WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Saks & Company LLC v. Saksfifthavenuestore-sale.net
Case No. D2015-0370
1. The Parties
The Complainant is Saks & Company LLC of New York, New York, United States of America (the “United States”), represented by Loeb & Loeb, LLP, United States of America.
The Respondent is Saksfifthavenuestore-sale.net of Albertslund, Denmark.
2. The Domain Name and Registrar
The disputed domain name <saksfifthavenuestore-sale.net> is registered with Shinjiru MSC Sdn Bhd (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 4, 2015. On March 5, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 17, 2015, 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 March 19, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 8, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 10, 2015.
The Center appointed Sir Ian Barker as the sole panelist in this matter on April 17, 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.
After the Complaint had been sent by courier to the address for the Respondent specified by the Complainant and confirmed by the Registrar, the Center received advice from a woman to the effect that she had received the document which had been sent to an address in Denmark. She allegedly knew nothing about the disputed domain name or the Respondent and did not herself own a domain name. It appears that the Respondent had supplied her address to the Registrar without any authority from her.
4. Factual Background
The Complainant is a New York-based corporation which for almost a century has been marketing luxury goods in the United States and in many other countries. The Complainant had a revenue of over USD 3 billion in the last fiscal year.
The Complainant markets under the brand SAKS and has spent millions of dollars in advertising and promoting its wares under this brand. It operates currently 42 Saks Fifth Avenue stores and 80 Saks Fifth Avenue OFF 5TH stores.
The Complainant owns numerous trademarks in the United States, the European Community and in other countries for SAKS & COMPANY, SAKS FIFTH AVENUE, and SAKS. The earliest of these trademarks was registered in the United States for SAKS FIFTH AVENUE (stylized) on February 7, 1956.
The Complainant operates websites at “www.saks.com” and “www.saksfifthavenue.com”.
The Complainant gave the Respondent no authority to reflect any of its marks in a domain name. The disputed domain name resolves to a website which copies the Complainant’s logo and layout of the Complainant’s websites. The Respondent’s website offers for sale goods and services competitive with those of the Complainant.
5. Parties’ Contentions
The disputed domain name is confusingly similar to the Complainant’s registered trademarks. The disputed domain name incorporates all of the mark SAKS FIFTH AVENUE and the addition of the words “store-sale” are generic “add-ons” which exacerbate the confusing similarity.
The Respondent has no rights or legitimate interest in the disputed domain name. The Complainant gave it none. The situations envisaged by paragraph 4(c) of the Policy cannot apply to the Respondent.
The disputed domain name was registered and is being used in bad faith. The longstanding and widespread use of the Complainant’s marks makes it clear that the Respondent must have known at the time of registration of the fame of the Complainant and its marks. The Respondent’s website, which redirects Internet users to competitors of the Complainant, demonstrates bad faith use. It diverts business away from the Complainant and comes within the type of conduct envisaged by paragraph 4(b)(iii) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant shall prove the following three elements:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) The respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
There is no doubt that the disputed domain name is confusingly similar to the Complainant’s registered trademarks. The disputed domain name includes the whole of the trademarked expression SAKS FIFTH AVENUE. The addition of the generic words “store-sale” increases the confusion since the Complainant is well-known for selling its goods and services at its many stores.
Accordingly, paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
The Complainant gave the Respondent no right to reflect its registered trademarks in a domain name. In the circumstances, that is sufficient to satisfy Paragraph 4(a)(ii) in the absence of any Response filed by the Respondent.
The Respondent could have filed a Response alleging one or more of the situations covered by paragraph 4(c) of the Policy but has elected not to do so. If the Respondent had been able to demonstrate that one of the Paragraph 4(c) situations applied to it, then it might have been able to defend a claim under this limb of the Policy. However, it has not done so and paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
This is a textbook example of cybersquatting. The worldwide fame of the various Complainant’s marks is such that the Respondent must have known of them when it registered the disputed domain names as recently as 2014.
There can be no possible inference from this registration other than that the Respondent has attempted to capitalize on the fame of a well-known, worldwide mark by registering a domain name which is confusingly similar to the Complainant’s marks – SAKS FIFTH AVENUE.
Paragraph 4(b)(iv) of the Policy applies to this brazen exercise. The disputed domain name and website give an indication to Internet users that the Respondent has some connection with the Complainant, which in fact is not the case. Nothing on the website at the disputed domain name informs Internet users that the website is not endorsed or sponsored by the Complainant..
A further indication of bad faith is what appears to be the hijacking by the Respondent of an address pertaining to somebody else who has no connection with it or the Complainant. This conduct appears to be a form of identity theft with the aim of hiding its true whereabouts.
Accordingly paragraph 4(a)(iii) of the Policy is satisfied.
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 <saksfifthavenuestore-sale.net> be transferred to the Complainant.
Sir Ian Barker
Date: May 1, 2015