WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lernco, Inc. v. Ho Nim

Case No. D2010-1572

1. The Parties

The Complainant is Lernco, Inc. of Wilmington, Delaware, United States of America, represented by Colucci & Umans, United States of America.

The Respondent is Ho Nim of Shanghai, People’s Republic of China.

2. The Domain Name and Registrar

The disputed domain name <newyorkanscompany.com> is registered with Above.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 16, 2010. On September 17, 2010, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the disputed domain name. On September 20, 2010, Above.com, Inc. 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” 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 September 22, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 12, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 13, 2010.

The Center appointed Johan Sjöbeck as the sole panelist in this matter on October 21, 2010. 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 has submitted evidence that it is the owner of the following trademark registrations issued by the United States Patent and Trademark Office (“USPTO”):

NEW YORK & COMPANY with registration No. 2,507,567 and registration date November 13, 2001 for retail clothing store services in International Class 35.

NEW YORK & COMPANY with registration No. 2,629,986 and registration date October 8, 2002 for shoulder bags, handbags, tote bats, duffel bags, gym bags, traveling bags in International Class 18; clothing, namely shirts, pants, jackets, hats, sweaters, skirts and suits in International Class 25; and credit card services in International Class 36.

NEW YORK & COMPANY with registration No. 3,026,644 and registration date December 13, 2005 for sunglasses in International Class 9; jewelry, ornamental pins and watches in International Class 14; coin purses, day planner books, lipstick cases sold empty, makeup bags sold empty, make-up mirror cases sold empty and wallets in International Class 18; non-leather and non-metal key chains and picture frames in International Class 20; belts, flip flops, gloves, hats, hosiery, mufflers, pareos, ponchos, scarves and socks in International Class 25; barrettes, hair bands, hair clips, hair ornaments, hair pins and ponytail holders in International Class 26.

NEW YORK & COMPANY with registration No. 3,446,405 and registration date June 10, 2008 for personal care products, namely, body mist, body scrub, cream for the body, cream for the hands, lotion for the body, shower gel in International Class 3.

NY&C and design with registration No. 3,382,726 and registration date February 12, 2008 for backpacks, cosmetic bags sold empty, cosmetic cases sold empty, duffel bags, fanny packs, gym bags, handbags, purses, toiletry bags sold empty, tote bags, travel bags and wallets in International Class 18; clothing, namely, bathrobes, beach cover-ups, belts, blazers, blouses, body suits, boots, boxer shorts, bras, bustiers, camisoles, caps, coats, dresses, garter belts, girdles, gloves, gowns, halter tops, hats, headbands, jackets, jeans, jogging suits, knit shirts, knit tops, leotards, lingerie, mittens, negligees, night gowns, night shirts, pajamas, panties, pants, pantyhose, sandals, sarongs, scarves, shirts, shoes, shorts, skirts, slacks, slippers, slips, sneakers, socks, stockings, suits, sweat pants, sweat shirts, sweat shorts, sweat suits; sweaters, swimsuits, t-shirts, tank tops, teddies, ties, tights, underpants, undershirts, underwear and vests in International Class 25.

The disputed domain name <newyorkanscompany.com> was registered by the Respondent on October 13, 2009.

5. Parties’ Contentions

A. Complainant

The Complainant is the owner of the trademark NEW YORK & COMPANY and licenses the trademark to New York & Company, Inc., who is the owner and operator of over 500 NEW YORK & COMPANY retail stores throughout the United States. The Complainant runs and operates an e-commerce website using the domain names <nyandcompany.com> and <newyorkandcompany.com>.

The disputed domain name <newyorkanscompany.com> is a misspelling of the Complainant’s trademark NEW YORK & COMPANY and a typographical error of the Complainant’s domain name <newyorkandcompany.com>. The letter “s” replaces the letter “d” of the word “and” in the disputed domain name. As such, the disputed domain name is only one letter (given that the ampersand symbol “&” stands for the word “and” in common English usage) different from the Complainant’s registered trademark and service mark and is therefore confusingly similar.

On the website to which the disputed domain name resolves, the Respondent is providing links to third-party commercial sites and the Respondent is achieving commercial gain through pay-per-click advertising. The Respondent’s use of the disputed domain name is likely to give rise to confusion as to an association or affiliation between the Complainant and the Respondent.

The Complainant contacted the Respondent on February 3, 2010 and February 25, 2010 and demanded that the Respondent transfer the disputed domain name to the Complainant. At the time the Complainant’s letters were sent, the Respondent was also the holder of the domain name <newyorkcompanycard.com> and the cease and desist letters also addressed this second domain name. The Respondent did not reply to any of the Complainant’s letters or e-mails.

