WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Stuart Weitzman IP, LLC v. DVLPMNT Marketing, Inc.
Case No. D2014-1858
1. The Parties
The Complainant is Stuart Weitzman IP, LLC of New York, New York, United States of America, represented by The Gioconda Law Group PLLC, United States of America.
The Respondent is DVLPMNT Marketing, Inc. of Charlestown, Nevins, Saint Kitts and Nevis.
2. The Domain Name and Registrar
The disputed domain name <stewartweitzmanshoes.com> ("the Disputed Domain Name") is registered with DNC Holdings, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 22, 2014. On October 23, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 27, 2014, the Registrar transmitted by email to the Center its verification response.
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 October 27, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 16, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 26, 2014.
The Center appointed Dawn Osborne as the sole panelist in this matter on November 26, 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 designer, manufacturer and retailer of women's footwear and handbags. The Complainant is the owner of registered trademarks in the United States of America (the "USA") for STUART WEITZMAN for handbags, shoes and retail store services with first use in commerce recorded as 1978.
The Disputed Domain Name was registered in 2006. It has been used as a parking page for links related to shoes which have pointed to the goods of third parties including competitors of the Complainant.
5. Parties' Contentions
The Complainant's submissions can be summarized as follows:
The Complainant is a well-known and successful designer, manufacturer and retailer of women's footwear and handbags. The Complainant sells its goods to consumers through its chain of retail stores, partnerships with department stores and on its web site "www.stuartweitzman.com". As a result of extensive sales, marketing and advertising in the United States and throughout the world the Complainant has developed a substantial reputation and goodwill worldwide in its business, in its trade marks and in the goods and services to which it supplies by reference to its marks.
The Complainant is the owner of registered trademarks in the USA for STUART WEITZMAN for handbags, shoes and retail store services. The Complainant has made substantially exclusive and continuous use of the STUART WEITZMAN mark in commerce long prior to the registration of the Disputed Domain Name. The STUART WEITZMAN mark is highly distinctive and symbolizes substantial goodwill.
The Disputed Domain Name is confusingly similar to the Complainant's trademarks and personal name. It misuses the Complainant's trade mark in such a way that it is likely to cause confusion and defraud the public by creating the false impression that the Disputed Domain Name is the Complainant's genuine domain name or at the very least associated with or sponsored by the Complainant when it is not. The deliberated misspelling in the Disputed Domain Name will create a likelihood of confusion with the Complainant's trade marks as to an affiliation with the Respondent's web site.
The Respondent has no rights or legitimate interests with respect to the Disputed Domain Name. The Respondent is not using the Disputed Domain Name in connection with any bona fide offering of goods or services under the Policy. It resolves to a parked web site that promotes generic hyperlinks including links entitled "Shoeswholesalers", "Shoesonlinesale", "Discountdesignershoes" and "ItalianShoes" and a number of the links on the page go to the Complainant's competitors including Gucci and Burberry. The Respondent is not commonly known by any equivalent to the Disputed Domain Name and is not an agent or licensee of the Complainant. The use is not a legitimate, noncommercial or fair use under the Policy. It has been registered to attract Internet users to a parked web site for the Respondent's commercial gain by click-through fees or free parking. When a domain name resolves to a parked web site operated by a domain parking company the Respondent is still responsible for the content attached and this is commercial use.
The Respondent has engaged in both bad faith use and registration of the Disputed Domain Name. By its use the Respondent has intentionally attempted to attract for commercial gain, Internet users to its on line location by creating a likelihood of confusion with the Complainant's mark as to the source, affiliation or endorsement of the Respondent's web site or any product or service on it. The Respondent registered the Disputed Domain Name well after the Complainant's registration of its trade marks.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
- The Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
- The Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Disputed Domain Name consists of a phonetic equivalent to the Complainant's mark STUART WEITZMAN registered in the United States and the generic word "shoes". The misspelling of the first name "Stuart" as "Stewart" and the addition of the generic word, "shoes", which reflects the business that the Complainant is in, does not serve to distinguish the Disputed Domain Name from the Complainant's STUART WEITZMAN trademark. In fact, the addition of the word 'shoes' is likely to cause additional confusion as the Complainant is known in that field of business. As such the Disputed Domain Name is confusingly similar to a trademark in which the Complainant has rights for the purpose of the Policy.
B. Rights or Legitimate Interests
The Respondent has not filed a Response, does not appear to have any trademarks associated with the name "Stuart Weitzman". There is no evidence that it is commonly known by this name and it does not have any consent from the Complainant to use this name. It does not appear to have used the Disputed Domain Name for any bona fide offering of services of its own. Accordingly, the Panel finds that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out non-exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including where there are circumstances where, by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site 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 its website or location or of a product or service on its web site or location. Reviewing the evidence of third party hyperlinks, which are present on the Respondent's web site and pointing to third party web sites competing with the Complainant, the Panel finds that the Respondent has attempted to attract Internet users and cause confusion between the Complainant's marks and goods offered by third party competitors of the Complainant on links appearing on the site attached to the Disputed Domain Name for commercial gain. As such the Panel finds that the Complainant has made out its case under paragraph 4(b)(iv) of the Policy.
In addition, the use of a misspelling of the Complainant's first name indicates typosquatting activity long recognized as a form of bad faith by panels applying the UDRP Policy.
Accordingly, the Panel finds that the Disputed 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 Disputed Domain Name <stewartweitzmanshoes.com> be transferred to the Complainant.
Date: December 10, 2014