Complainant is Gilt Groupe, Inc. of New York, New York, United States of America, internally represented by its Associate General Counsel..
Respondent is Romain David of Palo Alto, California, United States of America.
The disputed domain name <giltwoman.com> (the “Disputed Domain Name”) is registered with GoDaddy.com, LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 2, 2012. On February 3, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the Disputed Domain Name. On February 3, 2012, GoDaddy.com, LLC transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on February 6, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 26, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 27, 2012.
The Center appointed Lynda M. Braun as the sole panelist in this matter on March 5, 2012. 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.
Complainant is an online, members-only retailer of high end goods, distributed in the United States and abroad. Complainant has created a unique brand which members have come to associate with luxury and value. Complainant launched its website in September 2007 with women’s goods and has since expanded to men’s, children’s, home, gourmet foods and wines, local offerings and travel sales. The women’s division is one of Complainant’s largest markets.
Complainant discovered that Respondent had registered the Disputed Domain Name and wrote to request that Respondent transfer the Disputed Domain Name to Complainant. Respondent eventually responded by email on January 25, 2012, requesting USD 20,000.00 for the transfer. Complainant then commenced this proceeding.
Complainant owns the following trademark registrations:
- United States registration no. 4,073,370 for GILT for “on-line retail store services featuring luxury and fashion clothing, apparel, footwear, clothing accessories, cosmetics, home goods, electronics, and related goods sold at discount prices” in class 35, having a first use date of November 13, 2007, and a registration date of December 20, 2011;
- United States registration no. 3,920,768 for GILT MAN for “on-line retail store services featuring luxury and fashion clothing, apparel, shoes, belts, clothing accessories, pens, lighters, desk sets, tie clips, cuff links, skin care products, jewelry, sports equipment, wine, liquor and art sold at discount prices” in class 35, having a first use date of October 19, 2009, and a registration date of February 15, 2011;
- United States registration no. 3,998, 817 for GILT MAN and Design for “on-line retail store services featuring luxury and fashion clothing, apparel, shoes, belts, clothing accessories, pens, lighters, desk sets, tie clips, cuff links, skin care products, jewelry, sports equipment, wine, liquor and art sold at discount prices” in class 35, having a first use date of October 18, 2009, and a registration date of July 19, 2011;
- United States registration no. 4,073,413 for GILT NOIR for “on-line retail store services featuring luxury and fashion clothing, apparel, footwear, clothing accessories, cosmetics, home goods, electronics, and related goods sold at discount prices” in class 35, having a first use date of November 30, 2009, and a registration date of December 20, 2011;
- United States registration no. 3,967,967 for GILT MANUAL for “on-line retail store services, featuring luxury and fashion clothing, apparel, shoes, belts, clothing accessories, pens, lighters, desk sets, tie clips, cuff links, skin care products, jewelry, sports equipment, wine, liquor and art sold at discount prices” in class 35, having a first use date of September 9, 2010, and a registration date of May 24, 2011; and
- United States registration no.4,076,359 for “on-line retail store services featuring food and beverages” in class 35, having a first use date of May 18, 2011, and a registration date of December 27, 2011.
Complainant owns the following domain names:
<gilt.com>; <giltman.com>; <gilttaste.com>; and <giltcity.com>.
The Disputed Domain Name was created on October 31, 2009.
Complainant’s contentions:
Complainant is an online, members-only retailer of high end goods and has created a unique brand which members have come to associate with luxury and value. Complainant launched its website in September 2007 with women’s goods and has since expanded its offerings to other markets. The women’s division remains one of Complainant’s largest markets.
Complainant owns various trademarks incorporating the word “gilt”. Since September 2007, Complainant has extensively promoted its retail services under its trademarks and as a result of successful sales and widespread advertising, its trademarks and brand have become extremely well known.
The Disputed Domain Name is confusingly similar to Complainant’s trademarks. Respondent has no rights or legitimate interests in the Disputed Domain Name. Respondent has demonstrated bad faith registration and use of the Disputed Domain Name.
Respondent did not reply to Complainant’s contentions.
Pursuant to the Policy, paragraph 4(a), a complainant must prove each of the following to justify the transfer of a domain name:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) that respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that respondent has registered and is using the domain name in bad faith.
