WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Levi Strauss & Co. v. Levi Factory Outlet LLC / Susana Valencia Bernal / Domain Privacy Service FBO Registrant
Case No. D2014-1351
1. The Parties
The Complainant is Levi Strauss & Co. of United States of America, represented by Kilpatrick Townsend & Stockton LLP, United States of America.
The Respondent is Levi Factory Outlet LLC / Susana Valencia Bernal / Domain Privacy Service FBO Registrant of United States of America.
2. The Domain Name and Registrar
The disputed domain name <levifactoryoutlet.com> is registered with FastDomain, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 9, 2014. On August 11, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 12, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 21, 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 August 22, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 11, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 12, 2014.
The Center appointed Nicolas Ulmer as the sole panelist in this matter on September 16, 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 major manufacturer of clothing and apparel, whose business dates back more than 150 years. In connection with this business the Complainant is the holder of a number of United States trademarks for LEVI’S, as well as a 1995 trademark for LEVI.COM. The Complainant also maintains United States and international registrations for its red “tab device”, which is affixed to its clothing items. According to the Complaint, the Complainant sells its products worldwide through retailers and directly, including through its web site “www.levi.com”.
The disputed domain name was registered in December 2013.
The disputed domain name resolves to a website featuring the Complainant’s red “tab device”. There is a mail icon that when clicked opens an email action to “email@example.com”.
5. Parties’ Contentions
The Complainant alleges that the Respondent is obviously using and trading on the Complainant’s trademarks, name and reputation for improper gain. The disputed domain name contains the Complainant’s trademark and is designed to be confusingly similar with it in order to attract potential customers. The Complainant affirms that it has at no time authorized any use of the Complainant’s trademarks by the Respondent. Furthermore, the Complainant alleges that it is clear that the disputed domain name was registered in bad faith with knowledge of the Complainant’s rights and that the Respondent has made use of the disputed domain name in order improperly to hold itself out as an entity linked to the Complainant. The Complainant also alleges that the Respondent’s bad faith is evidenced by its concealment of its identity, and that it may be using the website to which the disputed domain name resolves in order to “harvest” valuable information from users of the site.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complaint correctly points out that the disputed domain initially reproduces the word “LEVI” which is the essential part of the Complainant’s trademark and its LEVI.COM trademark in particular. The Complainant also submits significant evidence and explanation for the proposition that the use of the word “LEVI” has a long well-known public association with the Complainant and its products. The addition of the words “factory outlet” to the disputed domain name does not here diminish the potential confusion engendered by the Respondent’s use of “LEVI” in the disputed domain name. On the contrary, these additional words are likely designed to heighten the confusing similarity with the Complainant, as the Complainant’s principal business is the sale of its goods through stores and online. Thus the insertion of the words “factory outlet” in the disputed domain name is here further indicia that the use of the “LEVI” name and trademark by the Respondent was not serendipitous. See e.g., H & M Hennes & Mauritz AB v. Domain Admin, PrivacyProtect.org / Horario Mendoza, WIPO Case No. DCO2014-0008;
It follows from the above that the disputed domain name is confusingly similar to the Complainant’s marks.
B. Rights or Legitimate Interests
The Complainant needs to establish at least a prima facie case showing that the Respondent has no rights or legitimate interests in respect of the disputed domain name. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. Once such a prima facie case is made, the burden shifts to the Respondent to prove that it has rights or legitimate interests in the disputed domain name. See also, Meizu Technology Co., Ltd v. “Osama bin laden”, WIPO Case No. DCO2014-0002; H & M Hennes & Mauritz v. Simon Maufe, Akinsaya Odunayo Emmanuel and Nelson Rivaldo, WIPO Case No. D2014-0225.
In the present case the Complainant has confirmed that it has not authorized the Respondent to use its mark in a domain name or in any other manner.
There is also no evidence before the Panel to suggest that the Respondent is commonly known as “Levi” or “Levifactoryoutlet”, or any other evidence or indicia suggesting that the Respondent has any rights in the disputed domain name.
Respondent having failed to answer the Complaint, the Panel finds that Complainant has accordingly met its burden under Paragraph 4 (a) (ii) of the Policy.
C. Registered and Used in Bad Faith
The disputed domain name can only have been registered with knowledge of the Complainant’s long standing and well-known trademarks and trade names. Indeed, all evidence here points to the conclusion that the Respondent registered and then used the disputed domain name to attract Internet users for financial gain. In doing so, the Respondent created a likelihood of confusion with Complainant’s trademarks and business. This is the scenario envisaged by paragraph 4(b)(iv) of the Policy, and is here sufficient to constitute bad faith registration and use.
The hiding of the Respondent’s identity through the use of a privacy protection service is, on the facts here, additional indicia of bad faith. It is not necessary to decide the Complainant’s further allegation that the Respondent “is likely engaging in harvesting personal information of users” for illicit gain.
The Panel concludes that the Respondent has both registered and used the disputed domain name 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, <levifactoryoutlet.com> be transferred to the Complainant.
Date: September 18, 2014