The Complainant is NM Nevada Trust, Dallas, Texas, United States of America, represented by Bryan Cave, LLP, United States of America.
The Respondent is Bergdorfgoodmanoutlet.com, Budapest, Hungary.
The disputed Domain Name <bergdorfgoodmanoutlet.com> is registered with Web Commerce Communications Limited dba WebNic.cc (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 4, 2014. On September 4, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed Domain Name. On September 4, 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 September 9, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 29, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 1, 2014.
The Center appointed Ian Blackshaw as the sole panelist in this matter on October 10, 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 owns and licenses to its related companies, including Bergdorf Goodman, Inc., the world-famous BERGDORF GOODMAN trademark and trade name, which it has used for over 110 years to identify its highly successful retail business as well as a variety of apparel, accessory and bath and body products.
The Complainant operates two Bergdorf Goodman luxury retail department stores located in New York City, occupying more than 300,000 square feet of retail space, and reaches hundreds of thousands of customers via its Bergdorf Goodman mail order catalogs and its website, accessible at <bergdorfgoodman.com>.
The Complainant is one of the most successful and prestigious specialty retailers in the United States and is known throughout the world.
For well over a century, the Complainant (and its predecessors in interest) has used the Bergdorf Goodman trade name and BERGDORF GOODMAN trademarks and service marks for its retail store services, mail order catalogs, and private label merchandise. As a result of this long and extensive use and tens of millions of dollars in advertising and promotions, the BERGDORF GOODMAN trademarks have acquired a valuable goodwill and reputation among consumers and professionals in the fashion and retail community.
Since at least as early as 1901, the Complainant (and its predecessors) has continuously used the BERGDORF GOODMAN mark in connection with retail services, clothing, and a host of related goods and services.
The Complainant holds numerous registrations for variations of the trademark BERGDORF GOODMAN in Europe, the United States of America and around the world (collectively, the “BERGDORF GOODMAN Marks”).
By way of example only, the Complainant owns all right, title and interest in, to and under the following relevant European and United States trademark registrations (including, but not limited to, all goodwill associated therewith):
1. BERGDORF GOODMAN (CTM Registration No. 000176628) for “bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, colognes, bath oils, dusting powder, after shave lotions, deodorants; hair lotions; dentifrices,” in International Class No. 03; for “precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery; bracelets; pins, rings, earrings, necklaces, brooches, cufflinks, tie-pins and tie-clips; precious stones; watches, clocks and other horological and chronometric instruments,” in International Class No. 14; for “leather and imitations of leather, and goods made of these materials and not included in other classes; trunks and travelling bags; wallets and cases; umbrellas, parasols and walking sticks,” in International Class No. 18; for “household or kitchen utensils and containers; combs and sponges; brushes; brushes; brush making materials; articles for cleaning or grooming purposes; glassware, porcelain and earthenware not included in other classes,” in International Class No. 21; for “articles of clothing for men, women and children; leisure and sportswear; footwear and headgear,” in International Class No. 25; for “games and playthings; dolls and toys; gymnastics and sporting articles not included in other classes; decorations for Christmas trees,” in International Class No. 28; for “meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, milk and milk products; edible oils and fats; prepared chilli; pickles; roasted meats; processed olives and processed jalapenos,” in International Class No. 29; for “coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry, candy and confectionery, ices; honey, treacle; yeast, baking powder; salt, mustard; vinegar, sauces (condiments); spices; ice; pralines; catsup; mesquite seasoning; popped popcorn; pretzels; relish; salsa and salsa verde, mayonnaise,” in International Class No. 30;
2. BERGDORF GOODMAN Logo (U.S. Registration No. 674,632) for “ladies’ coats, suits, and dresses,” in International Class No. 025;
3. BERGDORF GOODMAN (U.S. Registration No. 992,733) for “retail specialty department store services,” in International Class No. 042;
4. BERGDORF GOODMAN Logo (U.S. Registration No. 1,902,799) for “full line of men’s and women’s apparel,” in International Class No. 025; and for “retail department store services; mail order services in the field of apparel and accessories,” in International Class No. 042; and
5. BERGDORF GOODMAN (U.S. Registration No. 845,203) for “fur storage service,” in International Class No. 039.
Evidence of all of this has been provided in the Complaint.
