The Complainant is Coach, Inc. of New York, United States of America (the “USA”), represented by Safe Names Ltd., United Kingdom of Great Britain and Northern Ireland (the “UK”).
The Respondent is DVLPMMT Marketing, Inc. of Charlestown, Nevis, Saint Kitts and Nevis.
The disputed domain names <coachoutlet.com> and <thecoachoutlet.com> (“the Disputed Domain Names”) are registered with DNC Holdings, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 12, 2014. On May 13, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On May 14, 2014, 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 May 22, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 11, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 13, 2014.
The Center appointed Jacques de Werra as the sole panelist in this matter on June 19, 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.
The Complainant is a USA company offering various types of high end fashion products which include handbags, shoes, watches, jewellery, wristlets, scarves, key rings, belts and fragrances. In 2013, the Complainant’s products were available in approximately 1,000 department store locations in North America and 183 international department stores, retail store and duty free shop locations in over 25 countries. The Complainant further directly operated over 400 locations (351 retail stores and 193 factory stores) in Asia, as well as 20 locations in Europe.
The Complainant is the owner of numerous trademark registrations for the COACH trademark (the “Trademark”) around the world, including in the USA (where the oldest registration dates back to 1963), Australia, Canada, the European Union and the UK.
The Complainant has registered and started to use the domain name <coach.com> in 1999 for its business activities. It has since then expanded its online presence particularly on social media.
The Disputed Domain Names <coachoutlet.com> and <thecoachoutlet.com> were registered on December 29, 2001 and May 7, 2006, respectively.
The Disputed Domain Names are used as parking pages which contain links to other websites, some of which relate to the Complainant’s products.
The Complainant claims that the Disputed Domain Names are confusingly similar to the Trademark because they combine the Trademark with the word “outlet” (and for the Disputed Domain Name <thecoachoutlet.com> the addition of term “the” is of no relevance in this context), which only increases the risk of confusion because the Complainant operates COACH factory stores (i.e. outlets).
The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because the Respondent cannot demonstrate or establish rights or a legitimate interest in respect of the Disputed Domain Names. Based on the Complainant’s researches, Respondent has no pending applications or registered trademarks for the name “coach” or “coach outlet”, and it does not operate a business named “Coach outlet” or is known by this name.
The Respondent registered and is using the Disputed Domain Names in bad faith because the Respondent ought to have known about the Complainant’s internationally recognized brand COACH due to the worldwide fame and growth in popularity achieved prior to and at the time of registration of the Disputed Domain Names. The sole purpose of the inclusion of the Complainant’s Trademark in the Disputed Domain Names was to attract Internet users in order to generate revenue, whether for third parties, for the Respondent or both parties involved, and such conduct establishes that the Respondent is acting in bad faith further to paragraph 4(b)(iv) of the Policy.
The Respondent has also been found to have registered and used various other domain names incorporating third party trademarks or misspelled versions thereof (e.g. <kathyvanzeelandhandbags.com>, <havianaflipflops.com> and <quwaitairways.com>). The Respondent has also been involved in prior domain name disputes in which the Respondent was found to have registered and used the domain names in bad faith (see e.g. Chloé S.A.S. v. DVLPMNT Marketing, Inc., WIPO Case No. D2014-0039 and Starwood Hotels & Resorts Worldwide, Inc. and Westin Hotel Management, L.P. v. DVLPMNT Marketing, Inc., WIPO Case No. D2014-0200). On this basis, the Complainant asserts that the Respondent’s registrations of these additional domain names combined with these prior disputes are evidence of the Respondent’s disrespect of the Policy and lack of consideration for the intellectual property rights of third parties, including those of the Complainant.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Even if the argument of laches has not been raised by the Respondent (who did not participate in these proceedings), the Panel thinks of relevance to note from the outset that “[p]anels have recognized that the doctrine or defense of laches as such does not generally apply under the UDRP, and that delay (by reference to the time of the relevant registration of the disputed domain name) in bringing a complaint does not of itself prevent a complainant from filing under the UDRP, or from being able to succeed under the UDRP, where a complainant can establish a case on the merits under the requisite three elements”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), para. 4.10. A previous panel consequently held that there is no “meaningful precedent under the Policy for refusing to enforce trademark rights on the basis of a delay in bringing a claim following use of a disputed domain name”. See Tom Cruise v. Network Operations Center / Alberta Hot Rods, WIPO Case No. D2006-0560; and Legislator 1357 Limited, Legislator 1358 Limited, Ian Fleming Limited v. Alberta Hot Rods, WIPO Case No. D2008-0832. On this basis, the Panel finds that the Complainant is in a position to invoke the protection granted under the Policy in this case, irrespective of the passing of time since the registration of the Disputed Domain Names <coachoutlet.com> and <thecoachoutlet.com> in 2001 and 2006, respectively.
