WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Slide Mountain Acquisition Company LLC v. Simon Nissim, lipstick boutique

Case No. D2014-0393

1. The Parties

The Complainant is Slide Mountain Acquisition Company LLC of New York, New York, United States of America, represented by Katten Muchin Rosenman LLP, United States of America.

The Respondent is Simon Nissim, lipstick boutique of London, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <loehmanns.clothing> is registered with Mesh Digital Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 12, 2014. On March 13, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 14, 2014, the Registrar transmitted by email to the Center its verification responses confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on March 18, 2014.

The Center verified that the Complaint together with the amended 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 March 19, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 8, 2014. The Response was filed with the Center on April 6, 2014.

The Center appointed Luca Barbero as the sole panelist in this matter on April 14, 2014. 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.

On April 24, 2014, the Center notified to the parties the administrative Panel Order No. 1, by which the parties were requested to provide the following additional documents and statements by May 5, 2014:

- The Complainant was requested to provide “its comments in relation to the Respondent’s submissions as to the alleged absence of a registered trademark for Loehmann’s in United Kingdom and of a retail/wholesale exposure of Loehmann’s in said country, submitting additional statements and supporting evidence to demonstrate that the trademark LOEHMANN’S could have been known by the Respondent at the time of the registration of the disputed domain name”;

- the Respondent was requested to provide “additional statements and supporting evidence as to the purpose for which the disputed domain name was registered and any possible preparation to use it”.

The decision due date was thereby extended to May 19, 2014.

The Complainant and the Respondent submitted their Supplemental Filings on May 5, 2014 and May 2, 2014 respectively.

4. Factual Background

The Complainant and its predecessors-in-interest, Loehmann’s Holdings, Inc., Loehmann’s Operating Co. and Loehmann’s Inc., have been advertising, promoting and providing retail store services in branded retail stores and online under the trademark LOEHMANN’S.

The Complainant is the owner of the following United States federal trademark registrations for LOEHMANN’S, covering a wide range of apparel and retail store services:

- No. 0734218 for LOEHMANN’S (word mark), registered on July 10, 1962, in International class 25;

- No. 1139102 for LOEHMANN’S (word mark), registered on August 26, 1980, in International class 42;

- No. 3727937 for LOEHMANN’S THE IT STORE FOR DESIGNER FASHION (word mark), registered on December 22, 2009, in International class 35;

- No. 3433009 for LOEHMANN’S NEXXT (word mark), registered on May 20, 2008, in International class 35;

- No. 4316172 for LOEHMANN’S ITALIAN EVENT (word mark), registered on April 9, 2013, in International class 35;

- No. 4469622 for DESTINATION L1 LOEHMANN’S (word mark), registered on January 21, 2014, in International class 35.

The Complainant also owns trademark registrations for LOEHMANN’S in Argentina, Canada, Mexico and Japan, and a trademark application for LOEHMANN’S in Brazil. On April 1, 2014, the Complainant filed the Community Trademark application No. 12751764 for LOEHMANN’S, covering goods and services in classes 3, 25 and 35.

The Complainant is also the owner of the domain names <loehmanns.com>, registered on July 28, 1997; <loehmanns.net> and <loehmanns.org>, both registered on July 1, 2011.

The disputed domain name was registered on February 9, 2014, and is pointed to a registrar parking page with sponsored links leading to various web sites.

The Complainant sent a cease and desist letter to the Respondent, on February 18, 2014, advising of its rights in and to the trademark LOEHMANN’S and requesting that the Respondent transfer the ownership of the disputed domain name to the Complainant. The Respondent did not reply to such letter. On March 3, 2014, the Complainant sent a follow-up letter to the Respondent, reiterating its earlier request. The Respondent initially replied to Complainant’s follow-up letter on March 4, 2014, indicating that he would consult his legal team and reply under separate cover. The Respondent sent a letter on March 10, 2014, advising the Complainant that he refused to transfer the disputed domain name to the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant states that, as a result of the long and extensive use and promotion of the trademark LOEHMANN’S in interstate commerce, the trademark LOEHMANN’S has acquired a distinctiveness and secondary meaning, signifying the Complainant. The Complainant also highlights that it owns valuable goodwill which is symbolized by the trademark LOEHMANN’S and that, by virtue of the extensive use and advertising of the trademark LOEHMANN’S, including the Complainant’s use of such mark on the Internet and on web sites located at domain names incorporating the LOEHMANN’S mark, the trademark LOEHMANN’S has become well-known as associated with the Complainant.

