WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PEI Licensing, Inc. v. Registration Private, Domains By Proxy, LLC / Robert Bartlett
Case No. D2016-0987
1. The Parties
Complainant is PEI Licensing, Inc. of Miami, Florida, United States of America ("United States"), represented by Moritt Hock & Hamroff LLP, United States.
Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States / Robert Bartlett of Miami, Florida, United States.
2. The Domain Names and Registrar
The disputed domain names <perryellisfragrance.com> and <perryellisfragrances.com> are registered with GoDaddy.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 17, 2016. On May 18, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 19, 2016, 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 Complainant on May 19, 2016, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amended Complaint. Complainant filed an amended Complaint on May 24, 2016.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 25, 2016. In accordance with the Rules, paragraph 5, the due date for the Response was June 14, 2016. Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 15, 2016.
The Center appointed Sandra A. Sellers as the sole panelist in this matter on June 20, 2016. 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
Complainant, which was incorporated in 1977, is an internationally known designer, distributor and licensor of quality men's and women's apparel, accessories, fragrances and other merchandise. It owns numerous federally registered trademarks for the mark PERRY ELLIS. It first used the PERRY ELLIS mark in commerce in January 1977. It also owns the domain name <perryellis.com>.
Respondent registered the disputed domain names <perryellisfragrance.com> and <perryellisfragrances.com> on July 20, 2012 and July 3, 2012 respectively. The disputed domain name <perryellisfragrance.com> resolves to a website for the unauthorized sale of "Perry Ellis" fragrances, which is designed to look and feel as though it is owned and operated by Complainant. Additionally, its home page has a non-working link to the "Perry Ellis story" and an indication of copyright ownership of "© 2012 perry ellis.com" (Complainant's website.) The site contains unauthorized images of Perry Ellis fragrances. It also features a non-working link and reference to Respondent's other disputed domain name, <perryellisfragrances.com>. The disputed domain name <perryellisfragrances.com> resolved to a registrar parking page.
5. Parties' Contentions
Complainant asserts that it has rights in the PERRY ELLIS trademark. It contends that the disputed domain names are confusingly similar to Complainant's mark because they consist of Complainant's PERRY ELLIS mark in its entirety, and that the addition of the common word "fragrance(s)" does not distinguish the disputed domain names from Complainant's mark. Complainant further alleges that Respondent has no rights or legitimate interests in the disputed domain names, and that it registered and uses the disputed domain names in bad faith.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the disputed domain name 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
As set forth above, Complainant owns various trademark registrations for the PERRY ELLIS mark. The disputed domain names are confusingly similar to Complainant's PERRY ELLIS mark. They contain Complainant's PERRY ELLIS mark in its entirety. The only difference between Complainant's mark and the disputed domain names is the addition of the common word "fragrance(s)." Numerous previous decisions have held that the addition of terms that are clearly descriptive of products made by a complainant increases, rather than decreases, confusing similarity given that "Internet users would assume that the disputed domain name combining the trademark and such terms had been registered by the Complainant or is related to the promotion of Complainant's products." See Revlon Consumer Products Corporation v. Vladimir Sangco, WIPO Case No. D2010-1774; Revlon Consumer Products Corporation v IONE Inc., WIPO Case No. D2010-1000; Forte (UK) Limited v. Eugenio Ceschel, WIPO Case No. D2000-0283; The Chase Manhattan Corporation v. Jehovah Technologies Pte Ltd, WIPO Case No. D2000-0388.
B. Rights or Legitimate Interests
Because it is generally difficult for a complainant to prove the fact that a respondent does not have any rights or legitimate interests in a disputed domain name, previous UDRP panels have found it sufficient for a Complainant to make a prima facie showing of its assertion, shifting the burden of production to the respondent to come forward with evidence of its rights or legitimate interests in the disputed domain name.
Complainant has exclusive rights in the PERRY ELLIS mark and has not authorized Respondent to register and use the domain names <perryellisfragrance.com> or <perryellisfragrances.com>. Respondent is not affiliated with or related to Complainant, nor is Respondent licensed or authorized to use the PERRY ELLIS mark. Respondent is not known under the marks. Respondent has made no showing that it has any rights or legitimate interests in the disputed domain names or that it has made a bona fide offering of goods or services under the disputed domain names. The Panel finds that the unauthorized sale of the Complainant's products at the disputed domain name <perryellisfragrance.com> without any statement or disclaimer disclosing the nature of Respondent's relationship with Complainant does not amount to bona fide use of the disputed domain name for the purposes of the Policy. On the evidence before the Panel, Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain names.
The Panel is satisfied that Complainant has made a prima facie showing of Respondent's lack of rights or legitimate interests in the disputed domain name.
Respondent is in default, and has not provided any evidence in its own favor.
The Panel finds that the evidence in the record is sufficient to establish that Respondent has no rights or legitimate interests in the disputed domain name, and thus Complainant meets the second criterion of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that:
"for the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online 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."
It is difficult to conceive that Respondent did not know of Complainant's marks and products when Respondent registered the disputed domain names. As set forth above, the PERRY ELLIS products are protected by various trademark registrations. Complainant uses the PERRY ELLIS mark for its fragrances. All of this occurred before Respondent registered the disputed domain names <perryellisfragrance.com> and <perryellisfragrances.com> in July 2012. Further, the disputed domain name <perryellisfragrance.com> resolves to a website offering unauthorized "Perry Ellis" fragrances for sale. Based on these facts, this Panel infers that Respondent was aware or must have been aware of Complainant's mark when Respondent registered the disputed domain names, and therefore registered them in bad faith. See, e.g., Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574, in which the panel found it "inevitable that [r]espondent registered the domain names in full knowledge of [c]omplainant's rights and interests." Though not necessary for this finding, under 15 USC §1072, registration of the mark PERRY ELLIS constitutes constructive notice of the mark. Respondent therefore had notice of Complainant's mark prior to registering the disputed domain name.
It is clear that Respondent is using Complainant's PERRY ELLIS mark in bad faith. The <perryellisfragrance.com> disputed domain name resolves to a website offering "Perry Ellis" products for sale that are identical to Complainant's products, including unauthorized images from Complainant. The content of the website appears designed to reinforce the Internet user's impressions that the disputed domain name belongs to Complainant. Internet users may be further confused by the site's non-working link to "The Perry Ellis Story", and the indication of purported copyright ownership of "© 2012 perry ellis.com." The resulting confusion is grounds for a finding of bad faith use under paragraph 4(b)(iv) of the Policy. See Pandora Jewelry, LLC v. ke ying, no, bing jin, fcgem, Wei Pang, na no and fcg, xiong mao, WIPO Case No. D2010-0642.
With respect to the disputed domain name <perryellisfragrances.com>, the <www.perryellisfragrance.com> website has a non-working link to <perryellisfragrances.com>, which is a registrar parking page. This effective passive holding also constitutes use in bad faith. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Panel finds that Respondent also has used the domain names in bad faith under paragraph 4(b)(iv) 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, <perryellisfragrance.com> and <perryellisfragrances.com> be transferred to Complainant.
Sandra A. Sellers
Date: July 1, 2016