The Complainant is Stuart Weitzman IP, LLC of New York, New York, United States of America (“United States”), represented by Gioconda Law Group PLLC, United States.
The Respondent is Ye Li of Shanghai, China.
The disputed domain name <stuartweitzman.mobi> (the “Domain Name”) is registered with 1API GmbH (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 10, 2015. On February 10, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 12, 2015, 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” 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 February 13, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 5, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 6, 2015.
The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on March 19, 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.
The Complainant is a designer, manufacturer and retailer of women’s footwear and handbags. It sells high quality goods to consumers through its chain of retail stores, partnerships with department stores and on the website under “www.stuartweitzman.com”.
The Complainant is the owner of three trade marks containing the name STUART WEITZMAN, registered under No. 1,386,002 on March 11, 1986, No. 2,749,908 on August 12, 2003 and No. 3,474,821 on July 28, 2008 respectively for, inter alia, handbags and shoes. These trade marks are hereafter referred to as the Trade Marks.
The Respondent registered the Domain Name on August 26, 2014.
According to the Complainant, the Domain Name is confusingly similar with the Trade Marks as the Trade Marks are fully incorporated into the Domain Name. The Complainant submits that as a result of extensive sales, marketing and advertising in the United States and throughout the world, it has developed a substantial reputation and goodwill in its business, the Trade Marks and the goods and service sold under those marks.
The Complainant states that the Respondent does not have a right or legitimate interest in respect of the Domain Name, since it is not using the Domain Name in connection with any bona fide offering of goods or services because the Domain Name resolves to a parked website, which promotes hyperlinks to, inter alia, goods from competitors of the Complainant. Furthermore, the Complainant states that the Respondent is not commonly known by any name including the name “Stuart Weitzman” and is neither an agent nor a licensee of the Complainant. The Complainant submits that the Respondent has registered the Domain Name with the specific goal to profit from the sale thereof which cannot be considered a legitimate noncommercial or fair use under the Policy. Furthermore, the Complainant states that the use of the Domain Name has and will continue to tarnish the Trade Marks and cause substantial damage to the Complainant and its reputation.
According to the Complainant, the Respondent registered the Domain Name well after the registration of the Trade Marks which strongly suggests an opportunistic registration to trade off of the goodwill inherent to the Trade Marks. Furthermore, the Complainant points out that in its opinion the Respondent is using or preparing to use the Domain Name for commercial gain that will have the effect of confusing consumers and defrauding the public by creating the false impression that the Domain Name is in fact the Complainant’s genuine Internet domain name or, at the very least, is associated with or sponsored by the Complainant. In addition, the Complainant states that the fact that the Respondent has offered the Domain Name for sale to the general public evidences the Respondent’s bad faith under the Policy. Bad faith registration and use is also demonstrated, the Complainant submits, because the Domain Name resolves to a parked website which promotes various hyperlinks to websites of competitors of the Complainant for which the Respondent presumably receives click-through fees.
The Respondent did not reply to the Complainant’s contentions.
The Complainant has shown that it has rights in the Trade Marks. The Trade Marks consist of the name “Stuart Weitzman”. The Domain Name incorporates the Trade Mark STUART WEITZMAN. Therefore, the Panel finds that the Domain Name are identical or, in any case, confusingly similar to the Trade Marks.
The Complainant has to make out a prima facie case that the Respondent does not have rights or legitimate interests in the Domain Name (WIPO Overview of WIPO Panel views on selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1). Based on the evidence and the undisputed submissions of the Complainant, the Panel concludes that the Respondent is not commonly known by the Domain Name and has not acquired trade mark rights to the Domain Name. The Complainant has not authorized, licensed or otherwise consented to the Respondent’s registration and use of the Domain Name.
Furthermore, although use of a domain name for a parking website, containing sponsored links to third party goods and services, is not always in itself sufficient evidence of the absence of a right or legitimate interest, under the circumstances of this case such use of the Domain Name does constitute such evidence (see WIPO Overview 2.0, paragraph 2.6). These circumstances include (1) the inherent distinctiveness of the name “Stuart Weitzman”, which constitutes the Trade Marks and is the main part of the Domain Name, (2) the reputation of the goods sold under the Trade Marks and (3) the improbability of the Respondent accidentally having selected the Domain Name. It follows that the Respondent apparently has chosen the Domain Name in order to take advantage of the reputation of the Trade Marks by attracting customers to its website under the Domain Name who assume that this website is either provided by or has been approved of by the Complainant (see Sanofi v. Hka c/o Dynadot Privacy, WIPO Case No. D2014-0829, <sanofi.buzz>).
The use of the Domain Name for a parking website containing links to web pages with commercial information trading on the goodwill of a trade mark does in this case not constitute a bona fide offering of goods or services, nor does it constitute a legitimate noncommercial or fair use. First, the website under the Domain Name contains links to websites where goods competing with those of the Complainant are offered for sale. In addition, it is likely that the Respondent receives a share of the advertising revenue generated by those links (see Swarovski Aktiengesellschaft v. N/A, delu xei, WIPO Case No. D2013-0708, <swarovskicrystalss.com>, Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912, <villeroy-boch.mobi> and Rolex Watch U.S.A., Inc. v. Vadim Krivitsky, WIPO Case No. D2008-0396, <rolexdealer.com>).
In view of the above, the Panel concludes that the Respondent has no rights or legitimate interests in the Domain Name.
Based on the information and the documents provided by the Complainant, the Panel assumes that at the time of registration of the Domain Name the Respondent was or should have been aware of the Trade Marks.
First, the oldest registration of the Trade Marks on which the Complainant relies predates the Domain Name registration by 28 years. Furthermore, the Domain Name incorporates the name “Stuart Weitzman” which is not a name that a person wishing to register a domain name would accidently think of.
In addition, if the Respondent had not actually been aware of the Complainant or the Trade Marks, a small effort on its part would have revealed those rights. A simple trade mark register search would have informed the Respondent of the existence of the Trade Marks. Likewise, a Google search on the name “Stuart Weitzman”, as carried out by the Panel, would have revealed as the first result the website under “www.stuartweitzman.com” and a great number of links to websites where goods are sold under the Trade Marks.
Under these circumstances, the Panel concludes that the Domain Name has been registered in bad faith.
The use of the Domain Name for a parking website containing sponsored links to websites offering goods competing with those of the Complainant is also under the circumstances of this case evidence of bad faith use of the Domain Name. Even if the Respondent did not itself select those links, it is responsible for the content associated with those links displayed on the website under the Domain Name. By using the Trade Marks (as part of the Domain Name) for a website in fact promoting the goods of competitors of the Complainant where the Respondent presumably commercially benefits through receiving click-through fees, it is likely that the Respondent deliberately registered the Domain Name to profit from the confusion created among the public with the Trade Marks. Furthermore, the Panel cannot conceive of any fair use of the Domain Name which would not infringe the Complainant’s rights in the trade mark STUART WEITZMAN.
Therefore, the Panel concludes that the Domain Name has been registered and is being used 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 domain name <stuartweitzman.mobi> be transferred to the Complainant.
Wolter Wefers Bettink
Sole Panelist
Date: March 30, 2015