WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Saks & Company v. saksfifthavenue-store.com
Case No. D2013-1643
1. The Parties
The Complainant is Saks & Company of New York, United States of America (“United States”), represented by Loeb & Loeb, LLP, United States.
The Respondent is saksfifthavenue-store.com of Saint Petersburg, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <saksfifthavenue-store.com> (the “Domain Name”) is registered with Web Commerce Communications Limited d/b/a WebNic.cc (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 18, 2013. On September 19, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 19, 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 September 25, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 15, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 17, 2013.
The Center appointed Steven A. Maier as the sole panelist in this matter on October 28, 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 operator of department stores named “Saks Fifth Avenue” which are located in New York City, elsewhere in the United States and in other countries.
The Complainant is the owner of various registrations for the trademark SAKS FIFTH AVENUE dating back to 1956. The registrations include United States trademark number 3368500, registered on January 15, 2008 in international class 35, for retail department store services, on-line retail department store services, and mail order services featuring general department store merchandise.
The Domain Name was registered on March 27, 2013.
At the date of the Center’s formal compliance review, September 25, 2013, the Domain Name resolved to a web page at “www.saksfifthavenue-store.com”. The page appeared to comprise a generic “parking” page operated by a service provider named “Parallels Panel”, promoting that provider’s own products and services.
5. Parties’ Contentions
The Complainant submits that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4(a)(i) of the Policy).
The Complainant relies on its trademark registrations referred to above.
The Complainant states that it is one of the world’s premier retail chain companies and has sold luxury goods for almost 100 years. It opened its first store in New York City in the early 1900s and is now established throughout the United States and in other countries. Among other retail activities it offers discounted designer clothing and accessories under related names that include the SAKS FIFTH AVENUE mark, such as “Saks Fifth Avenue Off 5th”. It has invested heavily in the SAKS FIFTH AVENUE mark over the years, devoting many millions of dollars to advertising and promoting its services through media within the United States and in other countries. Its revenues for the last fiscal year were in excess of USD 3 billion. It contends that as a result of these matters its SAKS FIFTH AVENUE mark is famous both within the United States and in other countries.
The Complainant contends that the Domain Name completely subsumes its SAKS FIFTH AVENUE mark adding only the generic modifier “store”, which does nothing to create a distinctive mark or prevent the Domain Name from being confusingly similar to the Complainant’s mark.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii) of the Policy).
The Complainant submits that the Respondent is not using the Domain Name in connection with any bona fide offering of goods or services, nor has it made any demonstrable preparations to do so: furthermore, the Respondent would be incapable of using the Domain Name for any offering of goods or services that did not take advantage of deliberate confusion between the Domain Name and the Complainant’s mark. The Complainant states that there is no evidence that the Respondent has ever been known by the Domain Name or any variation thereof. The Complainant also contends that the Respondent is not making any legitimate noncommercial or fair use of the Domain Name.
The Complainant submits that the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy).
The Complainant submits that the Respondent was obviously aware of the Complainant’s famous trademark when it registered the Domain Name and did so in a brazen attempt to lure the Complainant’s customers.
The Complainant seeks a transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to succeed in its Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
Even in a case where the Respondent has failed to file a Response, the Complainant must still establish that all three of the above elements are present.
A. Identical or Confusingly Similar
The Complainant has established that it is the owner of registrations for the trademark SAKS FIFTH AVENUE for retail services including online sales. The Domain Name is identical to the Complainant’s trademark but for the addition of the suffix “-store” and the generic top-level domain (“gTLD”) “.com”. The Panel accepts the Complainant’s submission that the suffix “-store” does nothing to distinguish the Domain Name from the Complainant’s trademark. In the view of the Panel the suffix merely adds to the potential for confusion as it is descriptive of one of the primary activities for which the Complainant’s trademark is registered. Therefore, the Panel finds that the Domain Name is confusingly similar to a trademark or service mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has asserted that, for the reasons set out in its Complaint, the Respondent has no rights or legitimate interests in respect of the Domain Name. The Panel finds that the Complainant has thereby made out a prima facie case to this effect. The Respondent has failed to answer the Complainant’s contentions and the Panel can see no evidence on the material before it of any rights or legitimate interests in respect of the Domain Name on the Respondent’s part. In the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
The Panel accepts the evidence of the Complainant that, as a result of its history and commercial activities, its mark SAKS FIFTH AVENUE is famous or well known in the field of retail sales. The Panel finds it inconceivable that the Respondent was unaware of the Complainant’s trademark when it registered the Domain Name or that it registered the Domain Name for any reason other than to capitalize on the Complainant’s reputation and goodwill associated with that trademark. In the circumstances, the Panel readily infers that the Respondent registered the Domain Name with the intention of attempting 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 (paragraph 4(b)(iv) of the Policy).
The Panel notes that there is no evidence of the Respondent having used the Domain Name otherwise in connection with the “Parallel Panels” parking page referred to above. This is in effect a “passive” holding of the Domain Name. However, it is well established in previous decisions under the Policy that the passive holding of a Domain Name shall not prevent a finding of bad faith when that conclusion is indicated by the other circumstances of the case (see e.g. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). In the present case the Panel has concluded that the Respondent can have registered the Domain Name for no purpose other than unfairly to take advantage of the Complainant’s goodwill by misleading Internet users as to a business connection between the Domain Name and the Complainant’s trademark. These circumstances are clearly indicative of bad faith and the Panel does not consider that the passive holding of the Domain Name is effective to dispel this conclusion. The Panel therefore concludes that the Domain Name has been registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <saksfifthavenue-store.com> be transferred to the Complainant.
Steven A. Maier
Date: October 31, 2013