WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ABG-Nine West, LLC v. Name Redacted
Case No. D2021-4379
1. The Parties
The Complainant is ABG-Nine West, LLC, United States of America (“United States”), represented by Authentic Brands Group, United States.
The Respondent is Name Redacted.1
2. The Domain Name and Registrar
The disputed domain name <ninewest-malaysia.com> is registered with Dynadot, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 27, 2021. On December 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 28, 2021, 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 the Complainant on January 10, 2022, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 10, 2022.
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 the Respondent of the Complaint, and the proceedings commenced on January 25, 2022. On February 8, 2022, the Center received an email from a third party. In accordance with the Rules, paragraph 5, the due date for Response was February 14, 2022. The Respondent did not submit any response. Pursuant to paragraph 6 of the Rules, on February 15, 2022, the Center notified the Parties that it would proceed with the panel appointment process.
The Center appointed Zoltán Takács as the sole panelist in this matter on February 21, 2022. 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
Established in 1978, the Nine West brand took its name from its founding address at 9 West 57th Street in New York City.
The Complainant is a brand management company that owns more than 50 consumer brands, including Nine West purchased at a court auction in 2018.
Among others, the Complainant’s owns the Malaysian Trademark Registration No. 08016156 for the word mark NINE WEST registered on August 13, 2008, for clothing, footwear, and headgear of International Class 25. The Complainant obtained the trademark through assignment and has been the owner on record since June 24, 2019.
The Complainant owns the domain name <ninewest.com>, which links to its principal website.
The disputed domain name was registered on July 13, 2021, and has been linked to a website offering for sale allegedly counterfeit NINE WEST products.
5. Parties’ Contentions
The Complainant contends that the disputed domain name, which incorporates its NINE WEST trademark is confusingly similar to it.
The Complainant further alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and is unable to rely on any of the circumstances set out in paragraphs 4(c)(i), (ii) or (iii) of the Policy.
The Complainant claims that the Respondent registered the disputed domain name with knowledge of its NINE WEST trademark and has been using it to offer for sale counterfeit NINE WEST goods, which is proof of bad faith registration and use of the disputed domain name.
The Complainant requests that the disputed domain name <ninewest-malaysia.com> be transferred from the Respondent to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
On February 8, 2022, an email was received from a person listed as the registrant of the disputed domain name, but from an email address otherwise unconnected to the proceeding. The third party expressed no awareness of the disputed domain name, thus implying its receipt of the Center’s written communication sent via courier to the physical address disclosed by the Registrar for the registrant of the disputed domain name. Thus, the third party’s email implies that this is likely a case of identity theft involving the unauthorized use of the person’s identity and postal address for the registration disputed domain name.
6. Discussion and Findings
Paragraph 15(a) of the Rules requires that the Panel’s decision be made “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
It has been a consensus view in UDRP decisions that a respondent’s default (i.e., failure to submit a response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
A complainant must evidence each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely that;
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, there are two requirements which the Complainant must establish, first that it has rights in a trademark or service mark, and second that the disputed domain name is identical or confusingly similar to the trademark or service mark.
It has been a consensus view among UDRP panels that if the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights.
The Complainant produced proper evidence of having registered rights in the NINE WEST trademark.
For the purpose of this proceeding, the Panel finds that the Malaysian Trademark Registration No. 08016156 satisfies the requirement of having trademark rights for the purpose of the Policy.
Having determined the presence of the Complainant’s trademark rights, the Panel next assesses whether the disputed domain name <ninewest-malaysia.com> is identical or confusingly similar to the Complainant’s NINE WEST trademark.
According to section 1.7 of the WIPO Overview 3.0, the standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.
According to section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.
According to section 1.11.1 of the WIPO Overview 3.0, the applicable Top-Level Domain (“TLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is generally disregarded under the first element confusingly similar test.
The Complainant’s NINE WEST trademark is clearly recognizable within the disputed domain name. It differs from the Complainant’s trademark only in the addition of the geographical term “Malaysia”, which addition does not prevent a finding of confusing similarity between the Complainant’s trademark and the disputed domain name.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark and that requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, a respondent may demonstrate its rights or legitimate interests in a domain name by showing any of the following circumstances, in particular but without limitation:
(i) its use of, or demonstrable preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;
(ii) it has been commonly known by the domain name;
(iii) it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
In the present case, the Complainant has submitted sufficient and uncontested evidence that it holds well-established rights in the NINE WEST trademark.
