WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Badgley Mischka, LLC v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Domain Admin, Domain Privacy Guard Sociedad Anonima Ltd
Case No. D2019-0033
1. The Parties
Complainant is Badgley Mischka, LLC of Huntington Beach, California, United States of America (the “United States”), represented by CSC Digital Brand Services AB, Sweden.
Respondent is Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) of Burlington, Massachusetts, United States / Domain Admin, Domain Privacy Guard Sociedad Anonima Ltd of Chitre, Panama.
2. The Domain Name and Registrar
The disputed domain name <bagleymischka.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 January 7, 2019. On January 7, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 8, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on January 9, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on January 14, 2019.
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 January 15, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 4, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 5, 2019.
The Center appointed Haig Oghigian as the sole panelist in this matter on February 20, 2019. 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
According to the Complaint and apparent facts, Badgley Mischka is a well-known international fashion brand, established in 1988 with trademarks in place in the United States in multiple classes since 2005; such as BADGLEY MISCHKA trademark registered on April 12, 2005. It operates in over 45 countries across the globe. It has a strong Internet presence for its products, owning and operating “www.badgleymischka.com” since May 26, 2003.
Respondent registered the disputed domain name <bagleymischka.com> on September 26, 2016. It links to several of Complainant’s sites as well as other fashion-related sites.
5. Parties’ Contentions
Complainant asserts that it is the rightful and legal owner of the trademarks and goodwill associated with the name Badgley Mischka, having created the brand, by merging the last names of its founders, and having invested in its international success. It argues that Respondent registered the disputed domain name <bagleymischka.com> to direct consumers to Respondent’s site through a common miss spelling, causing unfair profits by earning revenue via pay-per-clicks caused by the redirecting of web traffic. It asserts that there is no license, authorization, or permission for Respondent’s confusingly similar use of its name. It claims Respondent registered the disputed domain name in bad faith and is currently offering to sell it.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
From a review of the Complaint, it is clear that Complainant has created and invested in establishing its international brand “Badgley Mischka” over the course of many years. Under section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), this Panel determines that Complainant has established a prima facie case of having trademark rights for purposes of standing.
A. Identical or Confusingly Similar
Respondent’s registration of the disputed domain name <bagleymischka.com> is clearly confusingly similar to Complainant’s name and domain name <badgleymischka.com> as set forth in section 1.9 of the WIPO Overview 3.0. The simple removal of a ‘d’ still leaves a phonetic pronunciation that would be confusingly similar to the BADGLEY MISCHKA trademark for purposes of the Policy.
B. Rights or Legitimate Interests
There appears no evidence that Respondent has any license or other rights from Complainant to use the name, marks and goodwill associated with the “Badgley Mischka” name. In addition, it is beyond the realm of reason to believe that somehow Respondent independently created 13 out of 14 letters of the name, without awareness to the actual brand. The name is unique and internationally renowned. Accordingly, under the precepts of Policy, paragraph 4(a)(ii); Rules, paragraph 3(b)(ix)(2), and Sportswear Company S.P.A. v. Tang Hong, WIPO Case No. D2014-1875, this Panel finds Respondent has no rights or legitimate interest in the disputed domain name.
C. Registered and Used in Bad Faith
As above, it appears impossible that Respondent independently created a confusingly similar domain name without any awareness of Complainant’s trademark. Accordingly, this Panel finds evidence of bad faith registration and use:
- the removal of only one letter while keeping the phonetics of the disputed domain name intact;
- the use of a privacy shield by Respondent in order register the disputed domain name;
- the links to Complainant’s site as well as other fashion sites to increase pay-per-click revenues;
- the efforts to sell the domain name at amounts well above the actual registration or other associated costs;
- the failure of Respondent to file a response to several cease and desist letters as well as the Complaint and Amended Complaint; and
- the Respondent’s pattern of registering other infringing domain names as provided in Annex 12 of the Amended Complaint.
These findings are consistent with the precepts set forth by Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3), Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517, WIPO Overview 3.0, section 3.1.4, Longs Drug Stores California, Inc. v. Shep Dog, WIPO Case No. D2004-1069.
The Panel accordingly finds that the disputed domain name was registered and used in bad faith.
For the foregoing reasons and in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <bagleymischka.com> be transferred to Complainant.
Date: March 6, 2019