WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Shoshanna Lonstein v. Florence Bartels
Case No. D2017-1643
1. The Parties
The Complainant is Shoshanna Lonstein of New York, United States of America, represented by Pryor Cashman, LLP, United States of America.
The Respondent is Florence Bartels, of Buffalo Grove, Illinois, United States of America.
2. The Domain Name and Registrar
The disputed domain name <shoshannaswimwear.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 August 23, 2017. On August 24, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 25, 2017, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on August 28, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 17, 2017. Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 27, 2017.
The Center appointed Mark Partridge as the sole panelist in this matter on September 29, 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
Complainant designs and markets women's clothing under the trademark SHOSHANNA. Complainant owns trademark registrations for her mark, including U.S. Trademark Registration No. 3,939,088, filed December 28, 2005, registered March 29, 2011, for SHOSHANNA in connection with various clothing products including "swimwear."
The Disputed Domain Name was registered on May 8, 2017. The domain name is used for a website that purports to sell SHOSHANNA swimwear. The street address in the domain name registration does not exist.
5. Parties' Contentions
Complainant contends that she has prior rights in the mark SHOSHANNA and that the Disputed Domain Name is confusingly similar. Complainant further contends that Respondent has no rights or legitimate interest in the Disputed Domain Name. Respondent is not authorized to sell Complainant's products, and may be selling counterfeit products. Finally, Complainant contends that the Disputed Domain Name is used in bad faith.
Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant owns prior trademark rights in SHOSHANNA, including a U.S. Trademark Registration of SHOSHANNA for various clothing products, including swimwear. The Disputed Domain Name includes Complainant's mark in full, combined with an apt product description for one of the items covered by Complainant's trademark registration. The addition of an apt descriptive term to another trademark is insufficient to avoid confusion, and may instead increase the likelihood of confusion. The Panel therefore finds that the Disputed Domain Name is confusingly similar to a mark owned by Complainant.
B. Rights or Legitimate Interests
Complainant has demonstrated through a sworn declaration that Respondent is not authorized by Complainant to use the Dispute Domain Name or sell SHOSHANNA clothing. Complainant suggests that the clothing sold on the website may be counterfeit. The website itself contains no business address or other information to suggest that it is a legitimate business. Respondent has not rebutted these facts. Therefore, the Panel finds that the Respondent lacks rights or legitimate interests in the Disputed Domain Name.
C. Registered and Used in Bad Faith
Complainant has established prior rights in the SHOSHANNA mark for swimwear. Respondent was on notice of those rights as a matter of law due to Complainant's U.S. Trademark Registration. The Disputed Domain Name is used for a site that appears to be selling SHOSHANNA swimwear from Complainant, yet Complainant has established that Respondent's use is not authorized. The facts establish a deliberate effort by Respondent to cause confusion with Complainant for commercial gain. Under the circumstances, the Panel finds no plausible good faith reason for Respondent's conduct and concludes that the Disputed Domain Name was registered and used 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 Name, <shoshannaswimwear.com> should be transferred to the Complainant.
Date: October 22, 2017