WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
David Yurman IP LLC v. Wang Yougou / Domain Admin, Privacy Protection Service INC d/b/a/ PrivacyProtect.org
Case No. D2014-2017
1. The Parties
The Complainant is David Yurman IP LLC of New York, United States of America, internally represented.
The Respondent is Wang Yougou of Beijing, China / Domain Admin, Privacy Protection Service INC d/b/a/ PrivacyProtect.org of Nobby Beach, Queensland, Australia.
2. The Domain Names and Registrar
The disputed domain names <davidyurmansale.com> and <dwavidyurmansale.com> are registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 15, 2014. On November 17, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 18, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 27, 2014 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 amendment to the Complaint on December 3, 2014. The Center sent an email communication to the Complainant on December 5, 2014 providing the correct address of the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed the second amendment to the Complaint on December 5, 2014.
The Center verified that the Complaint together with the amendments to 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 proceeding commenced on December 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 28, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 29, 2014.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on January 15, 2015. 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 distributor of luxury goods including jewelry, watches and eyewear under the DAVID YURMAN and related trademarks. The Complainant is a subsidiary of David Yurman Enterprises LLC and an affiliate of Yurman Studio Inc., and Yurman Design Inc.
Yurman Studio Inc., is the owner of trademarks including the following registered at the United States Patent and Trademark Office (USPTO) on the principal register:
DAVID YURMAN, registration number 1725487, registration date October 20, 1992, class 14;
DAVID YURMAN, registration number 2460107, registration date June 12, 2001, class 35;
DY (stylized logo), registration number 3282245, registration date August 21, 2007, class 14;
YURMAN, registration number 3506959, registration date September 30, 2008, class 14.
Nothing is known about the Respondent except for such contact details as were provided to the Registrar in order to register the disputed domain names, which were created on June 29, 2014 (<dwavidyurmansale.com>) and June 30, 2014 (<davidyurmansale.com>).
Since <dwavidyurmansale.com> was found to be parked on November 14, 2014, and on December 8, 2014, appeared not be accessible, references hereafter to the Respondent’s website are in respect of <davidyurmansale.com>, unless stated otherwise.
5. Parties’ Contentions
The Complainant has produced copies of the registration abstracts of the trademarks listed in section 4 above and contends that it is the owner of them and has exclusive rights to them.
The Complainant contends that the disputed domain names are confusingly similar to the trademarks DAVID YURMAN and YURMAN in which it has rights. Documentary evidence of confusion is produced in the form of emails from a person who states that she purchased merchandise from the website to which <davidyurmansale.com> resolved.
The Complainant further contends that the Respondent does not have rights or legitimate interests in respect of the disputed domain names. The Respondent has no association with the Complainant and is not authorized or licensed to use the Complainant’s trademarks.
The Complainant states that the Respondent is not using, or making any demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services, but is offering for sale counterfeit or falsely designated merchandise portrayed as David Yurman merchandise. The Complainant has produced screen captures of the “www.davidyurmansale.com” website and of the Complainant’s own website at “www.davidyurman.com” for comparison, and asserts that the similarity on the Respondent’s website includes the reproduction of the Complainant’s trademark in the same font, size and colour as on the Complainant’s website.
The Complainant states that the Respondent has never been commonly known by the disputed domain names or by the DAVID YURMAN or YURMAN trademarks. The Respondent is not making any legitimate noncommercial or fair use of the disputed domain names but is attempting to mislead and divert Internet users for commercial gain.
The Complainant further contends that the disputed domain names were registered and are being used by the Respondent in bad faith.
The Complainant contends that the Respondent must have been aware of the Complainant’s DAVID YURMAN and YURMAN trademarks and that the Respondent has set out to create an association with the Complainant, using the Complainant’s trademarks in the Respondent’s website, constituting opportunistic bad faith.
The Complainant states that the Respondent’s website at “www.davidyurmansale.com” is used for selling counterfeit David Yurman goods and other items purporting to be David Yurman goods under the Complainant’s trademarks, and has submitted evidence of actual customer confusion with the Complainant.
The Complainant contends that the Respondent’s use of a privacy protection service, coupled with the illegitimate use of the disputed domain names, is evidence of bad faith.
The Complainant states that it has on previous occasions taken action against the Respondent under the UDRP thereby constituting notice to the Respondent of the impropriety of its use of the Complainant’s trademarks.
The Complainant has produced a copy of one of its own web pages depicting a bracelet, and a copy of the Respondent’s website showing what the Complainant states is evidently the same professional photograph, revealing the same the angle and shadowing, constituting a breach of copyright and an attempt by the Respondent to create a false association with the Complainant.
The Complainant has cited a number of previous decisions under the UDRP, some relating to itself, that it wishes to draw to the attention of the Panel.
The Complainant requests the transfer to itself of the disputed domain names.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable provider, in compliance with the Rules, that:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
The Respondent in its Domain Registrant Agreement with the Registrar accepted terms that included the following:
“2. OBLIGATIONS OF THE REGISTRANT
(1) The Registrant agrees to provide and maintain current, complete and accurate information of the Whois Record and all the data elements about the Order in the OrderBox Database and update them within seven (7) days of any change during the term of the Order, including: the full name, postal address, e-mail address, voice telephone number, and fax number if available of the Registered Name Holder; name of authorized person for contact purposes in the case of an Registered Name Holder that is an organization, association, or corporation. Registrant agrees that provision of inaccurate or unreliable information, and/or Registrant’s failure to promptly update information provided to Registrar within seven (7) days of any change, or its failure to respond for over seven (7) days to inquiries by Registrar to the email address of the Registrant or any other contact listed for the Order in the OrderBox database concerning the accuracy of contact information associated with the Order shall be constituted as a breach of this Agreement and a basis for freezing, suspending, or deleting that Order.”