A listing of twenty additional BERGDORF GOODMAN non U.S. trademark registrations owned by the Complainant (or one of Complainant’s related companies) has also been provided in the Complaint.
Since at least as early as 1996, the Complainant has maintained an active presence on the Internet, including through its website ”www.bergdorfgoodman.com”, where it promotes its retail services, clothing, and related products bearing the BERGDORF GOODMAN Marks. Again, evidence has been provided in the Complaint.
The Complainant and its associated entities also own the following additional relevant domain names:
<bergdorf-goodman.com>
<bergdorf-goodmen.com>
<bergdorfandgoodman.com>
<bergdorfgoodman.biz>
<bergdorffgoodman.biz>
<bergdorffgoodman.com>
<bergdorfgoodman.info>
<bergdorfgoodman.mobi>
<bergdorfgoodman.us>
<bergdorfgoodmanstore.com>
<bergdorfgoodmanstores.com>
<bergdorfgoodmancareers.com>
<burgdorffgoodman.com>
<begdorfgoodman.com>
A listing of more than 60 domain names owned by the Complainant (or one of the Complainant’s related companies) and incorporating or referencing the BERGDORF GOODMAN Marks has been provided in the Complaint.
The Complainant, its predecessors, and associated entities have expended, and continue to expend, a substantial amount of resources, money, time and effort promoting, marketing, advertising, and building consumer recognition and goodwill in its BERGDORF GOODMAN branded goods and services under and in connection with its BERGDORF GOODMAN Marks.
The Complainant contends that there can be no dispute that the BERGDORF GOODMAN Marks are extremely valuable and famous throughout the world and that the Complainant owns multiple United States and foreign registrations for marks incorporating the name Bergdorf Goodman.
Previous UDRP panels have found that the Complainant has sufficient rights in the BERGDORF GOODMAN Marks to support a transfer of confusingly similar domain name registrations to the Complainant. See, e.g., NM Nevada Trust v. Huili Zhang, WIPO Case No. D2010-1476 (transferring <bergdorfgoodman.org> to the Complainant); Bergdorf Goodman, Inc. v. Huang, NAF Claim No. FA001286505 (transferring <bergdorfhoodman.com> to the Complainant); The Neiman Marcus Group, Inc. v. Collazo, NAF Claim No. FA00248954 (transferring <wwwbergdorfgoodman.com> to the Complainant); NM Nevada Trust v. Nassy, NAF Claim No. FA00104203 (March 13, 2002) (transferring <bergdorfgoodmann.com> to the Complainant); see also John Barrett, Inc. v. Private Whois Service, WIPO Case No. D2011-1103 (“The Complainant operates the John Barrett Salon, which maintains a prominent and well-known location in the world-famous Bergdorf Goodman store on 5th Avenue, New York.”).
The Complainant makes the following assertions:
(i) The disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The disputed Domain Name wholly incorporates and is thus confusingly similar to the Complainant’s highly distinctive BERGDORF GOODMAN Marks. See, e.g., OBH, Inc. v. Spotlight Magazine, Inc., 86 F. Supp.2d 176, 187 (W.D.N.Y. 2000) (“intentional copying of the trademark gives rise to a presumption of a likelihood of confusion”); and Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525 (“when a domain name wholly incorporates a complainant’s registered mark, that is sufficient to establish identity or confusing similarity for purposes of the Policy”).
The disputed Domain Name is identical to the Complainant’s BERGDORF GOODMAN Marks, except that the disputed Domain Name deletes the space between BERGDORF and GOODMAN, and adds the generic or descriptive term “outlet” and the generic Top-Level Domain (“gTLD”) suffix “.com.”
These differences are legally insignificant and not sufficient to avoid a likelihood of confusion under the Policy. “When a domain name differs from a trademark only by removing a space between words and appending a TLD designation, the domain name is confusingly similar to the mark.” See Nasdaq Stock Market, Inc.v. Jon Steinsson, WIPO Case No. D2002-0571.
