WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Coach, Inc. v. Carlos Lim
Case No. D2014-0980
1. The Parties
The Complainant is Coach, Inc. of New York, United States of America, represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland.
The Respondent is Carlos Lim of Quezon City, Philippines.
2. The Domain Names and Registrar
The disputed domain names <coachoutlet.net> and <coachshoes.net> (the "Domain Names") are registered with GoDaddy.com, LLC
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 10, 2014. On June 10, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 11, 2014, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 13, 2014.
The Center verified that the Complaint 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 June 13, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 3, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 10, 2014.
The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on July 24, 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 company, established in the United States of America, which produces and sells handbags, shoes, watches, jewelry and fragrances, amongst others. Its products are sold through approximately 1,000 department store locations in North America and 183 in store and shop locations in over 25 countries worldwide. The Complainant directly or through its subsidiary Coach Services Inc. holds a number of trademarks in, inter alia, the United States of America, United Kingdom of Great Britain and Northern Ireland, the European Union and Australia, which consist of or contain the word COACH (the "Trademarks"). The oldest of the Trademarks dates back to 1963.
The Complainant is listed on the New York Stock Exchange (the "NYSE") since 2000, trading under the symbol COH.
The Respondent has registered the Domain Names in 2006.
5. Parties' Contentions
The Complainant contends that the Domain Names are identical or confusingly similar to the Trademarks as the dominant part of the Domain Names is "Coach" while the additions "outlet" and "shoes" are descriptive. According to the Complainant, the use of the mark COACH with these descriptive terms is enough to create initial interest confusion in the average Internet user's mind. The Complainant further submits that it has acquired significant goodwill in the term COACH internationally by its use over seventy years, the availability of its products through its many stores and shop locations, as well as its investments in social media and online presence since 1999.
According to the Complainant, the Respondent has no rights or legitimate interests in respect of the Domain Names, since it has not received permission from the Complainant to use the Trademarks, nor has it had any dealings or affiliation with the Respondent. Although the Respondent appears to use the domain name <coachoutlet.net> (the "First Domain Name") for a blog site, there are hardly any postings on this site, while the information regarding the Complainant on the website under the First Domain Name is such that the Respondent appears to be projecting the image that it is the Complainant.
In relation to the domain name <coachshoes.net> (the "Second Domain Name") the Complainant states that it contains paid links and advertisements to other websites under the Google AdSense program. These include advertisements relating to shoes from competing manufacturers. This is not a bona fide offering of goods according to the Complainant.
The Respondent has registered and is using the Domain Names in bad faith, for several reasons, the Complainant asserts.
The Respondent is using at least 10 different email addresses, using different names, in connection with the registration of around 350 domain names, the Complainant submits. There is a clear pattern of conduct of registering domain names which contain trademarks in order to prevent trademark owners from reflecting the mark in a corresponding name. In addition, the Complainant asserts, the Respondent is using falsified address information when registering the domain names, apparently in an attempt to evade prosecution for trademark infringement by brand owners.
Furthermore, according to the Complainant, the Respondent has used images taken from the Pinterest website which have been placed there by the Complainant and to which the Complainant asserts copyright. Such use without consent from the Complainant constitutes copyright infringement, the Complainant states, which is another indication of bad faith.
The Complainant also points out that the inclusion of the (COACH element from) Trademarks in both the Domain Names and the content of the websites under those Domain Names create a likelihood of confusion as to the Complainant's affiliation with those websites. Furthermore, the Complainant asserts that the website under the Second Domain Name includes a video from YouTube listing bags under the Trademarks for sale and displaying links to news articles relating to the Complainant as would be expected on an official website from the Complainant. The advertisements displayed on the pages of the website under the Second Domain Name all relate to other competing products and are redirecting Internet traffic to other websites where those products can be purchased, the Complainant submits.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has shown that it has rights in the Trademarks. The element "Coach" which is identical to (the word element in) the Trademarks is to be considered the dominant part of the Domain Names. The suffix "outlet" in the First Domain Name and "shoes" in the Second Domain Name are descriptive and do not change the similarity between the Trademarks and the Domain Names. The Panel concludes that the Domain Names are confusingly similar to the Trademarks.
B. Rights or Legitimate Interests
The Panel accepts that there is no connection or affiliation between the Respondent and the Complainant and that the Complainant has not given permission to the Respondent for the use of the element "Coach" or the Trademarks. The name of the Respondent has no similarity to "Coach".
In addition, the Complainant has provided sufficient prima facie evidence that the Respondent is not making a legitimate noncommercial or fair use of the Domain Names and is not using the Domain Names in connection with a bona fide offering of goods or services. On the website under both Domain Names goods from the Complainant appear to be offered under the Trademarks. The layout and contents of the website under the First Domain Name create the impression that it is affiliated to the Complainant, both by the use of the Trademarks and by the information provided.
The website under the Second Domain Name is used both for paid links to websites of competitors, which does not constitute a bona fide offering of goods, while it also displays advertisement for goods of competitors.
Therefore, based on these facts, the Panel concludes that the Domain Names are used to trade on the goodwill of the Trademarks and that the Respondent thereby tries to take advantage of the reputation of the Trademarks by attracting customers to its website under the Domain Names who assume this website is either provided by or has been approved of by the Complainant (see Sanofi v. Hka c/o Dynadot Privacy, WIPO Case No. D2014-0829).
In view of the above, the Panel concludes that the Respondent has no rights or legitimate interests in the Domain Names.
C. Registered and Used in Bad Faith
Based on the evidence submitted by the Complainant, the Panel deems it likely that at the time of registration of the Domain Names the Respondent was or must have been aware of the Trademarks and that the registration of the Domain Names was done in bad faith.
The registration date of the oldest of the Trademarks predates the registration date of the Domain Names by over 40 years. Furthermore, taking into account in particular the number of shops where products bearing the Trademarks are sold, the listing of the Complainant on the NYSE and the number, registration dates and territorial scope of the Trademarks, the Panel deems it very likely that the Respondent has seen or was aware of the Trademarks when registering the Domain Names.
The Panel concludes that the Respondent apparently deliberately included the element "Coach" in the Domain Names, to take advantage of the reputation of the Trademarks, which constitutes bad faith registration in the circumstances of this case.
Furthermore, on the basis of the evidence provided by the Complainant on the websites under the Domain Names, as outlined above, it is likely that the Respondent, by using the Domain Names for the website, is attempting to attract Internet users to its website by creating a likelihood of confusion with the Trademarks as to the source, affiliation or endorsement of Respondent's website. This constitutes bad faith use.
Therefore the Panel concludes that the Domain Name have been registered and are 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 names <coachoutlet.net> and <coachshoes.net> be transferred to the Complainant.
Wolter Wefers Bettink
Date: August 11, 2014