WIPO Arbitration and Mediatin Center
ADMINISTRATIVE PANEL DECISION
David Yurman IP LLC v. Huan Wang / WhoIsGuard Protected, WhoIsGuard, Inc.
Case No. D2015-0852
1. The Parties
The Complainant is David Yurman IP LLC of New York, New York, United States of America (“United States”), internally represented.
The Respondent is Huan Wang of Hefei, Anhui, China / WhoIsGuard Protected, WhoIsGuard, Inc. of Nobby Beach, Panama.
2. The Domain Name and Registrar
The disputed domain name <davidyurmangioielli.com> is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 18, 2015. On May 19, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 20, 2015, 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 May 22, 2015 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 amendment to the Complaint on May 27, 2015.
The Center verified that the Complaint together with the amendment to 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 29, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 18, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 19, 2015.
The Center appointed Eva Fiammenghi as the sole panelist in this matter on June 29, 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 Complainant is the owner, inter alia, of the following trademarks registered in the United States:
DAVID YURMAN, registered on October 20, 1992 - registration No. 1725487; Goods: Precious metal jewelry.
DAVID YURMAN, registered on June 12, 2001 - registration No. 2460107; Goods: Retail store services for jewelry, watches, related accessories.
YURMAN, registered on September 30, 2008 - registration No. 3506959; Goods: Fine jewelry, precious stones and watches.
The disputed domain name <davidyurmangioielli.com> was created on July 15, 2014.
5. Parties’ Contentions
The disputed domain name contains the Complainant’s trademarks DAVID YURMAN and YURMAN as the dominant part of the disputed domain name, making it confusingly similar to the Complainant’s trademarks.
The Respondent is not a licensee of the Complainant and there is no evidence to suggest that the Respondent has registered the disputed domain name to advance legitimate interests. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name including its trademarks.
The Respondent’s intent to capitalize on the fame of the DAVID YURMAN mark and acquire commercial gain due to user confusion between the Complainant and the Respondent demonstrate that the Respondent registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name, the Complainant must prove that each of the three following elements are satisfied:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section 6.A);
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name (see below, section 6.B.); and
(iii) The disputed domain name has been registered and is being used in bad faith (see below, section 6.C).
Paragraph 4(a) of the Policy clearly states that the burden of proving that all these elements are present lies with the Complainant.
Pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom, as it considers appropriate.
A. Identical or Confusingly Similar
The Complainant has shown it owns trademark rights in the trademarks DAVID YURMAN and YURMAN.
The Panel considers that the disputed domain name <davidyurmangioielli.com> differs from the DAVID YURMAN trademarks by the addition of the word “gioielli” and that it could be considered as a generic word directly related to the products offered by the Complainant.
It is well established that a domain name that wholly incorporates a trademark generally may be confusingly similar to such trademark for purposes of the Policy despite the addition of generic terms (Guccio Gucci S.p.A. v. Brenda Hawkins. WIPO Case No. D2013-0603).
Furthermore, the Complainant has shown how the addition of the word “gioielli” to the disputed domain name determines an obvious association with the Complainant’s trademarks and does not dispel the likelihood of confusion, but actually strengthens the impression that the disputed domain name is related to the Complainant.
In view of the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has rights for the purposes of the Policy.
The first element of the Policy has, therefore, been met.
B. Rights or Legitimate Interests
According to the Policy, paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has demonstrated that the Respondent is not in any way affiliated with the Complainant, nor has the Complainant authorized or licensed the Respondent to use its trademarks, or to seek registration of any domain name incorporating said trademarks.
In its Complaint, the Complainant has provided evidence that the website associated with the disputed domain name is used to misleadingly divert consumers for commercial gain. In this regard, the Complainant, in fact, has provided evidence that such confusion is supported by at least two events. In one of these cases, the customer made a purchase thinking that the Respondent’s website was owned and/or authorized by the Complainant, only to realize too late that it may have been a scam when the order was never received.
The Panel notes that the website associated with the disputed domain name is being used to sell allegedly counterfeit merchandise, as demonstrated by the Complainant. Moreover, said website does not contain any disclaimers that it is not affiliated with or in any way authorized by the Complainant.
The Panel therefore finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. In accordance with paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), the burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. By not responding to the Complaint, the Respondent has not demonstrated that it has rights or legitimate interests in the disputed domain name. The Complainant contends that there is no relationship with the Respondent that gives rise to any license, permit, or other right to which the Respondent could enjoy such use of any domain name incorporating the Complainant’s DAVID YURMAN trademarks. The Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods.
Likewise, no evidence has been adduced that the Respondent has been commonly known by the disputed domain name; nor, for the reasons mentioned above, is the Respondent making a legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that the Respondent has failed to produce any evidence to rebut the Complainant’s prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Complaint fulfills the second condition of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Panel is satisfied that the Complainant has long standing trademark rights that predate the disputed domain name and that those trademarks have been put in commercial use for several years.
The Panel notes that the disputed domain name is used to divert Internet users to the Respondent’s website which is offering products that are apparently counterfeit.
On the basis of the above, the Panel finds that the Respondent registered and is using the disputed domain name with an intent to attract Internet users, for commercial gain to its website, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of its website or of the products on its website (Policy, paragraph 4(b)(iv)).
Accordingly, pursuant to paragraph 4(b) of the Policy, this Panel finds that disputed domain name was registered and is being used in bad faith by the Respondent.
On this basis the Panel finds that the Complainant has satisfied the third and last element of the Policy, paragraph 4a(iii).
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 <davidyurmangioielli.com> be transferred to the Complainant.
Date: July 13, 2015