WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Stuart Weitzman IP, LLC v. Luky Man / Privacy Protection Service Inc. d/b/a PrivacyProtect.org
Case No. D2015-0479
1. The Parties
The Complainant is Stuart Weitzman IP, LLC of New York, New York, United States of America (United States), represented by The Gioconda Law Group PLLC, United States.
The Respondent is Luky Man of Rowlett, Texas, United States / Privacy Protection Service Inc. d/b/a PrivacyProtect.org of Nobby Beach, Queensland, Australia.
2. The Domain Names and Registrar
The disputed domain names <stuart-weitzmansale.com>, <stuartweitzman-sale.com> <stuartweitzmanuk.com> are registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 19, 2015. On March 19, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 20, 2015, 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 March 24, 2015 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 March 24, 2015.
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 March 27, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 16, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 17, 2015.
On April 27, 2015, the Center received an email from the Complainant, containing an affidavit of a third party, stating that she was not the Respondent and that she believed the Respondent had used her address without authorization.
The Center appointed Angela Fox as the sole panelist in this matter on April 27, 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 retailer of high-end women’s fashion footwear and handbags. It carries out its business in the United States and internationally under the name and trademark STUART WEITZMAN. The Complainant’s products are sold through its chain of retail stores, department stores, and its website <www.stuartweitzman.com>.
The Complainant owns United States federal trademark registration Nos. 1,386,002, 2,749,908 and 3,474,821 for STUART WEITZMAN in plain and stylised form, registered in 1986, 2003 and 2008, respectively. Details of these registrations were annexed to the Complaint.
The Complainant’s business under the STUART WEITZMAN brand has been extensively advertised and has enjoyed a high profile, including editorial coverage in well-known international fashion magazines such as Vogue, Harper’s Bazaar, and Elle.
The disputed domain names were registered on January 7, 2015. They are in use for websites offering what appears to be STUART WEITZMAN-branded footwear for sale at reduced prices.
The About Us section of each of the website linked to the disputed domain name <stuart-weitzmansale.com> states as follows:
Welcome to the official Stuart Weitzman online sale store.
<stuart-weitzmansale.com> is a[n] official Stuart Weitzman online outlet store, authorised by Stuart Weitzman Inc., all the products are 100% authentic and all with original invoices and packages.
Stuart Weitzman has been designing shoes that look as good as they feel and feel as good as they look. Simultaneously fashionable, glamorous and sexy, Stuart Weitzman shoes have long become a regular on the red carpet and have been seen on A-list celebrities including Angelina Jolie, Blake Lively, Jennifer Aniston and Reese Witherspoon and at every event from the Oscars to the MTV VMAs.
Here are reasons why you should shop from us:
A Wide Selection of Qualified Stuart Weitzman Footwear
You can choose a series of Stuart Weitzman footwear in “stuart-weitzmansale”. A large collection of Stuart Weitzman products that you can buy, including all styles of Stuart Weitzman.
Always Low Price
As a dealer of Stuart Weitzman, all the products are from factory directly.
For our extensive, solid business relationships with manufacturers and Stuart Weitzman Inc., we sell original Stuart Weitzman products with factory price.”
The About Us pages on the websites linked to the two other disputed domain names in this Complaint display closely similar text.
Although providing an automated contact page, the websites linked to the disputed domain names do not disclose the name or contact information of the entity or entities behind them.
5. Parties’ Contentions
The Complainant states that the disputed domain names are confusingly similar to trademarks in which it has rights. The disputed domain names incorporate the Complainant’s registered trademark STUART WEITZMAN in its entirety, and the additional elements appearing in them (“sale”, “uk”, a hyphen and the non-distinctive generic Top-Level Domain suffix “.com”) are not capable of distinguishing them from the Complainant’s trademark.
The Complainant further submits that the Respondent has no rights or legitimate interests in the disputed domain names. It is believed to be selling counterfeit or “otherwise illegal versions of” STUART WEITZMAN goods, which is not a bona fide offering of goods because it lacks good faith. The Respondent is not an authorised agent or licensee of the Complainant, and is not known by a name or names corresponding to the disputed domain names.
Finally, the Complainant submits that the disputed domain names were registered and have been used in bad faith, in the knowledge of the Complainant’s trademark and in order to mislead Internet users into visiting the Respondent’s websites where they are then offered counterfeit or otherwise unauthorised STUART WEITZMAN goods.
The Respondent did not reply to the Complainant’s contentions and is in default. No exceptional circumstances explaining the default have been put forward. Therefore, in accordance with paragraphs 14 (a) and (b) of the Rules, the Panel will decide the Complaint and shall draw such inferences as it considers appropriate from the Respondent’s default.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the panel finds that:
(i) the disputed 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 the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy.
A. Identical or Confusingly Similar
The Complainant has proved that it owns registered trademark rights in STUART WEITZMAN in the United States.
The disputed domain names are <stuart-weitzmansale.com>, <stuartweitzman-sale.com> and <stuartweitzmanuk.com>. The first element of each domain name is either “stuart-weitzman” or “stuartweitzman”, both of which are identical to STUART WEITZMAN; the space between the words is either represented by a hyphen or omitted, but this is because such spaces cannot be replicated in domain names. The additional elements “sale” and “uk” are non-distinctive, denoting only the offer for sale of goods (including at special prices) and a territory (i.e., the United Kingdom of Great Britain and Northern Ireland (“UK”)) in which the goods might be sold. Additional descriptive elements of this kind are not capable of distinguishing the disputed domain names from the Complainant’s trademark. Indeed, on the contrary, they are apt to reinforce the impression, created by the presence of “stuart-weitzman” or “stuartweitzman”, that there is an economic connection between the disputed domain names and the Complainant. The disputed domain names are in particularly likely to be taken as denoting special “sale” sites of the Complainant, or the Complainant’s UK website or the website of an officially authorized UK re-seller.