These elements are discussed as follows:
The Panel finds that the Disputed Domain Name which incorporates Complainant’s trademark in its entirety, is confusingly similar to that trademark. Complainant has valid and well established rights in its GILT trademarks. The word “woman” in the Disputed Domain Name is descriptive and indicates that the website offers products for sale for women. The addition of the word “woman” does not remove the similarity but increases the risk of confusion for consumers. Consumers would likely believe that any website to which the Disputed Domain Name would resolve sells Complainant’s well known product line of goods.1
Indeed, it is well established that the addition of descriptive or generic words to a trademark does nothing to change an otherwise identical or confusingly similar domain name. See Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191 (the panel found confusing similarity where “shop” and a hyphen were added to the trademark of the complainant in the disputed domain name). See also PRL USA Holdings, Inc. v. Unasi Management Inc., WIPO Case No. D2005-1027 (descriptive or generic additions do not avoid confusing similarity of domain names and trademarks); International Organization for Standardization ISO v. Quality Practitioners Institute and Website Pros, Inc. and Quality, WIPO Case No. D2005-1028 (the addition of generic words to a mark to form a domain name is insufficient to dispel confusing similarity).
Accordingly, the first element of the Policy has been met by Complainant.
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a) (ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.1.
In this case, Complainant has made out a prima facie case. Respondent has not submitted any arguments or evidence to rebut Complainant’s prima facie case. Respondent’s lack of reply notwithstanding, there is no evidence in the record that Respondent is in any way associated with Complainant, that Respondent is now or was ever known by the Disputed Domain Name, or that Respondent has any authority, license or permission to use the Complainant’s trademark.
Furthermore, Complainant has not authorized, licensed or otherwise permitted Respondent to use its trademarks. The name of Respondent has no connection to the Disputed Domain Name that would suggest that it is related to a trademark or trade name in which Respondent has rights. Respondent is not making a legitimate non commercial or fair use of the Disputed Domain Name.
Accordingly, the second element of the Policy has been met by Complainant.
The Policy identifies the following circumstances that, if found, are evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that Respondent has registered or has acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the Disputed Domain Names; or
(ii) Respondent has registered the Disputed 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 Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Disputed Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product on Respondent’s website or location.
Policy, paragraph 4(b).
The Panel finds that based on the record, and for the reasons set forth below, Complainant has demonstrated the existence of Respondent's bad faith pursuant to paragraph 4(b) of the Policy.
First, under the Policy, an offer to sell a domain name for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name is not only evidence of, but conclusively establishes that the domain name has been registered and is being used in bad faith. Policy, paragraph 4(b) (i). The only exception to this is where respondent can show that it has rights to or legitimate interests in the domain name. Avnet, Inc. v. Aviation Network, Inc., WIPO Case No. D2000-0046. Here, the registrar for the Disputed Domain Name is Go Daddy LLC, according to WhoIs records. Go Daddy’s website details the per-year pricing for domain name registration. For a “.com” domain, for example, such is at issue here, the annual registration costs are USD 11.99. Respondent offered to sell the Disputed Domain Name for USD 20,000.00 in an email to Complainant. The offer to sell the Disputed Domain Name for USD 20,000 was not documented, nor was it reasonable in this Panel’s opinion. In addition, the offer was not made by Respondent during settlement discussions. It is virtually impossible that Respondent’s out-of-pocket costs directly related to the Disputed Domain Name could have been USD 20,000.00. The Panel, therefore, concludes that the offer made by Respondent was made in bad faith.
Second, based on the circumstances here, it seems that by imitating Complainant’s website, Respondent registered the Disputed Domain Name to disrupt Complainant’s business and also attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s trademark.
Third, Respondent’s registration of the Disputed Domain Name after Complainant began to use and widely promote its distinctive trademark is evidence that the Disputed Domain Name was registered in bad faith.2 See Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137 (finding bad faith where respondent registered the domain name after complainant established rights and publicity in complainant’s trademarks).
Finally, Respondent's bad faith can also be inferred from its lack of reply to the cease and desist letter sent by Complainant prior to commencing this proceeding. See Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications, WIPO Case No. D2001-0210.
Accordingly, the third element of the Policy has been met by Complainant.
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, <giltwoman.com> be transferred to Complainant.
Lynda M. Braun
Sole Panelist
Dated: March 9, 2012
1 The Disputed Domain Name does not currently resolve to an active website. However, Complainant researched the Disputed Domain Name through the “www.archive.org” website and submitted evidence indicating that Respondent previously had created a website that was a virtual imitation of Complainant’s website.
2 Whereas the Disputed Domain Name was created in 2009, the first use date of Complainant’s gilt trademark was in 2007.