The addition of the suffix “.com” is, of course, irrelevant as it is functional to domain names and does not serve to distinguish source.See e.g., Anti Flirt S.A. and Mr. Jaques Amsellem v. WCVC, WIPO Case No. D2000-1553; Donvand Limited trading as Gullivers Travel Associates v. Omniscience, WIPO Case No.D2002-0746 (holding that the disputed domain name was identical to the trademark owned by the complainant when the only difference between the domain name and the trademark was the addition of the suffix “.com”).
Additionally, the inclusion of the term “outlet,” does nothing to distinguish the Respondent given that the Respondent’s website purports to act as a retail “outlet.” See Graybar Services Inc. v. Graybar Elec, Grayberinc Lawrenge, WIPO Case No. D2009-1017. “It has long been held that…the addition of a few letters, especially where those letters form a generic expression indicating a company or an activity in which the trademark owner operates does not detract from confusing similarity….” Id. (finding grayberinc.com confusingly similar to GRAYBAR); see also Crocs Inc. v. Xie, WIPO Case No. D2011-1500 (holding <crocsoutlet.org> confusingly similar to the mark CROCS, in that “outlet” is a descriptive term meaning “discount shop”).
Moreover, the disputed Domain Name is legally identical to one of the principal domain names through which Complainant does business on the Internet, namely <bergdorfgoodman.com>, save for the addition of the generic or descriptive term “outlet.” This change does not obviate confusion. Unlike consumers in a traditional retail context, who must actually travel to a physical location to purchase goods and services, Internet consumers are more likely to be misled into visiting virtual locations by the use of confusing similarities in trademarks. The Respondent seeks to exploit consumer confusion by fully incorporating the Complainant’s BERGDORF GOODMAN Marks in the disputed Domain Name and directing such disputed Domain Name to a knock off website.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed Domain Name
The Respondent has no legitimate rights or interest whatsoever in the disputed Domain Name. The Respondent, the Complainant contends, intentionally and wrongfully chose to register a domain name identical to Complainant’s BERGDORF GOODMAN Marks for the purpose of trading upon the Complainant’s reputation and goodwill.
The Respondent registered the disputed Domain Name intending and knowing that its actions would deceive, mislead and divert a large number of consumers seeking the Complainant’s goods and services.
The Respondent’s intent alone precludes a finding of a bona fide offering of goods and/or services or a legitimate noncommercial or fair use.
The Respondent is not in any way associated with the Complainant and has never sought nor received authorization or a license to use the Complainant’s valuable, famous and distinctive BERGDORF GOODMAN Marks in any way or manner.
Additionally, on information and belief, the Respondent has not and cannot demonstrate that it-apart from its illegal registration and use of the disputed Domain Name-has ever made any legitimate offering of goods or services under the Complainant’s BERGDORF GOODMAN Marks. The Respondent does not purport to offer for sale any products (authentic or otherwise) branded with the Complainant’s BERGDORF GOODMAN Marks. Evidence of which has been provided to the Panel.
Rather, the Respondent utilizes a domain name that wholly incorporates the Complainant’s marks, with the clear intent to confuse Internet users and improperly divert traffic and commercial sales to its own competing and wholly commercial retail website. The Respondent is clearly trading on the fame and notoriety of the Complainant’s BERGDORF GOODMAN Marks. Use that intentionally trades on the fame of another cannot constitute a bona fide offering of goods or services. See Kira Reed Lorsch v. Kirareed.net, WIPO Case No. D2010-0851; and Madonna Ciccone, p/k/a Madonna v. Dan Parisi, WIPO Case No. D2000-0847 (“use which intentionally trades on the fame of another can not constitute a bona fide offering of goods or services”).
The Respondent has no means to establish that it is or ever has been commonly known as “Bergdorf Goodman,” “Bergdorf Goodman Outlet” or anything similar. On information and belief, the Respondent has not sought or procured any registrations for any trade names, corporations, or trademarks with any governmental or business authority for “Bergdorf Goodman,” “Bergdorf Goodman Outlet” or anything similar. Moreover, the Complainant owns CTM Reg. No. 000176628 for the mark BERGDORF GOODMAN, filed in 1996. Therefore, any use by the Respondent of the BERGDORF GOODMAN Marks in the Respondent’s purported resident country of Hungary is infringing, and does not constitute a right or legitimate interest under the Policy. The Respondent does not appear to have any legitimate trademark, service mark or other intellectual property rights in or to any of the BERGDORF GOODMAN Marks, or any similar marks or names.
