WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Maggie Sottero Designs, LLC v. JH Kang
Case No. DCO2021-0084
1. The Parties
The Complainant is Maggie Sottero Designs, LLC, United States of America (the “United States”), represented by Sparke Helmore Lawyers, Australia.
The Respondent is JH Kang, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <maggiesottero.co> 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 October 12, 2021. On October 12, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 13, 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 October 22, 2021 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 October 24, 2021.
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 November 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 9, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 16, 2021.
The Center appointed Peter Burgstaller as the sole panelist in this matter on January 10, 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
The disputed domain name was registered on November 28, 2020.
The Complainant’s registered business name is MAGGIE SOTTERO DESIGNS, LLC, registered with the Utah Department of Commerce on January 9, 1997 (Annex 5 to the Complaint).
The Complainant owns and has rights in the trademark MAGGIE SOTTERO (Annex 6 and 7 to the Complaint) in many jurisdictions around the world, e.g.:
- United States Registration No. 2415876, registered December 26, 2000;
- European Union Registration No. 4979506, filed March 27, 2006;
- United Kingdom Registration No. 2281954, registered March 15, 2002;
- International Registration No. 942290, designated for various countries around the world from October 17, 2007 onwards.
The Complainant is the owner of numerous domain names, all of them containing the mark MAGGIE SOTTERO, inter alia <maggiesottero.com>, <maggiesottero.ca>, <maggiesottero.kr> and <maggiesottero.co.uk> (Annex 8 to the Complaint).
The disputed domain name resolves to a website containing links for wedding and bridal dresses (Annexes 4 and 9 to the Complaint).
5. Parties’ Contentions
The Complainant was established on January 9, 1997; its company name is MAGGIE SOTTERO DESIGNS, LLC, a corporation duly incorporated in the United States of America.
The Complainant is a well-known designer, manufacturer and wholesaler of bridal gowns world-wide, each of which is sold pursuant to its famous MAGGIE SOTTERO brand.
The MAGGIE SOTTERO brand is the essential element of the registered business and company names around the worldwide, e.g.:
- Utah, United States: MAGGIE SOTTERO DESIGNS, LLC, Registration/Company No. 2032303-0160, registered since January 9, 1997;
- Australia: MAGGIE SOTTERO, Business Name, Registration/Company No. ABN 81 003 140 823, registered since July 1, 1998;
- United Kingdom: MAGGIE SOTTERO BRIDAL (UK) Ltd, Company No. 03782348, registered since June 3, 1999;
- Hong Kong, China: MAGGIE SOTTERO DESIGNS (HK) Ltd, Company No. 1823699, registered since November 9, 2012.
The Complainant is moreover the owner of at least 55 registered MAGGIE SOTTERO trademarks around world, filed between January 21, 2000 and December 28, 2017.
Finally, the Complainant owns at least 20 registered domain names, all of them incorporating the MAGGIE SOTTERO mark; in particular, the domain name <maggiesottero.com> address since at least July 2001, the primary and official website of the Complainant.
The disputed domain name incorporates the entirety of the MAGGIE SOTTERO mark; it only omits the space between “maggie” and “sottero”.
Hence, the disputed domain name is identical or at least confusingly similar to the MAGGIE SOTTERO registered trademark and the company name of the Complainant.
At no time has the Complainant authorized the Respondent to use its valuable and distinctive MAGGIE SOTTERO mark or any sign that is identical with or confusingly similar to it. There is also no evidence that the Respondent uses the disputed domain name for a bona fide offering of goods or services, that the Respondent is commonly known by the disputed domain name or is using the disputed domain name for a legitimate noncommercial or fair use.
Therefore, the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The disputed domain name was acquired by the Respondent on or around November 28, 2020; it registered the disputed domain name in bad faith, since the Respondent knew, or should have known about the Complainant’s rights in the MAGGIE SOTTERO mark.
The Respondent also used the disputed domain name since it resolved to a website with links with the text “Maggie Sottero Wedding Dresses” and “Maggie Sottero Wedding Dress” (among others); these links led to pay-per click advertising which are unrelated to the Complainant, and in fact even included direct competitors of the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests with respect to 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
The Complainant submitted evidence, which incontestably and conclusively establishes rights in the trademark MAGGIE SOTTERO.
The disputed domain name is identical to the Complainant’s registered trademark MAGGIE SOTTERO.
It has long been held that TLDs are generally disregarded when evaluating the identity or confusing similarity of a disputed domain name. Moreover, the absence of spaces in a domain name can be ignored for the purposes of the comparison as these are merely technical requirements of the domain name system.
Hence, the disputed domain name is identical with the Complainant’s registered trademark MAGGIE SOTTERO.
The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
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 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 (see section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, “WIPO Overview 3.0”). Here, the Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which has not been rebutted by the Respondent.
Furthermore, the nature of the disputed domain name, comprising the Complainant’s mark in its entirety cannot be considered fair as it falsely suggest an affiliation with the Complainant that does not exist (see section 2.5.1 of the WIPO Overview 3.0).
Noting the above, and in the absence of any Response or allegations from the Respondent, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
As stated in many decisions rendered under the Policy (e.g. Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001) both conditions, registration and use in bad faith, must be demonstrated; consequently, the Complainant must show that:
- the disputed domain name was registered by the Respondent in bad faith, and
- the disputed domain name is being used by the Respondent in bad faith.
(i) The Complainant has rights and is the owner of the distinctive registered trademark MAGGIE SOTTERO, which is registered and used in many jurisdictions, long before the registration of the disputed domain name. Moreover, the Complainant registered and is using various domain names containing the trademark MAGGIE SOTTERO e.g.<maggiesottero.com>, <maggiesottero.kr> and <maggiesottero.co.uk> among others; the Complainant has a strong Internet presence under the domain name <maggiesottero.com>, which resolves to the company’s main website containing information about the Complainant’s business.
Furthermore, noting registrant obligations under UDRP paragraph 2, panels have found that respondents who (deliberately) fail to search and/or screen registrations against available online databases would be responsible for any resulting abusive registrations under the concept of willful blindness; this concept has been applied irrespective of whether the registrant is a professional domainer or not (see section 3.2.3 of the WIPO Overview 3.0).
On the basis of these facts, it is inconceivable for this Panel that the Respondent registered the disputed domain name without knowledge of the Complainant’s rights in MAGGIE SOTTERO, which leads to the necessary inference of bad faith. This finding is supported by the fact that the disputed domain name incorporates the Complainant’s trademark MAGGIE SOTTERO entirely and with regard to the MAGGIE SOTTERO trademark in identical form.
Therefore, the Panel is convinced that the disputed domain name was registered in bad faith by the Respondent.
(ii) The Respondent moreover actively used the disputed domain name because it resolved to a website containing links for wedding and bridal dresses, even from competitors of the Complainant.
However, this Panel also finds bad faith use under the Policy putting emphasis on the following:
- the Complainant’s trademark MAGGIE SOTTERO is distinctive and has a strong Internet presence;
- the Respondent has failed to present any evidence of any good faith use with regard to the disputed domain name;
- the disputed domain name incorporates the Complainant’s trademark in its entirety, and is thus suited to divert or mislead potential web users from the website they are actually trying to visit (the Complainant’s site); and
- there is no conceivable plausible reason for good faith use with regard to the disputed domain name.
Taking all these facts and evidence into consideration this Panel finds that the disputed domain name has been registered and is being used in bad faith under paragraph 4(a)(iii) of the Policy.
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 <maggiesottero.co> be transferred to the Complainant.
Date: January 25, 2022