WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Saks & Company LLC v. Transure Enterprise Ltd / Above.com Domain Privacy
Case No. D2015-0724
1. The Parties
1.1.The Complainant is Saks & Company LLC of New York, New York, United States of America, represented by Loeb & Loeb, LLP, United States of America (the “Complainant”).
1.2 The Respondent is Transure Enterprise Ltd of Tortola, British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland / Above.com Domain Privacy, Beaumaris, Victoria, Australia and unrepresented (the “Respondent”).
2. The Domain Name and Registrar
2.1 The disputed domain name <thesaks.com> (the disputed Domain Name) is registered with Above.com, Inc. (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 22, 2015. On April 23, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed Domain Name. On April 24, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 28, 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 amendment to the Complaint on May 5, 2015.
3.2 The Center verified that the Complaint together with the amendment 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”).
3.3 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 May 6, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 26, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 27, 2015.
3.4 The Center appointed Ike Ehiribe as the sole panelist in this matter on June 2, 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
4.1 The Complainant is a company incorporated in New York in the United States of America and is described as one of the world’s premier retail store chain companies and a premier provider of luxury goods for almost 100 years. The Complainant opened its first store in New York in the early 1900s with other branches opened soon thereafter in Palm Beach, Florida, Chicago, Miami Beach and Beverly Hills in California. Since 1992, the Complainant is said to have operated the well known and highly – regarded SAKS FIFTH AVENUE stores throughout the United States. Currently, it is said that the 42 SAKS FIFTH AVENUE stores and 80 SAKS FIFTH AVENUE operate under and /or in connection with the Complainant’s famous marks namely: SAKS FIFTH AVENUE, SAKS FIFTH AVENUE OF FIFTH and SAKS. Over the years the Complainant is said to have invested heavily in marketing its Marks by devoting millions of dollars to advertising and promoting its services through many media outlets throughout the United States of America and in other countries. In the last fiscal year the Complainant is said to have earned revenue of over USD 3 billion and as a result of the Complainant’s marketing and sales campaign the Complainant’s Marks have become famous all over the United States of America and many other countries.
4.2 The Respondent is Transure Enterprise Ltd a company, according to the WhoIs database, located in Tortola in the British Virgin Islands. The Respondent created the disputed Domain Name on February 5, 2009.
5. Parties’ Contentions
5.1 The Complainant asserts that the disputed Domain Name <thesaks.com> is clearly confusingly similar to the Complainant’s SAKS Marks and Names in that the disputed Domain Name consists wholly of the Complainant’s SAKS Mark and the mere addition of the word “the” to the Mark does not prevent a finding of confusing similarity. The Complainant contends further that previous panels have found confusing similarity in similar circumstances with reference to previous cases such as Lulemon Atheletica Canada Inc. v. Fundacion Private WhoIs, NAF Claim No. FA 1209001461664; The Neiman Marcus Group, Inc. and NM Nevada Trust v. Compassion Over Killing and Nick Patch, NAF Claim No. FA0212000137222; A & F Trademark Inc. et al v. Lee Summerlin, WIPO Case No. DTV2004-0002 etc. The Complainant contends that it clearly has priority over the Respondent who as a second comer was obligated not to use or register a domain name that is confusingly similar to the Complainant’s SAKS Marks with the intention to profit from confusion with the Complainant’s SAKS Marks. The Complainant further asserts that the Respondent has been using the disputed Domain Name to direct consumers to its commercial website and or to lure away consumers intending to visit the Complainant’s authorized websites.
5.2 The Complainant argues further that the Respondent cannot establish any rights or legitimate interests in the disputed Domain Name as it serves solely to divert Internet users searching for the Complainant’s website and or its products and services to the Respondent’s website for the Respondent’s commercial gain. In support of this contention, the Complainant asserts that: (i) the Respondent has not used the disputed Domain Name in connection with the bona fide offering of goods and services; (ii) the Respondent is not known as “thesaks” nor is there any evidence to suggest that the Respondent is currently known or has ever been known as “thesaks” or any variation thereof. Furthermore, it is argued that it will be nearly impossible for the Respondent to claim to be commonly known by any derivative of the SAKS or the SAKS FIFTH AVENUE Marks. See the following previous UDRP decisions Nike, Inc. v. B.B. de Boer, WIPO Case No. D2000-1397; Compagnie de Saint Gobain v. Com-Union Corp., WIPO Case No. D2000-0020 etc. It is also argued that the Complainant has not entered into any license agreements or other instruments by which the Respondent would have a legitimate right to use the Complainant’s SAKS Marks and Names; (iii) the Respondent has not made any legitimate noncommercial or fair use of the disputed Domain Name. As the Respondent is misdirecting Internet users looking for the Complainant’s goods and services to websites unrelated to the Complainant’s Marks presumably for commercial gain, such activity cannot be described as legitimate noncommercial or fair use of the disputed Domain Name, see Gilead Sciences, Inc. v. Kumar Patel, WIPO Case No. D2005-0831 etc.
