WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BCBG IP Holdings LP v. Jena Holcomb
Case No. D2018-1662
1. The Parties
Complainant is BCBG IP Holdings LP of New York, New York, United States of America (“United States”), represented by Tucker & Latifi, LLP, United States.
Respondent is Jena Holcomb of Jackson, Wisconsin, United States.
2. The Domain Name and Registrar
The disputed domain name <bcbgmaxazriasaleoutlet.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 23, 2018. On July 24, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 25, 2018, 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 3, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 23, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 24, 2018.
The Center appointed Robert A. Badgley as the sole panelist in this matter on September 4, 2018. 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 holds the intellectual property rights arising from the French couple Max and Lubov Azria, who have been designing and selling fashion items under the marks BCBG (an abbreviation for “bon chic, bon genre”) and BCBG MAX AZRIA since the 1980s. Complainant’s trademarks are registered in 114 countries and pertain to various goods, such as handbags, clothing, and footwear, as well as online retail services. Complainant’s trademark registrations for the marks BC BG and BC BG MAX AZRIA include United States Registration Nos. 2,229,364 and 2,229,365 (respectively), registered March 2, 1999.
Complainant maintains an online presence via a website at <bcbg.com>.
The Domain Name was registered on April 18, 2018. The Domain Name resolves to a website which purports to sell BCBG and BCBG MAX AZRIA clothing and fashion items, which Complainant states are “believed to be counterfeit”.
5. Parties’ Contentions
Complainant asserts that it has established the three elements required under the Policy for a transfer of the Domain Name.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel concludes that Complainant has rights in the marks BCBG and BCBG MAX AZRIA through registration and use. The Panel finds that the Domain Name is confusingly similar to these marks. The Domain Name merely adds the generic term “sale outlet” to the mark, which does little or nothing to reduce consumer confusion between Complainant’s marks and the Domain Name.
Complainant has established Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel concludes that Respondent has no rights or legitimate interests in respect of the Domain Name. Respondent has not come forward to articulate or defend his motives in registering the Domain Name. It is undisputed that Respondent is unaffiliated with Complainant and has not been authorized by Complainant to use the BCBG and BCBG MAX AZRIA marks. Respondent has not refuted the allegation that the goods sold at Respondent’s website are counterfeit. On this record, Respondent’s unauthorized offering of goods purporting to be Complainant’s goods but are probably counterfeits is decidedly not a bona fide offering of goods and services.
Complainant has established Policy paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used the Domain Name in bad faith. It is obvious that Respondent was aware of the BCBG and BCBG MAX AZRIA marks when registering the Domain Name. The first 12 characters of the Second-Level Domain – bcbgmaxazria – match Complainant’s mark to the letter, and the idea of coincidence in this respect is so mathematically remote as to be laughable. Moreover, Respondent is selling fashion items at its website.
The Panel also concludes that the Domain Name has been used in bad faith under paragraph 4(b)(iv) - quoted above - of the Policy. Respondent’s website resembles Complainant’s own site in terms of layout and graphics. Moreover, Respondent has not disputed Complainant’s contention that the goods sold at Respondent’s site are counterfeit BCBG and BCBG MAX AZRIA goods.
Complainant has established Policy paragraph 4(a)(iii).
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 <bcbgmaxazriasaleoutlet.com> be transferred to Complainant.
Robert A. Badgley
Date: September 4, 2018