WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Rebecca Minkoff, LLC v. Mara Bolorin
Case No. D2012-1423
1. The Parties
The Complainant is Rebecca Minkoff, LLC of New York, United States of America, represented by Oved & Oved LLP, United States of America.
The Respondent is Mara Bolorin, Shanghai, of China.
2. The Domain Name and Registrar
The disputed domain name <rebeccaminkoffs.com> (the “Disputed Domain Name”) is registered with Jiangsu Bangning Science & technology Co. Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on July 12, 2012. On July 13, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name(s). On July 15, 2012, 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.
On July 16, 2012, the Center transmitted an email to the Parties, in both the Chinese and English language regarding the language of the proceedings. On July 16, 2012, the Complainant confirmed its request that English be the language of the proceedings. The Respondent did not reply by the specified due date.
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 July 23, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 12, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 15, 2012.
The Center appointed Kar Liang Soh as the sole panelist in this matter on September 7, 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
The Complainant is associated with a luxury designer brand of apparel, hand bags and footwear. Since December 1994, the Complainant has been using the mark REBECCA MINKOFF in this regard. The mark REBECCA MINKOFF is the name of the Complainant’s founder. The Complainant and its founder have received awards, distinctions, good press and international coverage over the years in relation to designer goods under the mark REBECCA MINKOFF.
The mark REBECCA MINKOFF has been registered as US Trademark No. 3889028. The Complainant also operates a website at “www.rebeccaminkoff.com”.
The Disputed Domain Name was registered on May 11, 2012. As of July 11, 2012, the Disputed Domain Name resolved to a website which prominently displays the word “Rebecca Minkoff” and offered for sale online bags associated with the mark REBECCA MINKOFF. The footer of the website also stated the following words:
“Copyright © 2012 Rebecca Minkoff Handbags
Powered by Rebecca Minkoff
Designed by Rebecca Minkoff Bags”
No additional information regarding the Respondent beyond the WhoIs information of the Disputed Domain Name and that which may be gleaned from the website resolved therefrom is available.
5. Parties’ Contentions
The Complainant contends that:
(a) The Disputed Domain Name is identical or confusingly similar to the Complainant’s mark REBECCA MINKOFF. The Disputed Domain Name incorporates the trademark in its entirety. The only difference is the addition of the letter “s” to the end of the trademark in the Disputed Domain Name which does not significantly affect the appearance or pronunciation of the Disputed Domain Name;
(b) The Respondent has no rights or any legitimate interests in and to the Disputed Domain Name. The Complainant has never authorized, licensed or otherwise permitted or consented to the Respondent’s use of the mark REBECCA MINKOFF. The Respondent is not commonly known by the Disputed Domain Name. The Respondent is not making a legitimate or noncommercial or fair use of the Disputed Domain Name; and
(c) The Disputed Domain Name was registered and is being used in bad faith. The Respondent is intentionally attempting to attract Internet users to the Disputed Domain Name through the fame and goodwill of the mark to typosquat. The products sold by the Respondent on the website resolved from the Disputed Domain Name are unauthorized counterfeits.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Language of Proceeding
The language of the registration agreement was Chinese and the default language of the proceeding would therefore be Chinese. However, paragraph 11(a) of the Rules empowers the Panel to determine otherwise having regard to the circumstances.
The Complainant has requested for the language of this proceeding to be English. Having reviewed the circumstances, the Panel hereby determines that English be the language of the proceeding. In arriving at this decision, the Panel took the following factors into consideration:
(a) The Complainant is a United States entity and the Complainant and its counsel do not understand Chinese;
(b) The website resolved from the Disputed Domain Name is entirely in clear grammatical English and indicates that the Respondent is able or has means to understand English;
(c) The Respondent has not filed a response although being notified of these proceedings in both the Chinese and English languages;
(d) There is likely to be significant burden to the Complainant and delay to the proceeding if the language of the proceedings is Chinese; and
(e) There is no foreseeable benefit to the parties if the language of the proceeding is Chinese.
To succeed in this proceeding, the Complainant must establish all 3 limbs of paragraph 4(a) of the Policy, namely:
(a) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(c) The Disputed Domain Name has been registered and is being used in bad faith.
The Panel proceeds to consider each of these 3 limbs in turn.
A. Identical or Confusingly Similar
The Complainant’s trademark REBECCA MINKOFF is registered. Rights of a registered trademark have been conferred thereby. The Disputed Domain Name incorporates the trademark REBECCA MINKOFF in its entirety. The Panel agrees that the only difference between the Disputed Domain Name and the trademark REBECCA MINKOFF is the last letter “s” in the Disputed Domain Name and the top-level domain “.com”. The Panel is of the view that this difference is insignificant and does not serve to distinguish the Disputed Domain Name from the trademark REBECCA MINKOFF. Therefore, the Disputed Domain Name is confusingly similar to the trademark REBECCA MINKOFF owned by the Complainant and the first limb of paragraph 4(a) of the Policy is established.
B. Rights or Legitimate Interests
The Complainant has confirmed that the Complainant has never authorized, licensed or otherwise permitted or consented to the Respondent’s use of the mark REBECCA MINKOFF. There is no evidence before the Panel to suggest that the Respondent is commonly known by the Disputed Domain Name. The website resolved from the Disputed Domain Name appears to be a commercially-driven website and, in the absence of contrary evidence, contradicts any possibility that the Disputed Domain Name is being used for a noncommercial purpose. Moreover, the Respondent’s reproduction of the Complainant’s mark and copyright notices on the website puts into serious doubt the bona fides in the use of the Disputed Domain Name. Therefore, the Panel holds that the Complainant has established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name. Since the Respondent did not submit a Response, the prima facie case has not been rebutted and the second limb of paragraph 4(a) of the Policy is also established.
C. Registered and Used in Bad Faith
The third limb of the Policy requires the Complainant to show that the Disputed Domain Name was registered and is being used in bad faith. Paragraph 4(b)(iv) of the Policy identifies the following situation of bad faith registration and use:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location”
In this Panel’s view, it is inconceivable that the Respondent was not aware of the REBECCA MINKOFF trademark at the time of registering the Disputed Domain Name. Not only did the content on the website resolved from the Disputed Domain Name associates products of the Complainant and other competitors with the REBECCA MINKOFF trademark, but also the website claims copyright in the name of the Complainant.
Further, in the Panel’s view, the website is clearly intended for commercial gain. The copious offering of various products under the REBECAA MINKOFF trademark on the website and the appearance of online shopping cart facilities leads to the reasonable conclusion is that the Respondent is using the Disputed Domain Name to attract Internet users for commercial gain. From the evidence, the Panel believes that such use will create a likelihood of confusion with the Complainant’s mark REBECCA MINKOFF as to the source, sponsorship, affiliation, or endorsement of the website or the products on the website.
The facts accordingly fall under paragraph 4(b)(iv) of the Policy and the Panel accordingly holds that the third limb of the Policy is established.
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 <rebeccaminkoffs.com> be transferred to the Complainant.
Kar Liang Soh
Dated: October 30, 2012