Finally, the Respondent is not making any legitimate noncommercial use of the disputed Domain Name.
As set forth above, the Respondent has adopted and continues to use a domain name that wholly incorporates the Complainant’s BERGDORF GOODMAN Marks, solely for the illegal and improper commercial purposes of: (i) illegally trading upon the Complainant’s goodwill to confuse, mislead, deceive, and divert consumers; (ii) misdirecting the Complainant’s customers to various websites that offer directly competing goods and services; and (iii) intentionally tarnishing and diluting the Complainant’s valuable and well-known marks.
(iii) The disputed Domain Name was registered and is being used in bad faith
The Respondent registered and is using the disputed Domain Name in bad faith, in direct violation of, at least Policy paragraphs 4(b)(iii) and (iv).
The Respondent’s bad faith conduct is evidenced as follows:
First, the Respondent is intentionally attempting to divert, for commercial gain, Internet users to the Respondent’s wholly commercial retail website, through which it provides directly competing retail services for commercial gain. As detailed above, the Respondent’s website is clearly designed to have a similar look and feel to the Complainant’s authentic website and is intended to cause consumer confusion. Where a respondent is found to be diverting users to its website to generate traffic and sales or commissions for its own commercial benefit, such conduct is uniformly recognized by previous UDRP pPanels as constituting bad faith under the Policy. See, e.g. Microsoft Corporation v. Zerbo, WIPO Case No. D2005-0644; Dr. Ing. h.c. F. Porsche AG v. Terkin, WIPO Case No. D2003-0888; Gow-Mac Instrument. Co. v. Gow Mac Instrument Co., NAF Claim No. FA 0095166 F; Labrada Bodybuilding Nutrition, Inc. v. Bob Garrett, NAF Claim No. 0094293; Wellness Int’l Network v. Appostolics.com, NAF Claim No. FA 96189 ; and Net2phone v. Dynasty System Sdn Bhn, WIPO Case No. D2000-0679.
Second, on information and belief, the Respondent uses the Complainant’s world famous retail department store brand in the disputed Domain Name and website to either: (i) sell counterfeit reproductions of third party luxury products; or (ii) collect sensitive personal and financial information from consumers who have been diverted to the Respondent’s website. Either scenario constitutes bad faith under the Policy. See Mattel, Inc. v. Magic 8 Ball Factory, WIPO Case No. D2013-0058 (“Respondent’s activities constitute bad faith under paragraph 4(b)(iv) of the Policy as it is using The Domain Name intentionally to compete with Complainant and to attract for commercial gain Internet users to Respondent’s website where counterfeit goods are offered, by creating a likelihood of confusion with The Trade Mark”); Advance Magazine Pubs. Inc. v. HostMonster.com Inc., WIPO Case No. D2010-1355 (“[U]se of a well-known trademark to lure customers to a website that promotes counterfeit or fake goods would in most circumstances be considered bad faith use.”); see also The Royal Bank of Scotland Group Plc v. Lauren Terrado, WIPO Case No. D2012-2093 (operation of a “phishing” website, for the purpose of obtaining information from Internet users believing themselves to be dealingwith the complainant, “is perhaps the clearest evidence of registration and use of a domain name in badfaith.”).
Third, the Respondent’s bad faith conduct is designed to disrupt and harm the Complainant’s business. The Respondent utilizes an infringing domain name to divert potential users away from the Complainant and its authentic goods and services and toward the (likely counterfeit) goods of the Complainant’s competitors. The Respondent’s conduct plainly has caused and will continue to cause the Complainant commercial detriment, in terms of consumer confusion, lost sales and goodwill, and the loss of the general ability to communicate and transact with its existing and potential customers.
Fourth, upon information and belief, the Respondent has absolutely no legitimate trademark, service mark or other intellectual property rights in or to the disputed Domain Name, or any similar marks or names. The Respondent’s complete lack of intellectual property rights in the disputed Domain Name further demonstrates bad faith in adopting and using <bergdorfgoodmanoutlet.com>. Where a domain name is so obviously connected to a particular product or service and the registrant is found to have “no connection” to that product or service, previous UDRP panels have found a registrant guilty of “opportunistic bad faith. ” See e.g., Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; and Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226. Such is the situation in the present case.