The Complainant contends that the disputed domain name is a clear instance of cybersquatting, as it incorporates the Complainant’s trademark LOEHMANN’S in its entirety and is intended to intercept and siphon off Internet traffic intended for the Complainant’s web sites, and misdirect such traffic to the Respondent’s web site for commercial gain.

The Complainant underlines that the disputed domain name is identical to and incorporates in its entirety the Complainant’s trademark LOEHMANN’S, along with a generic top-level domain (gTLD) that specifically relates to the Complainant’s products and line of business. The Complainant states that, as such, the disputed domain name is confusingly similar to the Complainant’s trademark as the gTLD suffix “.clothing” does not mitigate the consideration of similarity.

The Complainant also asserts that the Respondent’s use of the disputed domain name infringes upon the name and trademark of the Complainant and causes a likelihood of confusion as defined in the United States Lanham Act, 15 U.S.C. § 1052(d). The Complainant underlines that confusion is particularly likely because the gTLD “.clothing” specifically relates to the products offered by the Complainant and states that it is likely that consumers will seek out the Complainant’s goods and services under the disputed domain name, without ever reaching the intended web site.

The Complainant asserts that, at all times relevant herein, the Respondent has had no legitimate interest in the trademark LOEHMANN’S and that the Respondent has not made any demonstrable preparations to use the disputed domain name in connection with any bona fide offering of goods or services, as the Respondent has, at best, merely used the disputed domain name in a deliberate attempt to intercept and siphon off, for the Respondent’s own financial gain, Internet traffic intended for the Complainant’s goods and services, and, at worst, registered the disputed domain name in a blatant attempt to extract a purchase price from the Complainant.

The Complainant points out that the trademark LOEHMANN’S is fanciful and arbitrary and deserving of the most heightened protection and that the Complainant is the only entity with the legal right to use the trademark LOEHMANN’S in connection with offerings of apparel, accessories and online retail store services.

The Complainant informs the Panel that the Respondent has no agreements, legal or otherwise, with the Complainant authorizing it to use the trademark LOEHMANN’S. The Complainant also states that the Respondent has not been personally identified, or commonly known, by names comprised, in whole or in part, of the trademark LOEHMANN’S, that it owns no trademark registrations for any trademark comprised, in whole or in part, of the trademark LOEHMANN’S, nor has the Respondent applied for any such trademark registrations. The Complainant concludes that any use by the Respondent of the trademark LOEHMANN’S in connection with the offering of goods and services constitutes infringement of the Complainant’s valid trademark rights.

With reference to the bad faith requirement, the Complainant states that the Respondent registered the disputed domain name in bad faith with full knowledge of the Complainant’s famous trademark LOEHMANN’S, and that, by virtue of the Complainant’s numerous trademark registrations and operational web site located at “www.loehmanns.com”, the Respondent was put on constructive notice of the Complainant’s rights to the trademark LOEHMANN’S prior to acquiring the disputed domain name.

In addition, the Complainant highlights that the Respondent has been placed on actual notice of the Complainant’s trademark rights by the Complainant prior to the Complainant instituting this administrative proceeding by virtue of the correspondence sent by the Complainant to the Respondent.

As to the use of the disputed domain name, the Complainant asserts that the fact that the disputed domain name resolves to a page featuring third party advertising demonstrates the Respondent’s bad faith and intention to profit from the improper registration of the disputed domain name.

The Complainant also contends that the Respondent’s use has violated paragraph 4(b)(iii) of the Policy by preventing customers who are looking for the Complainant at the disputed domain name from finding the Complainant, thereby disrupting the Complainant’s business. The Complainant also states that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent to misleadingly divert consumers for commercial gain or to tarnish the Complainant’s trademark.