The Respondent does not have and has never had any connection with the Complainant, does not deal in the Complainant’s products and is not a licensee of the Complainant. There is no evidence of the Respondent’s use of, or demonstrable preparations to use the disputed domain name in a connection with a bona fide offering of goods and services. The Respondent is not commonly known by the disputed domain name and is not making a legitimate, fair use of the disputed domain name without the intent of commercial gain.

The Respondent registered the disputed domain name which incorporates a misspelling of the Complainant’s well-known trademark with no apparent good faith reason for doing so rather than to trade on the goodwill of the Complainant. The Respondent has created a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.

The Respondent’s failure to reply to the Complainant’s cease and desist letters is evidence of bad faith.

B. Respondent

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 each of the following:

(i) that the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant is, according to the submitted evidence, the owner of four trademark registrations for the mark NEW YORK & COMPANY and one registration for NY&C.

The domain name system does not allow certain characters and signs to be used in domain names due to technical reasons. The “&” (ampersand) is such a sign that cannot be used in a domain name. As a result, it is often excluded from domain names, replaced with a hyphen “-“, or transliterated into the word “and”, as in the case before the Panel. Considering the above, the disputed domain name differs from the Complainant’s trademark only by one letter and the Panel agrees with the Complainant’s contention that the disputed domain name <newyorkanscompany.com> is a misspelling of the Complainant’s trademark NEW YORK & COMPANY.

Having the above in mind, it is the opinion of the Panel that the disputed domain name is confusingly similar to the Complainant’s trademark and that the Complainant has proved the requirements under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests with respect to the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

(a) that it has made 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 prior to the dispute; or

(b) that it is commonly known by the domain name, even if it has not acquired any trademark rights; or

(c) that it intends to make a legitimate, noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

The Complainant’s trademark registrations for NEW YORK & COMPANY predate the registration of the disputed domain name <newyorkanscompany.com>. The Complainant has not licensed or otherwise consented to the Respondent’s use of the trademark NEW YORK & COMPANY in connection with the disputed domain name <newyorkanscompany.com> which is confusingly similar to the Complainant’s registered trademark.

On February 3, 2010 and February 25, 2010 the Complainant contacted the Respondent by post and e-mail using the contact details found in the WhoIs database. The Complainant informed the Respondent about the trademarks and requested that the Respondent should remove the content of the website and to transfer the disputed domain name to the Complainant. The Respondent did not reply.

From the submitted evidence in this case, it is clear that the Respondent’s website, to which the disputed domain name resolves, contain numerous sponsored commercial links to third party websites in the same area of business as the Complainant. The Respondent’s use of the disputed domain name serves the purpose of generating revenue via advertised pay-per-click products and links and it has been held in previous cases that such use does not represent a use in connection with a bona fide offering of goods and services. See for example Sigikid H. Scharrer & Koch GmbH & Co. KG, MyBear Marketing-und Vertriebs GmbH, Mr. Thomas Dufner v. Bestinfo, WIPO Case No. D2004-0990.

The Respondent is not making a legitimate, noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark. The Respondent has not submitted any evidence in this case indicating that the Respondent is the owner of any trademark rights similar to the disputed domain name or that the Respondent is or has been commonly known by the disputed domain name.

By not submitting a Response, the Respondent has failed to invoke any circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in respect of the disputed domain name. Thus, there is no evidence in the case that refutes the Complainant’s submissions, and the Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include without limitation:

(i) circumstances indicating the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the domain name was registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided there is a pattern of such conduct; or

(iii) circumstances indicating that the domain name was registered primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the domain name has intentionally been used in an attempt to attract, for commercial gain, Internet users to a website or other on-line location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on a website or location.

It is clear that the Complainant’s registered trademark NEW YORK & COMPANY predates the registration of the disputed domain name <newyorkanscompany.com> and the evidence in this case indicates that the Respondent knew or must have known about the Complainant’s trademark when registering the disputed domain name, which is confusingly similar to the Complainant’s trademark.

In addition to the above, the Complainant has submitted evidence showing that the website to which the disputed domain name resolves contains numerous advertising links to commercial third-party websites promoting and/or offering third party products and services. Such exploitation of the reputation of trademarks to obtain click-through commissions from the diversion of Internet users is an indication of use in bad faith as demonstrated in prior UDRP decisions. See e.g., L´Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623 and F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451.

There is no evidence in the case that refutes the Complainant’s submissions.

Having the above in mind, the evidence in the case before the Panel indicates that the disputed domain name has intentionally been used in an attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website.

The Panel concludes that the Complainant has proved the requirements under paragraph 4(b) of the Policy and that the disputed domain name <newyorkanscompany.com> has been registered and used in bad faith.

7. Decision

For all 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 <newyorkanscompany.com> be transferred to the Complainant.

Johan Sjöbeck
Sole Panelist
Dated: November 4, 2010