WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Saks & Company LLC v. Saksfifthavenuefashions-sale.com
Case No. D2015-0615
1. The Parties
The Complainant is Saks & Company LLC of New York, New York, United States of America (“United States”), represented by Loeb & Loeb, LLP, United States.
The Respondent is Saksfifthavenuefashions-sale.com of Royksund, Norway.
2. The Domain Name and Registrar
The disputed domain name <saksfifthavenuefashions-sale.com> (the “Domain Name”) 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 April 7, 2015. On April 8, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 9, 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 April 10, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 30, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 1, 2015.
The Center appointed Alan L. Limbury as the sole panelist in this matter on May 5, 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
Since the early 1900s the Complainant has operated a world-famous chain of retail stores under trademarks including SAKS and SAKS FIFTH AVENUE, which it has registered in numerous countries in both word and stylized forms. Of particular relevance in this Administrative Proceeding is United States stylized SAKS FIFTH AVENUE service mark registration No. 1,180,632, registered on December 1, 1981 for department store services.
The Domain Name was registered on March 1, 2015. It resolves to a website featuring the same stylized SAKS FIFTH AVENUE mark at the top of the home page; displays high fashion apparel for sale at ostensibly discounted prices; and contains the following statement:
“Saks Fifth Avenue Fashions Sale was a symbol of fashionable, gracious living. Saks Fifth Avenue Fashions Sale became the first large retailer located in a primarily residential district. By offering the finest quality men’s and women’s fashions, and placing an emphasis on exceptional customer service, Saks Fifth Avenue became the byword for taste and elegance. Saks Fifth Avenue Fashions Sale has had a rich history as a fashion innovator: our on-line shopping experience, we began to further expand in the off-price luxury business, offering value-priced designer clothes and accessories. The environment at Saks Fifth Avenue Fashions Sale is unmatched by other large department stores. Its spacious show rooms and marble floors give Saks Fifth Avenue NYC a feeling of luxury and comfort that is classic Manhattan. Exclusive trends are highlighted throughout Saks Fifth Avenue NY as top designers like Calvin Klein have their own sections to display their latest fashions in deluxe showrooms. Even during the mad rush of holiday shopping that can happen in New York City, you’ll have space to shop at Saks Fifth Avenue.”
5. Parties’ Contentions
The Complainant says the Domain Name is confusingly similar to its SAKS and SAKS FIFTH AVENUE marks and that the Respondent has no rights or legitimate interests in the Domain Name, which was registered and is being used in bad faith. As to legitimacy, the Complainant says the Respondent is not known by the Domain Name, which it is using to generate profits through confusion. As to bad faith, the Complainant says the SAKS and SAKS FIFTH AVENUE marks are famous and there can be no doubt that the Respondent registered the Domain Name with full knowledge of those marks.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A respondent is not obliged to participate in a proceeding under the Policy but if it fails to do so, asserted facts may be taken as true and reasonable inferences may be drawn from the information provided by the complainant. See Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441. See also Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109; SSL International plc v. Mark Freeman, WIPO Case No. D2000-1080 and AltaVista Company v. Grandtotal Finances Limited et. al., WIPO Case No. D2000-0848.
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements to obtain an order that the Domain Name should be cancelled or transferred:
(i) the Domain Name registered by the Respondent 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 of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
It is well established that “essential” or “virtual” identity is sufficient for the purposes of the Policy: The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0113; that the test of confusing similarity is confined to a comparison of the disputed domain name and the trademark alone: BWT Brands, Inc. and British American Tobacco (Brands), Inc v. NABR, WIPO Case No. D2001-1480; and that the specific generic Top-Level Domain (“gTLD’) of the domain name, in this case “.com”, does not generally affect the disputed domain name for the purpose of determining whether it is identical or confusingly similar: Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.
The Domain Name embodies the Complainant’s SAKS FIFTH AVENUE mark. The addition of “fashions-sale” and the gTLD “.com” do nothing to detract from the distinctiveness of the Complainant’s mark. The Panel finds the Domain Name to be confusingly similar to the Complainant’s SAKS FIFTH AVENUE mark.
B. Rights or Legitimate Interests
The SAKS FIFTH AVENUE mark is distinctive and famous. The Complainant’s assertions are sufficient to constitute a prima facie showing of the absence of rights or legitimate interests in the Domain Name on the part of the Respondent. The evidentiary burden therefore shifts to the Respondent to show by concrete evidence that it does have rights or legitimate interests in the Domain Name: Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 and the cases there cited. The Respondent has made no attempt to do so.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:
“(iv) by using the domain name, [the respondent] has intentionally attempted to attract, for commercial gain, Internet users to [its] website 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 [the respondent’s] website or location or of a product or service on [its] website or location.”
The Respondent is clearly using the Domain Name to masquerade as the Complainant by presenting the website to which the Domain Name resolves as if it were the website of the Complainant. This is compelling evidence within paragraph 4(b)(iv) of the Policy of bad faith registration and use and the Panel so finds.
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 <saksfifthavenuefashions-sale.com> be transferred to the Complainant.
Alan L. Limbury
Date: May 13, 2015