The Respondent is not a licensee or distributor of the Complainant. The Respondent is not affiliated with the Complainant in any way. The Complainant has not granted any authorization for the Respondent to make use of its NINE WEST trade mark, in a domain name or otherwise.
According to section 2.1 of the WIPO Overview 3.0, while the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent.
As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with the relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
The Respondent defaulted and failed to respond, and by doing so failed to offer the Panel any type of evidence set forth in paragraph 4(c) of the Policy, or otherwise counter the Complainant’s prima facie case.
The Respondent has been using the disputed domain name to promote a web shop purporting to sell the Complainant’s products, which the Complainant identifies as counterfeit goods. Such use of the disputed domain name is fraudulent, illegal, and can never create any rights or legitimate interests in the disputed domain name (see section 2.13.1 of the WIPO Overview 3.0).
While panels are generally not prepared however to accept merely conclusory or wholly unsupported allegations of illegal activity, including counterfeiting, even when the respondent is in default, the Panel notes that even if the products sold on the website to which the disputed domain name resolved are genuine products from the Complainant, the website still does not qualify as fair use. See sections 2.13.2 and 2.8.1 of the WIPO Overview 3.0. In this instance, the disputed domain name fails under the Oki Data criteria for its failure to include any disclaimer as to its relation to the Complainant, further exacerbating the risk of implied affiliation caused by the identical replication of the trademark in the construction of the disputed domain name. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; section 2.5.1 of the WIPO Overview 3.0.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of factors which, if found by the panel to be present, shall be evidence of registration and use of a domain name in bad faith. This non-exclusive list includes:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
The Complainant presented undisputed evidence that convinces the Panel that the Respondent has registered and is using the disputed domain name in bad faith.
As described above, the Complainant accused the Respondent of using the disputed domain name via its website to offer for sale counterfeit goods under the Complainant NINE WEST trademark. Accordingly, it is evident that the Respondent was aware of the Complainant and purposefully registered the disputed domain name with the intent to target the Complainant.
As regards the claimed counterfeiting, it is the Complainant, the owner of the corresponding trademark, that is in the best situation to competently review and make determination whether the goods at issue are genuine or counterfeit.
Although the Complainant did not submit direct evidence in favor of its allegations, the Panel finds that the following facts and circumstantial evidence are sufficient to support the Complainant’s credible claim of the Respondent’s illegal activity and draw an inference of counterfeiting on the part of the Respondent:
- the Respondent is not affiliated with the Complainant and has never been authorized to make use of the Complainant’s NINE WEST trademark in any way;
- there is no information on the identity of the business behind the website under the disputed domain name and no information whatsoever that could suggest or confirm the business’ authenticity;
- the Complainant directly accused the Respondent of counterfeiting and while it’s reasonable to expect that a legitimate business would evidently argue and defend against such serious allegations, the Respondent decided not to rebut or reject them, which is hardly a conduct of a legitimate reseller selling authentic goods to consumers.
Use of the disputed domain name to promote the sale of counterfeit goods is strong evidence of bad faith under paragraph 4(b)(iv) of the Policy (see Prada S.A. v. Domains For Life, WIPO Case No. D2004-1019).
The Panel’s finding on bad faith is reinforced given the apparent use of a third party’s identity and physical address for purposes of the registration of the disputed domain name. The Panel’s notes a disconnect between the disclosed email for the Respondent, which includes a country-code entirely removed from the physical address disclosed for the Respondent, which was evidently connected instead to the third party. Accordingly, the provision of false contact information has been widely established as an indication of bad faith.
Accordingly, the Panel finds that paragraph 4(a)(iii) of the Policy is 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 <ninewest-malaysia.com> be transferred to the Complainant.
Date: March 7, 2022
1 The Respondent appears to have used the name of a third party when registering the disputed domain name. In light of the potential identity theft, the Panel has redacted the Respondent’s name from this decision. However, the Panel has attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of the Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST‑12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.