5.3 On the issue of bad faith registration and use, the Complainant states that all the facts surrounding the registration and use of the disputed Domain Name by the Respondent, demonstrate bad faith considering that the Complainant has been using the SAKS Marks since the early 1900s and the longstanding widespread use of the SAKS AND SAKS FIFTH AVENUE Marks. The Complainant therefore asserts that the Respondent undoubtedly registered the disputed Domain Name with full knowledge of the SAKS and SAKS FIFTH AVENUE Marks. In this regard the Complainant refers to a number of previous UDRP decisions where previous panels have held there is a legal presumption of bad faith where the Respondent reasonably ought to have been aware of the Complainant’s trademarks actually or constructively. See Digi Int’l v. DDI Sys, FA 124506; Exxon Mobil Corp. v. Fisher, WIPO Case No. D2000-1412; Glaxosmithkline Biologicals S.A. v. David Pfeffer, Jemm Productions, WIPO Case No. D2005-0441. Furthermore the Complainant refers to the extent competitive links are used or displayed in connection with the disputed Domain Name and asserts that the use of the disputed Domain Name to re-direct Internet users to websites of competing organisations is evidence of bad faith. In addition, it is argued that the use of the disputed Domain Name to display competitive wares and or to lure consumers into providing their personal information without actually selling goods potentially diverts business away from the Complainant, thereby, disrupting the Complainant’s business, is further evidence of bad faith registration and use.
5.4 The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to succeed, namely 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 respect of the disputed Domain Name; and
iii) the Respondent has registered and is using the disputed Domain Name in bad faith
A. Identical or Confusingly Similar
6.2 The Panel is satisfied that the Complainant has long owned intellectual property rights in the trademarks SAKS and SAKS FIFTH AVENUE as is evidenced by the list of numerous trademark registration certificates from the United States Patent and Trademark Office and other countries exhibited and attached to these proceedings. The Complainant is undoubtedly one of the world’s leading retail store chains providing luxury goods and services. The Panel therefore finds that the disputed Domain Name <thesaks.com> is undoubtedly confusingly similar to the Complainant’s Marks. The disputed Domain Name clearly incorporates the Complainant’s Mark SAKS entirely and the addition of the word “the” and or the generic Top-Level Domain (gTLD) suffix “. com” does not in anyway preclude a finding of confusing similarity. See in support a number of cases cited by the Complainant such as A & F Trademark Inc. et al v. Lee Summerlin, supra; Lululemon Athletica Canada Inc. v. Fundacion Private WhoIs/Domain Adminisitrator, NAF Claim No. FA1209001461664where it was held that the addition of gTLD and generic terms to a disputed domain name is irrelevant for the purposes of the Policy. In the circumstances the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
6.3 The Panel also finds that the Respondent has failed to provide any evidence that indicates that the Respondent has any rights or a legitimate interests in the disputed Domain Name within the ambit of paragraph 4(c) of the Policy. As the Complainant asserts, the Respondent has also failed to demonstrate that it was licensed or authorised by the Complainant to use the Complainant’s Marks or indeed that the Respondent was ever commonly known by any derivative of the Complainant’s Marks. In this regard see Compagnie de Saint Gobain v. Com-Union Corp, supra finding no rights or legitimate interests exist where the respondent was not commonly known by the trademark of the complainant and never applied for a license or permission from the complainant to use the complainant’s marks. The Panel therefore holds that as the disputed Domain Name resolves to a website diverting Internet users, and or consumers or those genuinely seeking the legitimate websites of the Complainant to other websites offering goods and services of the Complainant’s competitors presumably for commercial gain, such activity cannot be described as a legitimate and noncommercial fair use of the disputed Domain Name. See in general Oki Data Americas Inc. v. ASD Inc., WIPO Case No. D2001-0903 and also Gilead Sciences Inc.v. Kumar Patel, supra. Accordingly, the Panel holds that the Complainant has satisfied the requirements of paragraph 4 (a)(ii) of the Policy.
C. Registered and Used in Bad Faith
6.4 On the question of bad faith registration and use, the Panel without any hesitation finds that the Respondent engaged in bad faith registration and continued bad use. The Panel finds that the Respondent knew or ought to have known of the Complainant’s established rights in the Marks SAKS and SAKS FIFTH AVENUE since the 1900s, which an ordinary search in a trademark registry would have revealed before electing to register the disputed Domain Name in February 2009. See in this regard Exxon Mobil Corp. v. Fisher, supra confirming that a respondent’s actual and constructive knowledge of the world wide prominence of a complainant’s mark prior to registering a disputed domain name is evidence of bad faith registration. The Respondent has since engaged in creating confusion among the Complainant’s customers and other Internet users by diverting them to websites unrelated to the Complainant presumably for financial gain. As such activity undoubtedly disrupts the business of the Complainant, such conduct can only be clear evidence of bad faith registration and use. See also Glaxosmithkline Biologicals S.A. v. David Pfeffer, Jemm Productions, supra finding that the registration and use of a disputed domain name that is obviously connected to a complainant’s trademark suggests opportunistic bad faith. Just as the Complainant further argues, the Panel finds that the Respondent’s use of the disputed Domain Name to lure consumers away from the Complainant’s website which is tantamount to disrupting the Complainant’s business is further undeniable evidence of bad faith use. See Freedom Flag Inc. d/b/a Falls Flag & Banner Co. v. Flags unlimited, WIPO Case No. D2002-0478. Finally, the Panel draws adverse inferences from the failure of the Respondent to respond to this Complaint. Accordingly, the Panel is satisfied that the Complainant has established the essential requirements of paragraph 4(a)(iii) of the Policy.
7.1 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 <thesaks.com> be transferred to the Complainant.
Date: June 16, 2015