The Panel is satisfied that the Complainant has rights in the Trademark.
A comparison between the Disputed Domain Names and the Trademark owned by the Complainant shows that the Disputed Domain Names are clearly confusingly similar to it to the extent that they reproduce the entirety of the Trademark to which the word “outlet” has been added in the final part of the Disputed Domain Names (and, for the Disputed Domain Name <thecoachoutlet.com>, the term “the” - whereby the addition of this term cannot affect the confusing similarity). In this respect, the addition of the descriptive word “outlet” does not reduce this finding of confusing similarity. Quite to the contrary, the addition of this word increases the risk of confusion with the Complainant’s Trademark and with the Complainant itself, given that it directly refers to a type of stores that the Complainant operates.
As a result, based on the rights of the Complainant in the Trademark and on the confusing similarity between the Trademark and the Disputed Domain Names, the Panel finds that paragraph 4(a)(i) of the Policy is met.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the Disputed Domain Names by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Disputed Domain Names or a name corresponding to the Disputed Domain Names in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Disputed Domain Names, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Names, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, previous UDRP panels have consistently ruled that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests, and once such prima facie case is made the burden of production shifts to the respondent to come forward with evidence of rights or legitimate interests in the domain name. See paragraph 2.1 of the WIPO Overview 2.0.
In the Panel’s opinion, the Complainant has made a prima facie case against the Respondent. The Respondent indeed registered the Disputed Domain Names, which fully integrate the Trademark owned by the Complainant, in a way which can only be explained by reference to the Complainant’s products and business activities. The Panel holds that the addition of the word “outlet” to the Disputed Domain Names further reinforces the intended reference to the Complainant’s products and activities. The Panel also finds that the websites associated with the Disputed Domain Names constitute portals pointing to various websites, some of which point to the Complainant’s products. Therefore, in the Panel’s assessment, the Respondent is clearly targeting the Complainant. The Panel also notes that even if the Trademark can correspond to a dictionary term in English (“coach”), the use of the Disputed Domain Names does not refer in any manner to the dictionary meaning of the Trademark (which is not claimed by the Respondent who did not participate in the proceedings).
The Complainant has also stated without being contradicted that the Respondent has no rights or legitimate interests in the Disputed Domain Names, that the Respondent has not been commonly known as operating under the name “Coach outlet” or done business under that name and that the Respondent’s use of the Disputed Domain Names is not in connection with a bona fide attempt to offer goods and services.
The Panel thus accepts the Complainant’s prima facie showing and it was consequently up to the Respondent to come forward with evidence of rights to or legitimate interests in the Disputed Domain Names, which has not been done given the Respondent’s absence in these proceedings.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Names and that paragraph 4(a)(ii) of the Policy is met.
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant (the owner of the trademark or service mark) or to a competitor of the Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the disputed domain name;
(ii) circumstances indicating that the Respondent 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 the Respondent has engaged in a pattern of such conduct;
(iii) circumstances indicating that the Respondent registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the Respondent intentionally is using the disputed domain name in an attempt to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
In this case, the Panel holds that the Respondent registered the Disputed Domain Names in bad faith because the Trademark distinctively identifies the Complainant and the Complainant’s products so that the choice of the Disputed Domain Names, also because they both include the term “outlet”, cannot be reasonably explained otherwise than as a reference to the Trademark owned by the Complainant.
From the records of the file, it appears that the Respondent is using the Disputed Domain Names for web portals providing sponsored links to websites referring to various products, and particularly to products of the Complainant and to the Trademark. It can thus be considered that the Respondent has set up this system in the expectation of some financial gain through a pay-per-click or click-through system.
Therefore, the circumstances of this case lead the Panel to consider that the Respondent was aware of the Complainant’s Trademark and of its corresponding goods and thus registered the Disputed Domain Names and uses them in bad faith, in order to attract Internet users by creating a likelihood of confusion with the Complainant's Trademark for the Respondent’s commercial gain.
In addition, the record shows that the Respondent has engaged in a pattern of registering domain names that bear striking resemblance to well-known marks and has been a respondent in various previous UDRP proceedings, whereby such a pattern of conduct is expressly forbidden by paragraph 4(b)(ii) of the Policy.
On this basis, the Panel finds that the Respondent registered and uses the Disputed Domain Names in bad faith pursuant to paragraph 4(b) of the Policy, so that the conditions of paragraph 4(a)(iii) of the Policy are met.
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 Names <coachoutlet.com> and <thecoachoutlet.com> be transferred to the Complainant.
Jacques de Werra
Sole Panelist
Date: June 28, 2014