WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Stuart Weitzman IP, LLC v. Zhao Ke
Case No. DME2015-0003
1. The Parties
The Complainant is Stuart Weitzman IP, LLC of New York, New York, United States of America (“USA”), represented by The Gioconda Law Group PLLC, USA.
The Respondent is Zhao Ke of Shanghai, China.
2. The Domain Name and Registrar
The disputed domain name <stuartweitzman.me> is registered with Dynadot, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2015. On April 16, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response confirming that the 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”) as adopted by doMEn, d.o.o. (doMEn), the registry operator of the .ME TLD on April 30, 2008, the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) approved by doMEn on October 1, 2012, and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 5, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 25, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 26, 2015.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on June 5, 2015. 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 factual background is taken from the Complaint.
The Complainant is the holder of the STUART WEITZMAN trademarks. The brand “Stuart Weitzman” is well known for the design, manufacture and sale of women’s high quality footwear and handbags, which are retailed through its chain of retail stores, partnerships with department stores, and online at the website “www.stuartweitzman.com”. The Complainant’s shops and products are extensively advertised internationally and have received editorial coverage in fashion magazines including Vogue, Harper’s Bazaar and Elle.
The Complainant owns the following registered trademarks:
STUART WEITZMAN, United States Patent and Trademark Office (USPTO) principal register, registered March 11, 1986 in the name of Stuart Weitzman United States citizen, registration number 1386002, classes 18, 25;
STUART WEITZMAN, USPTO principal register, registered August 12, 2003 in the name of Stuart Weitzman United States individual, registration number 2749908, class 35;
STUART WEITZMAN in logo format, USPTO principal register, registered July 29, 2008 in the name of the Complainant, registration number 3474821, classes 18, 25, 35.
Nothing is known about the Respondent except for the contact details provided to the Registrar for the purpose of registration of the disputed domain name and that he was the Respondent in a proceeding brought by the same Complainant under the UDRP in 2014.
The disputed domain name was registered August 25, 2015.
5. Parties’ Contentions
The Complainant contends that it is the owner of the trademarks listed in section 4 above and has produced in evidence summary copies of registration documents stated to be true and correct.
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark or service mark in which it has rights. It is submitted that the absence of a space between the two words of the Complainant’s trademark as incorporated into the disputed domain name, and the presence of the country code Top-Level Domain (ccTLD) designation “.me”, are of no consequence and that the disputed domain name is at least confusingly similar to the Complainant’s trademark.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant says that it has invested time, effort and money in promotion in the USA and throughout the world, has a substantial reputation and goodwill in its business, and has no affiliation with the Respondent.
Furthermore, the Complainant contends that the Respondent cannot avail himself of any of the provisions of paragraph 4(c) of the Policy. In particular the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services because it resolves to a parked website that offers links to competitors of the Complainant and to suppliers of competing goods. The parking website also carries a banner indicating that the disputed domain name is for sale and provides a link to the website of the Sedo.com LLC domain name marketplace. It is submitted that this offering for sale by the Respondent indicates a lack of rights or legitimate interests in the disputed domain name.
The Complainant contends that the Respondent is not commonly known by any name substantially equivalent to the disputed domain name and that the disputed domain name is not in noncommercial or fair use under the Policy.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith.
The Complainant says that the Respondent had at least constructive knowledge of the Complainant’s trademark rights and has set out to trade on the Complainant’s goodwill. The Respondent has attempted to use the disputed domain name in order to create a confusing impression that it belongs to or is endorsed by the Complainant. The Respondent has done so partly in order to divert Internet visitors to pay-per-click links to, for instance, “Wedges Shoes”, “Black Booties Shoes” and “Patent Black Pumps”, and to the Complainant’s competitors such as Gucci. The pay-per-click links are potentially of commercial value to the Respondent, directly or indirectly, through the generation of referral revenue from website sponsors to which they lead. It is submitted that the Respondent carries the responsibility for content placed on his website by a domain name parking company.
The Complainant contends that the disputed domain name is offered for sale through the parking page to which it resolves. A link is provided to the website of the Sedo.com LLC domain name marketplace, which resolves to a page on which offers are invited for specifically the disputed domain name. The Complainant sent a cease, desist and transfer letter to the Respondent by email on April 13, 2015. A reply dated April 14, 2015 from the Respondent stated an asking price of USD 3,000 for the disputed domain name, which, it is submitted, is in excess of registration costs and demonstrates registration and use in bad faith by the Respondent.
The Complainant has cited a number of previous decisions under the UDRP that it considers should support its position.
The Complainant requests the transfer of the disputed domain name.
The Respondent has not replied to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable provider, in compliance with the Rules, that:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith”.
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
The Complainant has stated that to the best of its knowledge, the language of the Registration Agreement for the disputed domain name is English.
