WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Red Diamond Holdings Sàrl v. kakaa franc
Case No. D2013-1347
1. The Parties
The Complainant is Red Diamond Holdings Sàrl of Senningerberg, Luxembourg, represented by Office Freylinger S. A., Luxembourg.
The Respondent is kakaa franc of Alaska, Alaska, United States of America.
2. The Domain Name and Registrar
The disputed domain name <leecooper-uk.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 26, 2013. On July 26, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 29, 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.
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 30, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 19, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 20, 2013.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on August 27, 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 is the owner of the word and figurative marks LEE COOPER, which have been used in the clothing and fashion (accessories) business for several decades.
The Complainant also owns several domain names encompassing the mark LEE COOPER, including <leecooper.com>, <leecooper.asia>, <leecooper.us>, <lee-cooper.info> etc.
The disputed domain name was registered to the Respondent on December 30, 2012.
The Panel tried to access the website at the disputed domain name on August 28, 2013, however it was not linked to any active website.
5. Parties’ Contentions
(i) The Complainant is the owner of many registrations for the mark LEE COOPER and variations thereof worldwide. Additionally, the Complainant is also the owner of several domain names including LEE COOPER mark, amongst which <leecooper.com>, <lee-cooper.info>, <leecooper.us>, <leecooper.asia>, <leecooper.jp>, <leecooper.mobi>, <leecooper.at> and <leecooper.sg>. The Complainant is actively protecting and defending its intellectual property. The trademark LEE COOPER remains clearly recognizable in the disputed domain name.
(ii) Trademark searches performed by the Complainant have shown that the Respondent has not registered any trademarks LEE COOPER. The Respondent is not commonly known by the disputed domain name. The Complainant has never allowed a third party to register the disputed domain name, nor granted a license for the use of the mark LEE COOPER (or any mark similar thereto, such as Lee Cooper UK) to the Respondent. The Respondent is not an authorized reseller of Lee Cooper goods nor is there any commercial relationship or sponsorship between the parties to the present conflict. The registration (and/or use) of such a domain name, without the consent of the trademark owner is an attempt to free ride on the reputation of the trademark and to benefit from the confusion ensuing thereof.
(iii) It is not reasonably conceivable that the Respondent was unaware of the Complainant’s trademarks at the time of registration of the disputed domain name. As the Respondent has used the disputed domain name in connection with a website presented as a “Lee Cooper Outlet”, it clearly was aware of the Complainant’s trademark. The Respondent has used the disputed domain name for the sale of goods, which do not originate from the Complainant’s undertaking. At the date of dispatching of the warning letter, a website offering third parties’ goods was linked to the disputed domain name. The Respondent has tried to free ride or take unfair benefit from the reputation, goodwill and distinctive character of the Complainant’s trademark. The mere fact that the Respondent took its webpage off-line proves that it was well aware of its abusive behavior.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, the Complainant shall prove the following three elements:
(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 in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel has no doubt that “lee cooper” is a term directly connected with the Complainant’s activities in the clothing and fashion business.
Annex 9 to the Complaint shows registrations and applications of LEE COOPER trademarks registered by the Complainant in several countries since at least 1980.
The trademark LEE COOPER is wholly encompassed within the disputed domain name.
The disputed domain name differs from the Complainant’s trademark basically by the addition of a hyphen between the words “lee” and “cooper”, as well the characters “-uk” and the generic Top-Level Domain (gTLD) denominator “.com”.
In fact, the hyphens do not make any differentiation and serve only to separate the words that were clearly chosen to form the disputed domain name: “lee”, “cooper” and “uk”. The first two words form the Complainant’s trademark LEE COOPER; the third is the well-known acronym of the United Kingdom.
Previous UDRP decisions have demonstrated that geographical additions do not alter the underlying meaning of a domain name, so as to avoid confusing similarity. This has been held in many UDRP cases (see e.g. Inter-IKEA Systems B. V. v. Evezon Co. Ltd., WIPO Case No. D2000-0437; The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; Volvo Trademark Holding AB v. SC-RAD Inc., WIPO Case No. D2003-0601; Wal-Mart Stores, Inc. v. Lars Stork, WIPO Case No. D2000-0628; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713; AltaVista Company v. S. M. A., Inc. , WIPO Case No. D2000-0927).
It is also already well-established that the addition of a gTLD extension such as “. com” is irrelevant when determining whether a domain name is confusingly similar to a complainant’s trademark.
As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, and that the Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate a right or legitimate interest in a domain name:
(i) Before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) The respondent has been commonly known by the domain name; or
(iii) The respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.
Based on the Respondent’s default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has not licensed nor authorized the use of its trademark to the Respondent, and the Panel finds no indication that the Respondent is commonly known by the disputed domain name.
The present record provides no evidence to demonstrate the Respondent’s intent to use or to make demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Indeed, the Complainant has shown previous uses of the disputed domain name for the commercial purpose of selling clothes under the Complainant’s brand and even products that directly compete with the Complainant’s Lee Cooper products.
Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has proven the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(i) Circumstances indicating that the respondent has registered or 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 documented out-of-pocket costs directly related to the domain name; or
(ii) The respondent 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 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 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 its website or location or of a product or service on its website or location.
When the disputed domain name was registered by the Respondent (in 2012) the trademark LEE COOPER was already tightly connected to the Complainant’s activities in the fashion business for decades.
The Complainant showed that the disputed domain name has recently been used to sell products under the Lee Cooper brand.
Therefore, the Panel concludes that it would not be feasible to consider that the Respondent - at the time of the registration of the disputed domain name - could not have been aware of the Complainant’s trademark, as well as that that the use of the expression “Lee Cooper” could be a mere coincidence.
Furthermore, the Respondent has also used the disputed domain name for the sale of third parties’ goods, competing with the Complainant’s clothes and accessories. Therefore, in doing so, the Respondent:
(i) creates a likelihood of confusion with the Complainant’s trademark;
(ii) obtains revenue from this practice; and
(iii) deprives the Complainant from selling its products to prospective clients who are clearly looking for the Complainant and, at the same time, promote products offered by competitors.
In situations like this, former UDRP decisions have considered this type of usage of a domain name enough to demonstrate bad faith. See also Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415.
Currently, there is no active website linked to the disputed domain name, but this is not enough to change the Panel’s findings. UDRP panels have frequently found that the apparent lack of so-called active use of the domain name (passive holding) does not prevent a finding of bad faith. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2. 0”), paragraph 3. 2; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Polaroid Corporation v. Jay Strommen, WIPO Case No. D2005-1005.
In the Panel’s view, the passive and non-collaborative posture of the Respondent, (a) not using the disputed domain name; (b) not indicating any intention to use it; and (c) not at least providing justifications for the use of a third party trademark that is registered in several countries, certainly cannot be used in benefit of the Respondent in the present case.
Such circumstances, associated with the lack of any plausible interpretation for the adoption of the expression “lee cooper” by the Respondent, are enough in this Panel’s view to characterize bad faith registration and use in the present case.
Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and the Complainant has also satisfied the third element of the Policy.
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 <leecooper-uk.com> be transferred to the Complainant.
Dated: September 11, 2013