It is noted that the Respondent has used the privacy service Privacy Protection Service INC d/b/a/ PrivacyProtect.org, and has given its name as Domain Admin. In and of itself, the use of a privacy service may be legitimate. The Registrar has disclosed to the Center the name, email and physical contact details of the Respondent, and the Center has sent the Complaint and attendant notices both to the privacy service, and to the Respondent, using courier and emails. The Panel is satisfied that the Center has fulfilled its obligations to notify the Respondent of the Complaint and the commencement of the present proceeding in accordance with paragraph 2 of the Rules.
A. Identical or Confusingly Similar
The trademarks in which the Complainant, David Yurman IP LLC, claims rights, are registered in the name of affiliate company Yurman Studio Inc. The Panel is satisfied that the various “David Yurman” companies are sufficiently interrelated that the Complainant has the required rights in the trademarks for the purpose of the Policy.
The disputed domain names are <davidyurmansale.com> and <dwavidyurmansale.com>. The generic Top-Level Domain (“gTLD”) designation of a disputed domain name may generally be disregarded in the determination of confusing similarity. What remain are “davidyurmansale”, which may easily be recognised as the Complainant’s registered trademark DAVID YURMAN followed by “sale”; and “dwavidyurmansale”, comprising the Complainant’s registered trademark YURMAN, with some degree of allusion to DAVID YURMAN, followed by “sale”. The generic word “sale” is found not to be distinguishing in either instance. The Panel finds the disputed domain names to be confusingly similar to the Complainant’s registered trademarks DAVID YURMAN or YURMAN in the terms of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has asserted that it has no association with the Respondent, which has not been authorised or permitted to use the Complainant’s trademark.
The onus of proof that the Respondent does not have rights or legitimate interests in the disputed domain names rests with the Complainant. Paragraph 4(c) of the Policy provides for the Respondent to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The evidence shows that the Respondent’s website linked to <davidyurmansale.com> has been used for the purpose of selling jewelry over the Internet. Having examined the screen captures of the Respondent’s website produced in evidence, and considered the Complainant’s submissions, the Panel is satisfied that the numerous goods offered for sale and labelled as being “David Yurman” products are not likely the authentic products of the Complainant and as evidenced also by the Respondent’s dissatisfied customer who believed it was purchasing the Complainant’s products. The Panel is satisfied that in at least one instance a professional photograph belonging to the Complainant’s website has been appropriated by the Respondent. The Panel finds that any such use as the Respondent has made of the disputed domain name <davidyurmansale.com> has not been legitimate within the meaning of paragraph 4(c)(i) of the Policy.
There is no evidence of any legitimate use or preparation for use of the disputed domain name <dwavidyurmansale.com> in terms of paragraph 4(c)(i) of the Policy.
The Respondent does not claim to have been commonly known by a name corresponding to the disputed domain names. There is no evidence that the disputed domain names have been in noncommercial or fair use.
Accordingly, the Panel finds for the Complainant in the terms of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain names have been registered in bad faith and are being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
The provisions of paragraph 4(b) of the Policy are without limitation and bad faith may be found otherwise by the Panel.
In considering first the disputed domain name <davidyurmansale.com>, paragraph 4(b)(iv) of the Policy is pertinent.
The conduct of a selling operation via the Internet may be entirely legitimate and such usage constitutes a major portion of Internet traffic. The selling of inexpensive jewelry in this way is common. In order to succeed for any remunerative purpose, however, a website operator must attract visitors and potential customers. In the present instance the Respondent has not created its own name or trademark but is found to have registered a domain name which includes the Complainant’s name and long established trademarks without any authorisation. By so doing the Respondent has set out to attract visitors by trading on the good name, reputation and trademarks of the Complainant.
The Respondent may reasonably expect the disputed domain names, featuring the Complainant’s trademarks, to appear in search engine results and that some Internet users seeking the Complainant would thereby be led to the Respondent’s website by mistake. The Respondent by its actions may clearly expect at least some Internet visitors to confuse the Respondent’s products with those of the Complainant and to purchase the Respondent’s merchandise in the mistaken expectation that it is the Complainant’s and is of the quality associated with the good name of the Complainant. Emails produced in evidence demonstrate that at least one customer has been misled in this way. In the terms of paragraph 4(b)(iv) of the Policy, the Respondent is found to have used the disputed domain name <davidyurmansale.com> in bad faith.
On the evidence and on the balance of probabilities the Panel finds the disputed domain name <davidyurmansale.com> to have been registered for the purpose for which it has been used, amounting to registration and use in bad faith under paragraph 4(a)(iii) of the Policy.
There is no evidence that the disputed domain name <dwavidyurmansale.com> has received any substantive use other than being parked. Previous UDRP panels since at least as early as the case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, have tended to espouse the view that passive holding need not preclude a finding of bad faith. Having regard to all the circumstances, the evidence suggests that the Respondent may have made a typographical error at the time of registration of <dwavidyurmansale.com>, intending to register <davidyurmansale.com>, which it duly did the next day. The Panel finds on the balance of probabilities that <dwavidyurmansale.com> was also intended in every respect to have been accorded the use that <davidyurmansale.com> has received. The Panel finds the disputed domain name <dwavidyurmansale.com> to have been registered in bad faith with the intention of being used to cause confusion with the Complainant’s trademark for purposes of commercial gain under paragraph 4(a)(iii) 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 disputed domain names <davidyurmansale.com> and <dwavidyurmansale.com> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Date: January 25, 2015