The Complainant concludes that the Respondent could have easily chosen a domain name adequately reflecting the purpose of his web site, as evidenced today in thousands of domain names and that, by failing to do so, and by (i) knowingly choosing a domain name which solely consists of the Complainant’s trademark LOEHMANN’S, (ii) using the disputed domain name to intentionally intercept and siphon off internet traffic intended for the Complainant’s services, and (iii) misdirecting such traffic to a web site featuring third party advertising for commercial gain, the Respondent has intentionally created a situation which is at odds with the legal rights and obligations of the parties.

B. Respondent

The Respondent states that, prior to purchasing the disputed domain name, he ran a trademark search in

the United Kingdom that did not disclose any registration. He also contends that LOEHMANN’S is not a retail brand in the United Kingdom nor does it have any retail/wholesale exposure in the United Kingdom.

The Respondent alleges that no one has heard of LOEHMANN’S in the United Kingdom and that he has therefore full rights to open a retail store in the United Kingdom and call it “loehmanns clothing”.

6. Parties’ Supplemental Filings

A. Complainant

In its Supplemental Filing, the Complainant inter aliasubmits that:

- Though the Complainant did not own a trademark filing for the trademark LOEHMANN’S in the United Kingdom prior to registration of the disputed domain name, the trademark LOEHMANN’S was nevertheless well-known, and had acquired common law rights and distinctiveness as a result of the long and extensive use and promotion of the trademark throughout the world. The Complainant also underlines that “Loehmann” is a fanciful term (i.e., there is no dictionary definition of the term “Loehmann”), and refers to Frieda Loehmann, who founded the Loehmann’s retail store in 1921. Therefore, the Complainant concludes that it is extremely unlikely that the Respondent invented the term without being aware of or referring to the LOEHMANN’S name and trademark.

- The Complainant’s trademark registration No. 1139102 for LOEHMANN’S was submitted to a Trademark Clearinghouse: one of the benefits of entering a trademark into the Clearinghouse is notification by the Clearinghouse when a domain name matching a trademark owner’s verified mark has been registered; similarly, when an applicant attempts to register a domain name incorporating a mark that has been entered into the Clearinghouse, the applicant is alerted by their registrar, before registration that the subject domain name contains a trademark that matches a record in the Clearinghouse. In order to proceed with the registration process, the applicant must acknowledge a notice that a third party claims trademark rights in and to a trademark that is part of the subject domain name. Therefore, the Respondent had undisputed actual notice of the Complainant’s rights in and to the trademark LOEHMANN’S, but ignored the information presented by the claims notice, and registered the disputed domain name anyways.

- The news reporting in the United Kingdom about “Loehmann’s” stores dates back at least nearly thirty years, as highlighted by several articles published since1985 in United Kingdom newspapers and magazines, such as The Guardian, The Economist, The Independent, Sunday Suteleaph and the blog Just Style (annexed to the Complainant’s Supplemental Filing).

- On or about December 15, 2013, the Complainant’s predecessor in interest filed for bankruptcy protection. Shortly thereafter, on or about January 8, 2014, the Complainant purchased all of the intellectual property assets from its predecessor in interest out of bankruptcy, including without limitation, the family of trademark filings for the trademark LOEHMANN’S. The Complainant highlights that the announcement of the bankruptcy filing and subsequent announcement of the sale of intellectual property assets was widely reported in a variety of domestic and international news outlets, including those based in the United Kingdom. For instance, “The Business of Fashion”, a United Kingdom trade paper, as well as the United Kingdom version of Reuters News Service each announced the declaration of Loehmann’s bankruptcy on December 16, 2013. Additionally, on December 17, 2013, “Just Style” reported that “US fashion retailer Loehmann’s Holdings has filed for Chapter 11 bankruptcy protection […] and said it plans to sell substantially all of its assets”. A few weeks later, on January 15, 2014, “Just Style” reported that certain private equity funds had closed on the acquisition of Loehmann’s Holdings, and that “the deal will include the entire portfolio of registered trademarks and intellectual property of Loehmann’s Holdings”. Copies of all the cited articles are annexed to the Complaint as Annex 2.

- There can be no dispute that the LOEHMANN’S name and trademark have been extensively covered within the British press for at least nearly thirty years, and that, most recently, coverage of the declaration of, and sale of intellectual property assets out of, bankruptcy was a hot news item. In view of the above, the Complainant concludes that the LOEHMANN’S name and trademark could have been known by the Respondent at the time he registered the disputed domain name and that, at a minimum, the Respondent’s allegation that no one “has heard of [Loehmann’s] in the UK” is patently false.