Fifth, the Complainant contends that the Respondent plainly knew of the Complainant’s long and continuous use of itsBERGDORF GOODMAN Marks at the time of registration of the disputed Domain Name and that it had no right, title orinterest, whatsoever, in these Marks or the disputed Domain Name. The Respondent, upon information andbelief, registered the disputed Domain Name over 110 years after the Complainant and its predecessors beganusing the BERGDORF GOODMAN mark in 1901, and also well after the Complainant became oneof the world’s leaders in the field of clothing, accessories and related products and retail services.
Additionally, the Complainant owns numerous European, United States. and other trademark registrations, providing the Respondent and others with constructive notice of its rights in and to its BERGDORF GOODMAN Marks.
Finally, the Respondent’s website copies the design and format of the Complainant’s authentic website, and its “trademark use” of the Complainant’s BERGDORF GOODMAN Marks even copies the Complainant’s registered stylization. Evidence of this has been provided to the Panel. It would stretch credulity for the Respondent to deny that it was aware of the Complainant and its BERGDORF GOODMAN Marks at the time of registration of the disputed Domain Name, or any time thereafter.
In sum, the Respondent continues to wrongfully use the Complainant’s BERGDORF GOODMAN Marks to draw users to its website, create confusion, and improperly reap commercial profit through diverted sales. The Respondent’s use of the BERGDORF GOODMAN Marks is, therefore, illegal and improper under the Policy.
The Respondent, having been duly notified of the Complaint and of this proceeding, did not reply to the Complainant’s contentions nor take any part in the proceeding.
To qualify for cancellation or transfer of the disputed Domain Name, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:
(i) The disputed Domain Name 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 in respect of the disputed Domain Name; and
(iii) The disputed Domain Name has been registered and is being used in bad faith.
In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
In accordance with paragraph 14(a) of the Rules, in the event that a party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the complaint; and under paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences as it considers appropriate.
In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.
In previous UDRP cases in which the respondents failed to file a response, the panels’ decisions were based upon the complainants’ reasonable assertions and evidence, as well as inferences drawn from the respondents’ failure to reply. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; and also Köstritzer Schwarzbierbrauerei v. Macros-Telekom Corp., WIPO Case No. D2001-0936.
Nevertheless, the Panel must not decide in the complainant’s favor solely based on the respondent’s default. See Cortefiel, S.A. v. Miguel García Quintas, WIPO Case No. D2000-0140. In the present case, the Panel must decide whether the Complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true.
A. Identical or Confusingly Similar
It is well established in previous UDRP decisions that, where the disputed Domain Name incorporates a complainant’s registered trademarks, this may be sufficient to establish that the disputed Domain Name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.
In the present case, the disputed Domain Name incorporates the Complainant’s BERGDORF GOODMAN Marks, which makes the disputed Domain Name confusingly similar to these well-known Marks. This, in the view of the Panel, is bound to lead to confusion on the part of consumers and Internet users seeking information about the Complainant and its products and services marketed under its well-known BERGDORF GOODMAN Marks.
The Panel agrees with the Complainant’s contention that confusing similarity has been found where, as in the present case, the Respondent has added, as a suffix, the generic word “outlet” to the Complainant’s BERGDORF GOODMAN Marks in the disputed Domain Name. See Saks & Co. v.saksfifthavenue-sale.com, WIPO Case No. D2013-1644. This addition does nothing to distinguish the disputed Domain Name from the Complainant’s well-known BERGDORF GOODMAN Marks.
The Panel also agrees with the Complainant that the absence of the space between the names BERGDORF and GOODMAN in the disputed Domain Name is irrelevant for distinguishing purposes.
The Panel further agrees with the Complainant’s contention that the addition of the gTLD “.com” to the disputed Domain Name does not avoid confusing similarity. See The Coca-Cola Company v. David Jurkiewicz, WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc., WIPO Case No. D2001-0015; F. Hoffmann La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. See also Aktiebolaget Electrolux v. Jose Manuel, WIPO Case No. D2010-2031.
