Complainant is Kate Spade, LLC of New York, New York, United States of America, represented by Davis Wright Tremaine LLP, United States of America.
Respondent is Fundacion Private Whois of Panama City, Panama.
The disputed domain name <katespadebagsonline.com> (the “Domain Name”) is registered with Internet.bs Corp. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 27, 2012. On November 28, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 3, 2012, the Registrar 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 December 4, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 24, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 27, 2012.
The Center appointed Clive L. Elliott as the sole panelist in this matter on January 18, 2013. 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 Domain Name was registered with the Registrar on April 22, 2012.
Complainant states that it is world famous for the line of clothing and accessories it designs, manufactures and distributes (“Complainant’s Products”) and that it operates an extensive website featuring information about its goods and activities throughout the world at “www.katespade.com”.
Complainant also states that it is the owner of various KATE SPADE registered trademarks (“Complainant’s Marks” or the “KATE SPADE Marks”), including United States Registration No 2,064,708 for KATE SPADE, registered on May 27, 1997, for handbags, all-purpose carrying bags, tote bags, traveling bags, shoulder bags, clutch purses, all-purpose athletic bags, backpacks, wallets, coin purses and cosmetic bags sold empty.
Complainant asserts that due to the extensive use and registration of Complainant’s Marks around the world, Complainant’s Marks have become famous under the laws of the United States and Complainant’s Marks have obtained the status of notorious marks and therefore enjoy liberal protection under the Paris Convention.
Complainant contends that for over fifteen years it has continuously and extensively used Complainant’s Marks in connection with one or more of Complainant’s Products. It also contends that it has spent millions of dollars in advertising and promoting Complainant’s Products, and that these marketing efforts, combined with its attention to the quality, design and construction of its products, have generated hundreds of millions of dollars in sales each year.
Complainant states that Respondent registered the Domain Name on April 22, 2012, over 14 years after the registration of the KATE SPADE Mark. It contends that the KATE SPADE Mark is incorporated entirely into the Domain Name. Complainant submits that the Domain Name combines the KATE SPADE mark with the generic top level domain “.com” and the generic words “bags” and “online”. Additionally, Complainant submits that the word “bags” directly refers to a major category of Complainant’s Products offered in connection with the KATE SPADE Marks, including for sale “online” at “www.katespade.com”.
Complainant contends that Respondent has no rights or legitimate interests in the Domain Name and claims that Respondent is using the Domain Name in connection with a website offering Complainant’s Products, and that the website is designed to appear to be an official site belonging to or authorized by Complainant. Complainant points out that the KATE SPADE Marks appear throughout the Website and submits that they are intended to mislead viewers as to the source of the website.
Complainant suggests that the Domain Name is being used to conduct the sale of counterfeit goods, bearing one or more of the KATE SPADE Marks, which are not genuine.
Complainant contends that Respondent cannot demonstrate any rights or legitimate interests in the Domain Name, and that Respondent registered the Domain Name only after Complainant had established rights in Complainant’s Marks. Complainant asserts that because the KATE SPADE Marks were so well-known that Respondent ought to have had knowledge of Complainant’s KATE SPADE Marks when it registered the Domain Name, and Respondent’s choice in registering the Domain Name is a misappropriation of Complainant’s Marks. More importantly, as contended by Complainant, Respondent is generating revenue by using the trademark value in Complainant’s KATE SPADE Marks in the Domain Name, misleading consumers into believing Respondent’s website and the content therein is affiliated with or endorsed by Complainant.
Complainant states that no relationship exists between Complainant and Respondent that would give rise to any license, permission, or authorization by which Respondent could own or use the Domain Name and states further that Respondent is not commonly known by the Domain Name and is not making a legitimate noncommercial or fair use of the Domain Name. Accordingly, Complainant submits, Respondent lacks any rights or legitimate interests in the Domain Name and is using the Domain Name in bad faith.
Respondent did not reply to Complainant’s contentions.
Complainant provides clear evidence that since in or about 1997 it has made and sold a range of fashion accessories including various handbags. Complainant also provides evidence that it has used and registered its various trademarks (hereinafter referred to as the “KATE SPADE Marks”) both in the United States and in various overseas countries. As a result of its long-standing use in relation to, inter-alia, bags and other similar merchandise Complainant owns rights, through registration and at common law, in the KATE SPADE Marks.
The KATE SPADE Marks appear to be distinctive and it is not difficult to conclude that the KATE SPADE Marks are exclusively associated with Complainant. It is clear that by virtue of its widespread and long-standing use and the repute of the KATE SPADE Marks that an unrelated entity or person using a similar domain name is likely to lead to members of the public being confused and deceived.
Complainant argues that the Domain Name is confusingly similar to its KATE SPADE Marks in that the Domain Name incorporates the words KATE SPADE in their entirety with the mere addition of the generic words “bags” and “online” and that this fails to distinguish the Domain Name from the KATE SPADE Marks.
In this particular case Complainant asserts that Respondent is using the Domain Name on websites which sell counterfeit goods, bearing one or more of the KATE SPADE Marks. This conduct is likely to confuse and deceive consumers as to the true nature of the goods they are purchasing and the origin of those goods. Further, the overall impression must be that the Domain Name is necessarily connected in some way to Complainant and/or its KATE SPADE Marks.
On this basis the Panel finds:
a) Complainant has rights in respect of the KATE SPADE Marks.
b) The Domain Name is confusingly similar to the KATE SPADE Marks.
Accordingly, the Panel is satisfied that the first element of the Policy has been met.
As noted above, Complainant contends that Respondent is selling or is somehow tied up in the sale of counterfeit goods bearing the KATE SPADE Marks on one or more websites which resolve to the Domain Name. In this Panel’s view, it is not difficult to infer, in the absence of any denial, that through these activities Respondent is using a deliberately similar version of Complainant’s KATE SPADE Marks and Complainant’s significant goodwill and reputation to attract Internet traffic.
The Panel concludes that the Domain Name has been employed as a means of improperly diverting Internet users. In those circumstances, it is difficult to see how Respondent’s conduct could be characterized as legitimate and thus permissible.
On this basis the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
The Panel is satisfied that the second element of the Policy has been met.
Having reached the view that Respondent has intentionally attempted to attract for commercial gain Internet users to one or more unauthorized websites thereby creating a likelihood of confusion with Complainant and/or the KATE SPADE Marks, and in the absence of any explanation from Respondent, the Panel finds that Respondent registered and is using the Domain Name in bad faith. That is, so as to take bad faith advantage of Internet users who may wish to purchase Complainant’s genuine and well-known branded goods.
Further, the Panel is satisfied that bad faith registration is supported by the fact that Complainant’s KATE SPADE Marks significantly pre-dated Respondent’s registration of the Domain Name and in light of the long-established use and widespread protection of the KATE SPADE Marks that Respondent knew or ought to have known of Complainant’s prior rights.
The Panel thus has no difficulty in concluding that the third element of the Policy has been met.
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 <katespadebagsonline.com> be transferred to Complainant.
Clive L. Elliott
Sole Panelist
Date: January 30, 2013