- The global breadth of the Internet, in conjunction with the longstanding and extensive use and promotion of the LOEHMANN’S name and trademark, gives the Complainant a universal online retail presence, including within the United Kingdom. Not only does the Complainant maintain and use the web sites reached through the domain names <loehmanns.com>, <loehmanns.net> and <loehmanns.org>, but the Complainant also maintains and uses various LOEHMANN’S-branded social media pages, accessible worldwide, including without limitation, on Facebook (“www.faebook.com/loehmanns”), Twitter (“twitter.com/Loehmanns”), YouTube (“www.youtube.com/LoehmannsShopping”), Pinterest (“pinterest.com/loehmanns”), and MySpace (“www.myspace.com/loehmmans”). The Complainant also highlights that, in 2013, it had approximately USD 11,000 in sales to customers in the United Kingdom through the Loehmann’s web site.

- The Complainant highlights that a search for the term “Loehmann’s” on the United Kingdom version of Google produces approximately 661,000 results, the very first of which is for the Loehmann’s web site located at “www.loehmanns.com”. In addition, there are numerous articles about the chain as well as links to the Loehmann’s Facebook page and Wikipedia entry, on the first page of results alone.

- Nothing in the Response demonstrates any right or legitimate interest in the LOEHMANN’S name or trademark, nor does the Response offer any good faith reason to register the disputed domain name in the first place. To the contrary, the disputed domain name is a clear instance of cybersquatting, as it incorporates the Complainant’s trademark LOEHMANN’S in its entirety and is clearly intended to intercept and siphon off Internet traffic intended for the Complainant’s web site, and misdirect such traffic to Respondent’s web site for commercial gain. The Complainant underlines that the Respondent has yet to take any steps to make use of the web site located at the disputed domain name for any legitimate purpose, which continues to resolve to a page featuring third party advertising.

- A Reverse WhoIs search on the Respondent reveals that, on the same day the Respondent registered the disputed domain name, it also registered six other domain names in the “.clothing” gTLD, which appear to be for other third party brands, including <xoxo.clothing>, corresponding to the trademark XOXO owned by the company Global Brand Holdings, LLC. In view of the above, the Respondent has engaged in a pattern of bad faith registrations, on the same day, to exploit the newly issued “.clothing” gTLD for his own commercial gain.

B. Respondent

In his Supplemental Filing in response to the Panel Order No. 1, the Respondent states that the Complainant’s web site “www.loehmanns.com” is a “home page which is not being used or any trade/sales happening on-it is shut down”. The Respondent also states that the Complainant has filed Chapter 11 back in the beginning of the year.

The Respondent attaches a copy of the suggested “Brand and Neck label/swing tag” it is “hoping to use”.

7. Discussion and Findings

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires that the Complainant demonstrate that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant has provided evidence of ownership of several trademark registrations for LOEHMANN’S in the United States and in other countries.

The Panel finds that the Complainant has established rights in the trademark LOEHMANN’S since, as stated in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.1, the location of a trademark is irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP.

The disputed domain name <loehmanns.clothing> entirely reproduces the Complainant’s registered trademark LOEHMANN’S with the mere elimination of the apostrophe within the last two letters of the Complainant’s trademark and the addition of the gTLD “.clothing”.

With reference to the suppression of the apostrophe, as mentioned in L'OREAL v. Lewis Cheng, WIPO Case No. D2008-0437, it is “due to technical reasons which prevent the registration of domain names with an apostrophe and does not give any distinctiveness to the disputed domain names”.

As to the gTLD, it does not generally need to be considered for the purposes of determining identity or confusing similarity in UDRP proceedings, except in certain cases where the applicable Top-Level suffix may itself form part of the relevant trademark (WIPO Overview 2.0, paragraph 1.2).

In the present case, the Panel finds that the Complainant has met the threshold test by providing evidence of trademark rights to which the sign “loehmanns” is confusingly similar at the second-level, regardless of the top-level domain selected. Furthermore, the Panel considers that the adoption of the present gTLD “.clothing” is particularly apt to increase the risk of confusion as the Complainant’s trademark is registered and used in connection with such goods.

