WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
River Light V, L.P., Tory Burch LLC v. Kung Chen Chang, PRIVATE
Case No. D2018-0046
1. The Parties
The Complainants are River Light V, L.P. and Tory Burch LLC of New York, New York, United States of America (“USA”), represented by Dorf & Nelson LLP, USA.
The Respondent is Kung Chen Chang of Taipei, Taiwan Province of China.
2. The Domain Name and Registrar
The disputed domain name <torybruch.com> (the “Domain Name”) is registered with Gal Communications (CommuniGal) Ltd. d/b/a Galcomm (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 9, 2018. The Center transmitted its request for registrar verification to the Registrar on January 10, 2018. Following several reminders from the Center, the Registrar replied on January 23, 2018, confirming that it had received a copy of the Complaint, that the Domain Name is registered with it, that the Respondent is the current registrant, that the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applies, that the Domain Name would expire on June 14, 2018 and would remained under Lock status during this proceeding, and that the language of the registration agreement is English. The Registrar also provided the full contact details held on its WhoIs database in respect of the Domain Name.
The Center verified that the Complaint satisfied the formal requirements of the 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 paragraphs 2 and 4 of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 25, 2018. In accordance with paragraph 5 of the Rules, the due date for Response was February 14, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 17, 2018.
The Center appointed Jonathan Turner as the sole panelist in this matter on March 8, 2018. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. The Panel finds that the Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the UDRP, the Rules and the Supplemental Rules.
4. Factual Background
The Complainants conduct a substantial fashion business under the mark TORY BURCH. The business started as a boutique in Manhattan in 2004 and now has more than 190 stores and 3,000 employees worldwide. Its fashion line is also sold in over 3,000 department and specialty stores around the world. It has operated a website at <toryburch.com> since 2004, which displays an online magazine called “Tory Daily”, and also has a mobile app by the same name. In 2016 the business had sales in excess of USD1 billion.
The Tory Burch brand was endorsed by Oprah Winfrey on her talk show in 2005 and has since appeared in other television shows. It has received more than 1.9 million likes on Facebook. Ms. Tory Burch has more than 1.5 million followers on Instagram and nearly 400,000 followers on Twitter.
The first Complainant has registered TORY BURCH as a trademark in the USA (for example, with registration no. 3,428,373 on May 13, 2008 claiming first use on January 15, 2006 in respect of various items of apparel) and in Taiwan Province of China (for example, with registration no. 01232046 on October 1, 2006 by application filed on November 25, 2005 in respect of perfumes, jewelry and some accessories as well as various items of apparel).
The Domain Name directs the user to a website for Michael Kors, a competitor of the Complainants. Counsel for Michael Kors has confirmed that it has no affiliation with the Respondent and was not aware of this use of the Domain Name.
5. Parties’ Contentions
The Complainants contend that they have rights in the mark TORY BURCH by virtue of use and registrations. The Complainants submit that the Domain Name is confusingly similar to their TORY BURCH mark in that it is an example of typosquatting.
The Complainants maintain that the Respondent has no rights or legitimate interests in respect of the Domain Name. They observe that it is difficult to avoid an inference of illegitimacy in a typosquatting case. They add that there is no evidence of the Respondent’s use or preparations to use the Domain Name for a bona fide offering of goods or services, or that the Respondent is commonly known by the Domain Name, or that he has any legitimate noncommercial or fair use of the Domain Name.
The Complainants allege that the Domain Name was registered and is being used in bad faith. They point out that typosquatting is itself evidence of bad faith. They also draw attention to the Respondent’s registration of a number of other typosquatting domain names.
The Complainants seek a decision that the Domain Name be transferred to the First Complainant, River Light V, L.P.
As stated above, the Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainants must prove: (i) that the Domain Name is identical or confusingly similar to a mark in which they have rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith. It is convenient to consider each of these requirements in turn.
In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences as it considers appropriate from the Respondent’s default in failing to file a substantive response. This includes the acceptance of plausible evidence of the Complainants which has not been disputed.
A. Identical or Confusingly Similar
The Panel finds that the Complainants have rights in the mark TORY BURCH by virtue of registrations and extensive use. The Panel further finds that the Domain Name is confusingly similar to this mark from which it differs only in the reversal of two letters and the addition of the generic Top-Level Domain (“gTLD”) suffix. As the Complainants observe, it is an example of typosquatting. The Panel is satisfied that Internet users are liable to be confused through mistyping and/or misreading. The first requirement of the UDRP is satisfied.
B. Rights or Legitimate Interests
The Panel finds on the evidence that the Respondent has not used or made preparations to use the Domain Name for any bona fide offering of goods or services, that he is not commonly known by the Domain Name, and that he is not making any legitimate noncommercial or fair use of it. On the contrary, the Respondent is using the Domain Name misleadingly to divert Internet users to a website of a competitor of the Complainants.
There is no other basis on which the Respondent could claim any right or legitimate interest in respect of the Domain Name in the circumstances of this case. As other Panels have observed, it is inherently improbable that the registrant of a typosquatting domain name has any right or legitimate interest in it. In this case, the Panel is satisfied that the Respondent has no rights or legitimate interests in respect of the Domain Name. The second requirement of the UDRP is satisfied.
C. Registered and Used in Bad Faith
The Domain Name is being used to divert Internet users seeking the Complainants’ website to the website of one of their competitors, thereby disrupting their business. The Panel finds that the Domain Name was registered primarily for this purpose, probably with the ulterior aim of sale to the Complainants for a profit.
In accordance with paragraph 4(b)(iii) of the UDRP, this finding is evidence of registration and use of the Domain Name in bad faith. There is no evidence displacing this presumption and it is supported by evidence of the Respondent’s registration of a number of other domain names typosquatting on well-known brands.
The Panel concludes that the Domain Name was registered and is being used in bad faith. All three requirements of the UDRP are satisfied and it is appropriate to direct that the Domain Name be transferred to the First Complainant.
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 <torybruch.com> be transferred to the First Complainant, River Light V, L.P.
Date: March 22, 2018