The Panel finds that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
There is nothing on the facts of this case to suggest that the Respondent could invoke any of the circumstances listed in paragraph 4(c) of the Policy in order to demonstrate a right or legitimate interest in the disputed domain names.
In spite of the statements made on the “About Us” sections of the websites linked to the disputed domain names, the Complainant states that the Respondent is not one of its agents or licensees, and that the Complainant has not authorized the Respondent to use its trademark. The Respondent has made no effort to refute that claim, despite the business that it carries out in reliance on the disputed domain names clearly being under threat.
Although the Respondent appears to have used the disputed domain names to offer footwear for sale under the Complainant’s trademark, such use does not, on balance, appear to be use in connection with a bona fide offering of goods in accordance with paragraph 4(c)(i) of the Policy. The Complainant states that the goods offered on the Respondent’s websites, which are offered at notably lower prices than those of the Complainant, are either counterfeit or “otherwise illegal versions” of the Complainant’s branded goods, and the Respondent has not sought to deny this. The websites linked to the disputed domain names do not identify the entity behind those sites, and falsely claim that each of the websites is “a [sic] official Stuart Weitzman online outlet store, authorized by Stuart Weitzman Inc.”.
There are, moreover, notable typographical errors on the websites (e.g., “SHOP WITH COFIDENCE” on the home page of “www.stuartweitzmanuk.com”) that one would not expect to see on an official or authorised website of a high-end fashion footwear retailer for whom image is important.
It would have been advisable for the Complainant to supply at least some evidence to support its assertion that the goods on the Respondent’s websites were indeed counterfeits or otherwise “illegal versions” of the Complainant’s goods. In the absence of any such evidence, the Panel will not make a finding on that allegation. Nonetheless, on the facts and circumstances of this case, the Panel accepts that the Respondent has falsely held itself out as being an online outlet store authorised by the Complainant. Any consumers buying goods through the websites linked to the disputed domain names are likely to have been led, falsely, to believe that they are dealing with the Complainant or an entity authorised by the Complainant.
The use of domain names that are confusingly similar to the Complainant’s trademark in order to attract Internet users looking for genuine products of the Complainant sold either by the Complainant or authorised re-sellers, and to then offer them goods that are not in fact authorized goods, is a “bait and switch” strategy that lacks bona fides and does not give rise to a right or a legitimate interest under the Policy.
As noted by the panel in Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847, trading upon the name, goodwill and reputation of another by misleadingly attracting Internet users for commercial gain cannot be considered to constitute a bona fide commercial or fair use within the meaning of paragraph 4(c)(i) of the Policy. In that case the panel held that, “use which intentionally trades on the fame of another cannot constitute a ‘bona fide’ offering of goods or services […] to conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation which is obviously contrary to the intent of the Policy.”
Numerous panels have found under the UDRP that “once the Complainant makes a prima facie showing that the registrant does not have rights or legitimate interests in the domain name, the evidentiary burden shifts to the registrant to rebut the showing by providing evidence of its rights or interests in the domain name” (see, for instance, The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064).
The Panel finds that the Complainant has made out a prima facie case under this heading, and the Respondent has done nothing to refute it. The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
Taking into account the facts and circumstances as outlined by the Complainant, which the Respondent has not refuted, the Panel is satisfied that the Respondent has used the disputed domain names to attract Internet users to its websites by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s websites and of the products promoted through them, in breach of paragraph 4(b)(iv) of the Policy.
The Respondent’s activities in relation to the disputed domain names demonstrate that the Respondent was aware of the Complainant and its STUART WEITZMAN trademark at the time the disputed domain names were registered. Indeed, the disputed domain names appear to have been chosen with the intention of attracting Internet users by creating a likelihood of confusion with the Complainant’s trademark, with the intent to gain commercially through the sale of unauthorized STUART WEITZMAN-branded goods, under the false pretence that the websites were official online outlet stores authorised by the Complainant.
The Respondent is essentially free-riding on the goodwill and reputation of the Complainant’s trademark, on which it relies to attract Internet users to the websites operated under its confusingly similar disputed domain names. The Respondent is moreover disrupting the Complainant’s business by diverting and misleading consumers looking for websites of the Complainant or which offer genuine, authorised products of the Complainant and instead offering them unauthorised goods, under the false pretence of an official connection with the Complainant. Such activities are inherently damaging to the rights and legitimate business interests of the Complainant.
The Panel notes the third party affidavit filed by the Complainant late in the administrative proceeding. In it the deponent states that she resides at the address given by the Respondent in the WhoIs details for the disputed domain names, but that she is not the Respondent and that the Respondent appears to have used her address details without her knowledge or authorisation. The Panel does not need to rely on this additional submission going to the apparent provision of false contact details as a basis for a finding of bad faith in this case, because all of the foregoing facts and circumstances are already sufficient to support that finding. However, this affidavit further highlights the Respondent’s pattern of evasion, including the hiding of the identity of the website operator, and the Panel considers that it lends further support to the finding of bad faith that the remaining facts already make out.
The Panel concludes that the Respondent registered and has used the disputed domain names 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 names, <stuart-weitzmansale.com>, <stuartweitzman-sale.com> and <stuartweitzmanuk.com> be transferred to the Complainant.
Date: May 24, 2015