In view of all of the above, the Panel finds that the disputed Domain Name is identical to the Complainant’s well-known BERGDORF GOODMAN Marks, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has rights and interests, including lengthy commercial use of and valuable goodwill in the same.
The first element of the Policy, therefore, has been met.
In order to determine whether the Respondent has any rights or legitimate interests in respect of the disputed Domain Name (paragraph 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:
- whether there is any evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed Domain Name or a name corresponding to the disputed Domain Name in connection with a bona fide offering of goods or services before any notice to the Respondent of the dispute;
- whether the Respondent (as an individual, business, or other organization) has been commonly known by the disputed Domain Name, even if the Respondent has acquired no trademark or service mark rights;
- whether the Respondent is making a legitimate noncommercial or fair use of the disputed Domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence before the Panel to show that the Respondent was acting in pursuance of any rights or legitimate interests with respect to registering the disputed Domain Name. On the contrary, if the Respondent had any such rights or legitimate interests, the Respondent would have reasonably been expected to assert them, which the Respondent clearly has not done, by not replying to the Complaint or taking any part in the proceedings. See Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
In the view of the Panel, the adoption by the Respondent of a domain name confusingly similar to the Complainant’s well-known BERGDORF GOODMAN Marks, which the Panel considers, as asserted above by the Complainant, was not by mere chance but by design, inevitably leads to confusion on the part of Internet users and consumers seeking information about the Complainant and its products. Further, the Panel finds that the Respondent is trading unfairly on the Complainant’s well-known BERGDORF GOODMAN Marks and also the valuable goodwill that the Complainant has established in these Marks through prior and lengthy commercial use, as evidenced above.
Also, the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed Domain Name in connection with a bona fide offering of goods or services.
Likewise, no evidence has been adduced that the Respondent has commonly been known by the disputed Domain Name; nor, for the reasons mentioned above, is the Respondent making a legitimate noncommercial or fair use of the disputed Domain Name.
Therefore, for all of the above reasons and also those advanced above by the Complainant, as set out above, the Panel concludes that the Respondent has neither rights nor legitimate interests in the disputed Domain Name.
Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which evidence bad faith registration and use. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris, WIPO Case No. D2003-0366.
Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:
“(iv) by using the disputed Domain Name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] web site or location or of a product or service on [its] web site or location.”
Based on the evidence provided on the record, the Panel considers that the Respondent, by registering the disputed Domain Name incorporating therein the Complainant’s well-known BERGDORF GOODMAN Marks, is trading unfairly on the Complainant’s valuable goodwill established in such Marks.
Furthermore, see Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493, in which it was stated that “consumers expect to find a company on the Internet at a domain name address comprised of the company’s name or trademark”. In the present case, the use by the Respondent of the disputed Domain Name is confusing and misleading and, in the view of the Panel, this is a further indication that the disputed Domain Name was registered and is being used in bad faith.
Again, in the absence of any explanation to the contrary by the Respondent, of which none is forthcoming on the record, the Panel agrees with the Complainant’s contention that the Respondent did not register and use the disputed Domain Name by chance, but, as noted above, on the basis of clearly being aware of the notoriety of the Complainant’s well-known BERGDORF GOODMAN Marks and their prior and lengthy commercial use.
Also, the Panel finds that the Respondent’s use of the disputed Domain Name, which has the effect of redirecting Internet users interested in the Complainant’s products and services to the Respondent’s website which copies the design and format of the Complainant’s authentic website for presumed commercial gain, not only does not constitute legitimate noncommercial or fair use, but also constitutes bad faith on the part of the Respondent. See Express Scripts, Inc. v. Windgather Investments Ltd./Mr.Cartwright, WIPO Case No. D2007-0267.
Finally, the failure of the Respondent to answer the Complaint or take any part in the present proceedings, again, in the view of the Panel, is another indication of bad faith on the part of the Respondent. See Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.
Therefore, taking all of these particular facts and circumstances into account and for all the above-mentioned reasons, as well as the others advanced by the Complainant in its various contentions set out above, the Panel concludes that the Respondent has registered and is using the disputed Domain Name 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 disputed Domain Name <bergdorfgoodmanoutlet.com> be transferred to the Complainant.
Ian Blackshaw
Sole Panelist
Date: October 11, 2014