WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Stuart Weitzman IP, LLC v. Domain Administrator, World Idea Business
Case No. D2014-1971
1. The Parties
The Complainant is Stuart Weitzman IP, LLC, of New York, United States of America, represented by the Gioconda Law Group PLLC, United States of America.
The Respondent is Domain Administrator, World Idea Business of Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <stewartweitzman.com> is registered with Rebel.com Corp. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 6, 2014. On November 7, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 14, 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.
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 November 17, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 7, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 8, 2014.
The Center appointed Alvaro Loureiro Oliveira as the sole panelist in this matter on December 19, 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 Stuart Weitzman IP, LLC, a well-known company established in the fashion business, with special attention to women's footwear and handbags. This mark currently identifies luxury leather and fashion goods, having its renown and fame reached the whole world over. The Complainant sells its products through an international chain of retail stores and department stores, as well as on its website, at "www.stuartweitzman.com".
The trademark STUART WEITZMAN is the object of several registrations, as state the copies attached as Annex 5 of the Complaint.
The evidence presented shows that the trademark STUART WEITZMAN is original and distinctive. Besides, it has gathered awareness throughout the world and can be considered a well-known trademark, according to the provisions of article 6 bis of the Paris Convention.
In sum, the Complainant shows evidence of substantial goodwill and name recognition in the expression "Stuart Weitzman", based on intensive use on a long term basis.
5. Parties' Contentions
The Complainant contends that the disputed domain name <stewartweitzman.com> is virtually identical to its worldwide known trademark STUART WEITZMAN. In fact the disputed domain name brings a misspelling of the name "Stuart", written in an alternate form, "Stewart", but still phonetically identical to the original mark.
The Complainant has obtained registrations for the trademark STUART WEITZMAN throughout the world, as stated above.
The Complainant claims never having licensed or authorized the Respondent to use its mark or to apply it for any kind of domain name.
The Complainant also states that the Respondent is not making a legitimate use of the disputed domain name. On the contrary, the disputed domain name is directed to a website which is apparently inactive, but provides links to other sites selling the same goods – including one link bearing the Complainant's mark correctly written.
The Respondent knew or should have known of the existence of the Complainant's trademark, being a matter of public record. Thus, the Respondent must be deemed to have had knowledge of the Complainant's pre-existing rights in STUART WEITZMAN as a trademark.
The Complainant further contends that the disputed domain name was registered and used in bad faith. The Respondent could only be seeking an undue advantage either by attempting to sell it or to divert the legitimate owner's clientele. In fact, it has been largely established by the jurisprudence of the Center that the possession of a domain name obviously connected with a complainant suggests that its use by another is opportunistic bad faith.
In sum, the Complainant alleges that the registration and use of the disputed domain name is intentional to mislead Internet users and is clear that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
The Policy, in its paragraph 4(a), determines that three elements must be present and duly proven by a complainant to obtain relief. These elements are:
i. The 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 to the domain name; and
iii. The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Regarding the first element, the Panel is satisfied that the Complainant has presented evidence of having rights in the mark STUART WEITZMAN, which is registered and clearly used regularly throughout the world.
Further, the Panel finds that the disputed domain name <stewartweitzman.com> is confusingly similar to the Complainant's trademark, since this mark is virtually reproduced in it. Moreover, the disputed domain name incorporates entirely the mark STUART WEITZMAN with the mere alteration on the name Stuart, then read Stewart. This is a typical case of cybersquatting.
Hence, the Panel concludes that the first element in the Policy has been satisfied by the Complainant.
B. Rights or Legitimate Interests
Given the clear evidence that the STUART WEITZMAN trademark is widely known and the fact that the goods are sold under this mark throughout the world, the Panel finds that the Complainant has established a prima facie that the Respondent has no rights or legitimate interests in the disputed domain name.
Hence, the Respondent cannot claim to have been using the trademark not knowing the Complainant's rights to it. Besides, the disputed domain name leads to a web page that bears links to other pages selling the same goods, including one having the Complainant's mark correctly written. This shows that the Respondent's interests cannot have been legitimate.
The Panel, thus, finds for the Complainant under the second element of the Policy.
C. Registered and Used in Bad Faith
It is the Panel's opinion that the Respondent has registered the disputed domain name <stewartweitzman.com> with the purpose of taking advantage of the renown of the Complainant's trademark.
The Respondent is using the disputed domain name to display on the website various links selling third party goods, including one bearing the Complainant's trademark. The Respondent appears to be doing so for the purpose of commercial gain arising from the probable confusion of the disputed domain name with the Complainant's trademark.
All the points above lead to the conclusion by this Panel that the Respondent was fully aware of the Complainant and that the Respondent registered and is using the disputed domain name in bad faith.
The Panel, hence, finds for the Complainant under the third element of the Policy.
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 <stewartweitzman.com> be transferred to the Complainant.
Alvaro Loureiro Oliveira
Date: January 14, 2015