WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Needle and Thread Design Holdings Limited v. Jordan Feramisco
Case No. D2017-1110
1. The Parties
The Complainant is Needle and Thread Design Holdings Limited of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by Penningtons Manches LLP, United Kingdom.
The Respondent is Jordan Feramisco of Sherman Oaks, California, United States of America ("United States").
2. The Domain Name and Registrar
The disputed domain name <needleandthreaddress.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 7, 2017. On June 7, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 8, 2017, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 9, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 29, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 30, 2017.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on July 5, 2017. 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 British fashion house. Inspection of its website shows that it has stockists throughout Europe, North America, Australasia and Asia as well as through online retailers including Asos and Net-A-Porter. The Complainant is the owner of United States Trade Mark Registration No. 1938945, NEEDLE & THREADS, registered in Class 25 on November 28, 1995. The Complainant also has pending trade mark applications in the United States and the European Union for the Trade Marks NEEDLE & THREAD (word mark) and NEEDLE & THREAD (and logo) with the ampersand formed to represent a needle and thread. These trade marks will be referred to jointly and severally as "the Trade Mark" except where the context otherwise requires. The Complainant's turnover for the year 2016 was in excess of GBP 5 million. The Complainant claims to have 16,000 followers on Facebook and 100,000 followers on Instagram. It has advertised in fashion magazines including Stylist and Gracia as well as at its website at "www.needleandthread.com" and the websites of its online retailers including Asos, Harrods, House of Fraser or Net-a-Porter.
The Complaint gives no information about the Respondent save that which is shown in the WhoIs for the disputed domain name.
The disputed domain name was created on December 29, 2016. At the time of the Complaint, it resolved to a website showing at its heading the terms "Needle&Thread" and apparently offering for sale NEEDLE&THREAD-branded articles of clothing at discounted prices.
5. Parties' Contentions
The Complainant's contentions may be summarized as follows:
(i) The disputed domain name is identical or confusingly similar to the Trade Mark. The disputed domain name wholly includes the words "needle" and "thread", and is used in relation to clothing.
(ii) The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not a licensee or authorized agent of the Complainant or in any way legally permitted to use the Trade Mark. The Respondent is not known by the Trade Mark and there is no evidence of its use or preparations for use in connection with a bona fide offering of goods or services.
(iii) The disputed domain name was registered and is being used in bad faith. The Respondent must have known about the Complainant's rights in the Trade Mark when it registered the disputed domain name. The Respondent does not have the Complainant's permission to sell its dresses.
(iv) The Respondent has intentionally attempted to attract for commercial gain Internet users to the Respondent's website by creating a likelihood of confusion with the Trade Mark. The Respondent has used on its website images of the Complainant's dresses which were taken from the Asos website without the consent of the Complainant or of Asos. The Complainant exhibits screenshots from the Respondent's website alongside images from the Asos website which the Complainant asserts show images that are identical.
(v) The disputed domain name has caused actual confusion and in support of that contention the Complainant exhibits what appears to be a redacted copy or other reproduction of an email from an unidentified third party stating that the party had ordered and paid for a dress from the website at the disputed domain name but had not received any information or shipping details and that there was no response to many attempts to contact the operators of the website.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has produced evidence of trade mark registrations and applications in the United States and in the European Union for the Trade Mark. Save for the necessary substitution of the word "and" for the ampersand, the disputed domain name wholly contains the Trade Mark with the addition of the word "dress", a commodity in which the Complainant trades. It is well recognized in prior decisions under the Policy that the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) to the complainant's trade mark does not normally serve to distinguish the disputed domain name from the asserted trade mark for the purposes of the Policy (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, 3rd Edition ("WIPO Overview 3.0"), section 1.8).
In the Panel's view, in this case at least, the addition of the word "dress" tends to accentuate the confusing similarity.
The Panel therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
The Complainant asserts that it has not licensed or otherwise authorized the Respondent to use the Trade Mark. Searches conducted by the Complainant show no evidence that the Respondent owns any registrations incorporating the Trade Mark nor is there any evidence, or likelihood, that the Respondent is commonly known by the Trade Mark or the disputed domain name. The use which is being made of the disputed domain name by the Respondent is plainly a commercial use and, for the reasons set out more fully in section C below, the use which is being made of the disputed domain name by the Respondent is apparently in bad faith and cannot constitute use of the disputed domain name in the bona fide offering of goods or services.
The Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent had the opportunity to rebut that prima facie case but has failed to do so. The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name and that the requirement of paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
The Respondent is located in the United States and the Complainant has shown evidence that well before the creation of the disputed domain name, it had registered and used the Trade mark in the United States. Whilst the Trade Mark comprises a combination of the two potentially attractive descriptive words "needle" and "thread", the addition in the disputed domain name of the word "dress" is, in the opinion of the Panel, a strong indicator that the Respondent knew of the Complainant and its Trade Mark and registered the disputed domain name with the Complainant in mind and with the intention of attempting to profit from the Complainant's reputation.
The Complainant has exhibited screenshots taken from the Respondent's website which show images which it says are identical to images taken from the Asos website showing the Complainant's goods, without the permission of either the Complainant or of Asos. Screenshots of the Respondent's website exhibited to the Complaint prominently feature the Trade Mark in two places and replicate the look and feel of the Complainant's website. From the screenshots exhibited, consumers would, in the Panel's opinion, be very likely to conclude that the website is the website of the Complainant. In this regard, the Complainant has provided evidence with the Complaint showing how an unidentified third party considered this website to be related with the Complainant and its activities.
Pursuant to the power provided to the Panel (see WIPO Overview 3.0, section 4.8), the Panel attempted to access the website at the disputed domain name. That attempt resulted in a warning generated by the firewall stating that:
"There is a problem with this website's security certificate" and
"We recommend that you close this webpage and do not continue to this website".
In view of the above and the evidence in the case file, these are strong indicators that the disputed domain name is being used for the purpose attaching Internet users to the Respondent's website for commercial gain and possibly for illicit purposes.
The Panel concludes that the disputed domain name has been registered and is being used in bad faith and accordingly, the requirements of paragraphs 4(a)(iii) of the Policy are 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, <needleandthreaddress.com>, be transferred to the Complainant.
Desmond J. Ryan AM
Date: July 18, 2017