompany.com> and <newyorkandcompany.com>. The latter website redirects Internet users to the first website.
Complainant is the owner of the following United States trademark registrations:
- United States Registration No. 2,507,567 registered November 13, 2001 for the mark NEW YORK & COMPANY for retail clothing store services in International Class 35;
- United States Registration No. 2,629,986 registered October 8, 2002 for the mark NEW YORK & COMPANY for shoulder bags, handbags, tote bats, duffel bags, gym bags, traveling bags in International Class 18; clothing, namely shirts, pants jackets, hats, sweaters, skirts and suits in International Class 25; and credit card services in International Class 36;
- United States Registration No. 3,026,644 registered December 13, 2005 for the mark NEW YORK & COMPANY for sunglasses in International Class 9; jewelry, ornamental pins and watches in International Class 14; coin purses, cay planner books, lipstick cases sold empty, makeup bags sold empty, make-up mirror cases sold empty and wallets in International Class 18; non-leather and non-metal key chains and picture frames in International Class 20; belts, flip flops, gloves, hats, hosiery, mufflers, pareos, ponchos, scarves and socks in International Class 25; barrettes, hair bands, hair clips, hair ornaments, hair pins and ponytail holders in International Class 26;
- United States Registration No. 3,446,405 registered June 10, 2008 for the mark NEW YORK & COMPANY for personal care products, namely, body mist, body scrub, cream for the body, cream for the hands, lotion for the body, shower gel in International Class 3;
- United States Registration No. 3,382,726 registered February 12,2008 for the mark NY&C for backpacks, cosmetic bags sold empty, cosmetic cases sold empty, duffel bags, fanny packs, gym bags, handbags, purses, toiletry bags sold empty, tote bags, travel bags and wallets in International Class18; clothing, namely, bathrobes, beach cover-ups, belts, blazers, blouses, bustiers, camisoles, caps, coats, dresses, garter belts, girdles, gloves, gowns, halter tops, hats headbands, jackets, jeans, jogging suits, knit shirts, knit tops, leotards, lingerie, mittens, negligees, night gowns, night shirts, pajamas, panties pants, pantyhose, sandals, sarongs, scarves, shirts, shoes, shorts, skirts, slacks, slippers, slips, sneakers, socks, stockings, suits, sweat pants, sweat shirts, sweat shorts, sweat suits; sweaters, swimsuits, t-shirts, tank tops, teddies, ties tights, underpants, undershirts, underwear and vests in International Class 25;
- United States Registration No. 2,714,767 registered May 13, 2003 for the mark NEW YORK JEANS for clothing, namely, shirts, shorts, pants and skirts in International Class 25;
- United States Registration No. 3,386,327 registered February 19, 2008 for the mark NY&C PLATINUM and Design for clothing, namely, denim pants, and shorts in International Class 25; and
- United States Registration No. 2,573,780 registered May 28, 2002 for the mark NY JEANS NEW YORK & COMPANY for pants, shirts, skirts, shorts, jackets, t-shirts, pullovers and belts in International Class 25.
On November 30, 2009, Complainant, through its authorized representative, sent a letter to Respondent, Dezider Banga, demanding that he cease use of the disputed domain name and transfer it to Complainant.
Complainant received no response to its letter or a follow-up letter to Respondent of January 4, 2010 again demanding that he cease use of the disputed domain name and transfer it to Complainant.
Respondent did not respond to either of Complainant's letters.
Complainant contends that the disputed domain name is identical or confusingly similar to the Complaint's trademarks and domain names. Complainant notes that the disputed domain name, <thenewyorkandcompany.com>, incorporates the legal equivalent of Complainant's registered mark, NEW YORK & COMPANY.
Complainant also contends that by reason of the Complainant's exclusive and long-term use of the NEW YORK & COMPANY and NY &C trademarks and <nyandcompany.com> and <newyorkandcompany.com> domain names that these have acquired widespread public recognition and goodwill.
Complainant contends that Respondent has no rights or legitimate interests in the domain name <thenewyorkandcompany.com>.
Complainant also contends submits that there is no evidence of Respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
Complainant further contends that Respondent is not commonly known by the disputed domain name and is not making a legitimate, fair use of the disputed domain name without the intent of commercial gain.
The web site that accompanies the disputed domain name has no independent content. Rather, links are provided on the web site to third-party commercial sites.
Complainant contends that the disputed domain name is registered and being used in bad faith.
Complainant also contends that Respondent registered the disputed domain name that incorporates the legal equivalent of a well-known trademark, with no apparent good faith reason for doing so other than to trade on the goodwill of the owner of that well-known trademark, namely, Complainant.
Complainant further contends that Respondent attempted to attract Internet users to his web site for commercial gain, namely, through pay-per-click advertising, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website.
Moreover, the Complainant asserts that since Complainant owns United States registrations of the NEW YORK & COMPANY mark, Respondent is deemed to have constructive notice of the marks and cannot claim he was unaware of Complainant's rights.
Respondent did not reply to the Complainant's contentions.
The Panel must decide a complaint on the basis of the statements in documents submitted and in accordance with the Policy, the Rules and the Supplementary Rules.
Complainant has the onus of proving three elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel finds that the disputed domain name <thenewyorkandcompany.com> is confusingly similar to the trademark NEW YORK & COMPANY. The disputed domain name incorporates the Complainant's trademark in its entirety with the addition of the article “the” and the gTLD “.com” which do not preclude confusion.
The Panel must decide whether Respondent has any rights or legitimate interests to the disputed domain name. In doing so, regard may be had to circumstances which might demonstrate this as follows:
(i) before notice to Respondent of the dispute, Respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent, as an individual, business, or other organization, has been commonly known by the disputed domain name, even if it acquired no trademark or service mark rights; or
(iii) Respondent, making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel accepts the contention of Complainant that Respondent has no rights or legitimate interests in the disputed domain name. The use of a domain name which is confusingly similar to Complainant's trademark for a site which offers links to third party sites cannot in the circumstances of this case be considered to be bona fide. There is no evidence that Respondent, as an individual, business or other organization has been commonly known by the disputed domain name. It is apparent that Respondent's use is commercial.
The Panel is satisfied that the disputed domain name was registered and is being used in bad faith. The following non-exclusive list of circumstances, if found by the Panel to be present, shall be evidence of registration in bad faith, paragraph 4(b) of the Policy:
“(i) circumstances indicating that the Respondent has registered 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 for valuable consideration in excess of the Respondent's out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in domain name in a corresponding domain name, provided 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 on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's web site or location or of a product of service on your website or location.”
The Panel is satisfied that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on your website or location. As such the Panel finds evidence of registration and use in bad faith.
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 <thenewyorkandcompany.com> be transferred to the Complainant.
Mary Padbury
Sole Panelist
Dated: April 19, 2010