WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Saks & Company v. Saks-fifth-avenue-store.net
Case No. D2014-0185
1. The Parties
The Complainant is Saks & Company of New York, United States of America ("US"), represented by Loeb & Loeb, LLP, US.
The Respondent is Saks-fifth-avenue-store.net of Brussels, Belgium.
2. The Domain Name and Registrar
The disputed domain name <saks-fifth-avenue-store.net> is registered with Web Commerce Communications Limited dba WebNic.cc (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 6, 2014. On February 7, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 February 18, 2014, the Center requested clarification from the Complainant concerning different versions of the Complaint that had been submitted. On February 27, 2014, the Complainant confirmed to the Center which version of the Complaint should be considered as final. On March 4, 2014, the Center notified the Complainant that the Complaint was administratively deficient. Consequently, the Complainant submitted an amended Complaint on March 5, 2014.
The Center verified that the Complaint, together with the amended 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 March 6, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 26, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 28, 2014.
The Center appointed Ross Wilson as the sole panelist in this matter on April 10, 2014. 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 a retailer of luxury goods. Its first store was opened in New York in the early 1900s and is now operating 41 stores under the SAKS FIFTH AVENUE mark and 72 stores under the SAKS FIFTH AVENUE OFF 5TH mark. The Complainant's stores are located throughout the US as well as in other countries. It heavily markets its marks through various media. In the last fiscal year the Complainant generated over USD three billion revenue.
The Complainant first registered its SAX FIFTH AVENUE trademark in the US in 1956. It now has trademarks registered in over 60 countries including the European Community.
The disputed domain was registered on August 17, 2013.
5. Parties' Contentions
The Complainant contends that the disputed domain name is confusingly similar to its name and marks and considers that the use of the disputed domain name is a blatant attempt to trade off its well respected SAKS FIFTH AVENUE stores.
The Complainant submits that the Respondent is not using the disputed domain name in connection with any bona fide offering of goods and services but may be using the associated website to collect customer information including financial information. Also, the Complainant considers it would be nearly impossible for the Respondent to claim that it is "commonly known" by any derivative of the Complainant's trademarks.
The Complainant states that there is no doubt that the disputed domain name was registered with the full knowledge of its trademarks and is potentially diverting business away from the Complainant which is a disruption to its business and is evidence of bad faith registration and use. According to the Complainant, the Respondent chose the disputed domain name to profit from confusion with its marks directing Internet users to a website that reproduces the Complainant's logo and which copies layout of its official website.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
The burden is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the Policy:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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 used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name consists of the Complainant's SAKS FIFTH AVENUE trademark in its entirety together with the word "store" and the generic Top-Level Domain ("gTLD") extension ".com". The Panel notes that the general rule is that the gTLD extension ".com" can be disregarded when considering whether a trade mark is identical or confusingly similar to a domain name.
It has been commonly held in previous UDRP cases that incorporating a trademark in its entirety is typically sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (see Oakley, Inc. v. Kate Elsberry, Elsberry Castro, WIPO Case No. D2009-1286 and World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306).
The word "store" used in the disputed domain name is generic or descriptive and cannot be considered distinctive. In fact the addition of the word "store" serves to accentuate rather than to diminish the confusing similarity to Internet users who may be potential customers of the Complainant (see Revlon Consumer Products Corporation v. Amar Fazil, WIPO Case No. D2011-0014 and Tag Heuer S.A. v. JBlumers Inc. Jerald Blume, WIPO Case No. D2004-0071).
The Panel finds that the Complainant's trademark is readily recognisable within the disputed domain name. Therefore, the Complainant has proven under the circumstances that the disputed domain name is confusingly similar to the trademark in which it has demonstrable rights and in doing so has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy, rights to or legitimate interests in a domain name can be demonstrated if a respondent:
- before receiving any notice of the dispute, was using the disputed domain name in connection with a bona fide offering of goods or services; or
- has been commonly known by the disputed domain name; or
- is making legitimate noncommercial or fair use of the disputed domain name, without intention for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence before the Panel to show that the Respondent has any rights or legitimate interests in the disputed domain name. The Respondent has chosen to register a domain name which is confusingly similar to the Complainant's mark without authorization from the Complainant. Based on the evidence provided by the Complainant, the disputed domain name was intended to mislead potential customers and divert them to the Respondent's website for its own commercial benefit. The Panel considers no rights or legitimate interests derive from such use of the disputed domain name.