A. Identical or Confusingly Similar
The Panel is satisfied by the uncontested evidence produced by the Complainant that it has rights for the purposes of the Policy in the registered trademark STUART WEITZMAN.
The disputed domain name is <stuartweitzman.me>. The ccTLD designation, in this case “.me”, can generally be disregarded in the determination of confusing similarity unless for example it forms part of a trademark. What remains is “stuartweitzman” which, since spaces cannot form a part of a “.me” domain name and there is no distinction between upper and lower case, is as close to the registered trademark STUART WEITZMAN as may be constructed. The Panel finds the disputed domain name to be confusingly similar and effectively identical to the Complainant’s trademark in the terms of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant’s evidence is to the effect that it has acquired considerable rights in the USA and internationally in the registered trademark STUART WEITZMAN since at least as early as 1986 and that it has no affiliation with the Respondent.
Paragraph 4(c) of the Policy provides for the Respondent to rebut the Complainant’s prima facie case and to establish rights or legitimate interests in a disputed domain name by demonstrating:
“(i) before any notice to you 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 (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 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 above circumstances are illustrative and rights or legitimate interests may be established by the Respondent alternatively to the satisfaction to the Panel.
The Respondent has made no formal reply to the Complaint. The evidence annexed to the Complaint in the form of screen captures showed, in the circumstance of the time and the user who captured them, that the disputed domain name resolved to a website homepage comprising a box marked “Related Links” that displayed 10 link headings, 7 of which included the words “Stuart Weitzman” or “Weitzman” whereas the other 3 referred to footwear. Another page offered 5 link headings pertaining to fashion and design, 3 of them referencing the Complainant’s competitor Gucci. It may reasonably be concluded that one of the functions of the Respondent’s website at the disputed domain name has been to direct Internet visitors to commercial suppliers of goods in competition with the Complainant’s business, and to do so mainly on the basis of the Complainant’s STUART WEITZMAN trademark. Since the Respondent has no authority to use the Complainant’s trademark, the Respondent’s business cannot qualify as a bona fide offering of goods or services in the terms of paragraph 4(c)(i) of the Policy.
The Respondent has not provided any evidence of having been commonly known by a name similar to the disputed domain name (paragraph 4(c)(ii) of the Policy), and the disputed domain name is found not to be in noncommercial or fair use (paragraph 4(c)(iii) of the Policy).
Accordingly, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name and finds for the Complainant in the terms of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant is required to prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered in bad faith and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(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 web site or other on-line 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 provisions of paragraph 4(b) of the Policy are without limitation.
The homepage to which the disputed domain name resolves, in addition to displaying 10 link headings, displays a box stating: “BUY THIS DOMAIN The domain stuartweitzman.me may be for sale by its owner!” This box links to the website of Sedo.com LLC, an online business that brokers the sale and purchase of domain names. The linked Sedo.com LLC website page displays also the logo of DomainTools, and is individualised to read, among other things: “stuartweitzman.me This premium domain is for sale in partnership with Sedo!” The Sedo.com LLC website further confirms: “This domain name (STUARTWEITZMAN.ME) without content is available for sale by its owner through Sedo’s Domain Marketplace”. Potential purchasers are invited to make an offer and various modes of payment are indicated including credit cards.
Furthermore, on April 14, 2015, in reply to the Complainant’s cease and desist email of the previous day, the Respondent sent a reply that, above the copy of the Complainant original letter, stated in its entirety and in this form: “3000 us$”.
The Panel finds on the evidence and on the balance of probabilities that eventual sale of the disputed domain name for profit to the Complainant, or a competitor of the Complainant, was the Respondent’s primary purpose in its registration, constituting registration in bad faith under paragraph 4(b)(i) of the Policy. The Panel further finds that the disputed domain name, by being placed on sale with a notice to that effect on its website and a link to the website of Sedo.com LLC, has been used for the same purpose of being offered for sale, constituting use in bad faith.
Trading in domain names for profit, in and of itself, can be a legitimate business. Commonly, domain names held in stock may be made to earn money in the meantime by leading to a token website on which visitors see links to advertisers, who pay a fee for referrals, known as pay-per-click. The provision of pay-per-click links may be entirely legitimate and may be arranged by the website hosting company. Such activity cannot be legitimate under the Policy if another’s trademark, incorporated in the domain name without authority or valid reason, is the means by which Internet users may be attracted initially to the domain name and the website to which it resolves.
The disputed domain name features exclusively the Complainant’s trademark. On the evidence and on the balance of probabilities, the Respondent is found by the Panel to have used the disputed domain name intentionally to attract visitors for commercial gain by confusion with the Complainant’s trademark in the terms of paragraph 4(b)(iv) of the Policy, and to have made the registration with that intention, constituting registration and use in bad faith.
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 <stuartweitzman.me> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Date: June 9, 2015