The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark LOEHMANN’S according to paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires that the Complainant demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.

With respect to this requirement, a complainant is generally required to make a prima facie case that a respondent lacks rights or legitimate interests and, once such prima facie case is made, the burden of production shifts to the respondent to submit appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name (WIPO Overview 2.0, paragraph 2.1).

In the present case, the Panel finds that the Complainant has made a prima facie case and that the Respondent has failed, notwithstanding the request in Panel Order No.1, for the Respondent to provide convincing evidence of the existence of any rights and/or legitimate interests he may have in the disputed domain name.

The Complainant has not authorized the Respondent’s use of the trademark LOEHMANN’S and there is no evidence showing that the Respondent might be commonly known by the disputed domain name or by a name corresponding to it.

In addition, the disputed domain name has been redirected by the Respondent to a parking page displaying sponsored links to third party web sites and the Respondent has failed to submit convincing proof of his rights to or legitimate interests in a sign corresponding to the disputed domain name.

The Panel notes that, as highlighted by the Complainant in response to the Panel Order No.1, the trademark LOEHMANN’S corresponds to the surname of the founder of the first Loehmann’s retail store and has no meaning in English. In addition, the Respondent has not provided any explanation – not even in response to Panel Order No.1 ̶ as to the reasons why he chose a domain name identical to the Complainant’s trademark and his mere provision of two pictures featuring purported labels containing the words “Loehmann’s clothing” is not sufficient to demonstrate that the Respondent has made preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The Panel also notes that the current use of the disputed domain name does not constitute a legitimate noncommercial or fair use.

The Panel therefore finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires that the Complainant demonstrate that the disputed domain name has been registered and is being used in bad faith.

Having reviewed the parties’ submissions in the Complaint and in the Response and the statements and documents provided pursuant to Panel Order No.1, the Panel finds that the Respondent registered the disputed domain name in bad faith.

While the Panel notes that the nature of the Complainant’s mark, i.e., a fanciful term, makes it difficult to consider that the Respondent could have been unaware of the Complainant, it is worth nothing that since the disputed domain name was registered during the trademark claims period for the gTLD “.clothing” and the Panel was made aware that the Complainant’s trademark was entered into the Trademark Clearinghouse prior to the registration of the disputed domain name, the Respondent must have been provided with a trademark claims notice of the Complainant’s rights in the trademark LOEHMANN’S. Therefore, the Respondent was clearly made aware of the Complainant’s trademark at least at the time of the registration of the disputed domain name. However, it should be made clear that having a mark in such Clearinghouse is by no means a pre-requisite to establishing knowledge by a registrant of a trademark owner’s rights.

Furthermore, in light of the fact that i) the trademark LOEHMANN’S is a fanciful mark that has no meaning in English; ii) the Complainant has provided evidence of the coverage of the Complainant and its trademark LOEHMANN’S in the United Kingdom, including in some press releases published also at the end of 2013 and in January 2014, thus shortly before the registration of the disputed domain name; iii) the disputed domain name is registered in a gTLD (“.clothing”) which expressly refers to one of the classes of products claimed in some of the Complainant’s trademark registrations and to the area of business the Complainant is active in; and iv) it has been proved that the Respondent has no rights or legitimate interests in a name or trademark corresponding to the disputed domain name, the Panel finds that the Respondent registered the disputed domain name having the Complainant’s trademark in mind.

As to the use of the disputed domain name, the Panel finds that, in view of the current redirection of it to a parking page with sponsored links leading to third party web sites, the Respondent is using the disputed domain name in order to intentionally attract, for commercial gain, Internet users to his web site, by causing a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the web site by the Complainant according to paragraph 4(b)(iv) of the Policy.

As an additional circumstance evidencing bad faith, the Respondent, as highlighted by the Complainant in response to Panel Order No.1, has registered other domain names corresponding to a registered trademark, e.g., <xoxo.clothing>, which is pointed, like the disputed domain name, to a parking page with sponsored links.

Therefore, the Panel concludes that the disputed domain name was registered and is being used in bad faith according to paragraph 4(a)(iii) of the Policy.

8. Decision

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 <loehmanns.clothing> be transferred to the Complainant.

Luca Barbero
Sole Panelist
Date: May 20, 2014