The Panel has no evidence before it to believe that the Respondent is commonly known by the disputed domain name. See Areva v. Domains by Proxy, Inc./ Sheng Xiang, WIPO Case No. D2011-0061 where the panel concluded that when the respondent registered the domain name, it must have known that it was a trademark of the complainant and deliberately registered the domain name precisely because it would be recognised as such. Similarly, as stated by the panel in Hertz System, Inc. v. Domainproxyagent.com/Compsys Domain Solutions Private Limited, WIPO Case No. D2009-0615 "[m]anifestly, the attraction of the Domain Name to the registrants was not any right or legitimate interest in respect of the Domain Name, but its fame and attractive quality derived from the presence of the well-known name and service mark of the Complainant".
Despite the opportunity provided through this administrative proceeding, the Respondent has chosen not to rebut the Complainant's prima facie case or assert any rights or legitimate interests in the disputed domain name.
Based on the above, the Panel considers the Complainant has made out an unrebutted prima facie case that the Respondent lack rights or legitimate interests in the disputed domain name. The Panel is satisfied that the Complainant has proven the second element of the Policy.
C. Registered and Used in Bad Faith
For the purposes of determining if there was bad faith registration and use, the Panel considered the circumstances of the registration and use of the disputed domain name as set out in paragraph 4(b) of the Policy, noting that it does not impose any limitation on how the registration and use of the disputed domain name in bad faith may be evidenced.
Paragraph 4(b) of the Policy sets out what is to be considered as evidence of the registration and use of a domain name in bad faith including "(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or location".
In the Panel's view, the Respondent's copying of the Complainant's logo and images from the Complainant's website onto the website of the disputed domain name demonstrates knowledge of the Complainant's rights in its trademark when the disputed domain name was registered. The Complainant points out that in using that knowledge the Respondent brazenly attempted to lure the Complainant's customers to its website and divert business away from the Complainant.
The Panel considers that the Complainant has made a case that the Respondent has registered and used the disputed domain name in bad faith. In the Panel's view, the Respondent's registration of the disputed domain name represents a deliberate disregard of the Complainant's rights. In this Panel's assessment, the Respondent clearly knew of the Complainant's mark at the time of registration because the Complainant's mark is used in its entirety in the disputed domain name and the website contains the Complainant's logo. As stated by the panel in Oakley, Inc. v. Joel Wong/BlueHost.com- INC, WIPO Case No. D2010-0100 "It is therefore inconceivable […] that the Respondent registered the disputed domain name without prior knowledge of the Complainant's rights". Also, as expressed in Singapore Airlines Limited v. European Travel Network, WIPO Case No. D2000-0641, where the selection in that case of the domain names was so obviously connected to the complainant's trademark, their very use by someone with no connection with the company suggested opportunistic bad faith.
The evidence provided shows the Respondent's website reproduced the Complainant's logo and images from the Complainant's website. The Panel considers the Respondent's use of the disputed domain name to divert Internet user traffic to its website, without a clear and accurate disclosure of the Respondent's relationship with the Complainant, clearly represents an intent to deceive Internet users into believing that the disputed domain name is associated or endorsed by the Complainant. Overall, the Panel finds that the disputed domain name was registered and used by the Respondent in an intentional attempt to benefit from the reputation and goodwill of the Complainant's mark for commercial benefit by creating a likelihood of confusion with the Complainant's trademark.
Noting that the Respondent has not rebutted any of the Complainant's contentions and has no demonstrable rights or legitimate interests in the disputed domain name, the Panel is satisfied that the Respondent's conduct falls within paragraph 4(b)(iv) of the Policy. Therefore the Panel finds that the Complainant has demonstrated that the disputed domain name was 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 disputed domain name <saks-fifth-avenue-store.net> be transferred to the Complainant.
Date: April 24, 2014