The Complainant is BCBG IP Holdings LP of New York, New York, United States of America ("United States"), represented by Tucker & Latifi, LLP, United States.
The Respondent is Mo Zeghloul of Pittsburgh, Pennsylvania, United States.
The disputed domain name <bcbgmaxazriaonlineoutlet.com> (the "Disputed Domain Name") is registered with GoDaddy.com, LLC (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 8, 2017. On November 9, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 10, 2017, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 17, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 7, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 8, 2017.
The Center appointed Lynda M. Braun as the sole panelist in this matter on January 11, 2018. 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 two brands, BCBG and BCBG MAX AZRIA, founded in 1989 by the designer Max Azria and his wife, Lubov Azria. The Complainant's brands have expanded over the past 28 years in the United States and worldwide. The Complainant owns numerous trademarks for BCBG and BCBG MAX AZRIA for a wide variety of goods and services, including, but not limited to, clothing, footwear, handbags and online retail services. The trademark registrations, dating back to as early as December 5, 1995 (with first use in commerce of 1990), are United States trademarks in International Classes 25 and 35, European Union trademarks in International Class 35, and trademarks in 85 additional countries (collectively, the "BCBG Mark").
The Respondent registered the Disputed Domain Name on April 12, 2017. The Disputed Domain Name resolves to a website that is an online store that displays, advertises and seemingly sells BCBG goods.
The following are the Complainant's contentions:
- The Disputed Domain Name is confusingly similar to the Complainant's Mark.
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
- The Respondent registered and is using the Disputed Domain Name in bad faith.
- The goods on the Respondent's website are counterfeit.
- The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant's contentions.
In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)(i-iii)):
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) The Disputed Domain Name was registered and is being used in bad faith.
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.
It is uncontroverted that the Complainant has established rights in the BCBG Mark based on longstanding use as well as its trademark registrations for the BCBG Mark in the United States and in other jurisdictions. The Disputed Domain Name consists of the BCBG Mark in its entirety, followed by the descriptive term "onlineoutlet", and the generic Top-Level Domain ("gTLD") ".com". It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of a descriptive or generic word. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo, WIPO Case No. D2011-0795; see also Hoffmann-La Roche, Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923.
This is especially true where, as here, the descriptive word is associated with the Complainant and its goods or services because "onlineoutlet" following the BCBG Mark in the Disputed Domain Name infers that the items offered on the website are sold on the Respondent's website at a discount. See, e.g., Gateway Inc. v. Domaincar, WIPO Case No. D2006-0604 (finding the domain name <gatewaycomputers.com> confusingly similar to the trademark GATEWAY because the domain name contained "the central element of the Complainant's GATEWAY marks, plus the descriptive word for the line of goods and services in which the Complainant conducts its business").
Finally, the addition of a gTLD such as ".com" in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the 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 disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production to demonstrate rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 2.1.
In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant's prima facie case. Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its BCBG Mark, nor does the Complainant have any type of business relationship with the Respondent. Finally, the name of the Respondent has no apparent connection to the Disputed Domain Name that would suggest that it is related to a trademark or trade name in which the Respondent has rights. Based on the use made of the Disputed Domain Name (discussed below), the Panel finds that the Respondent is not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Name.
Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.
This Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent's bad faith pursuant to paragraph 4(b) of the Policy.
First, the Respondent attempted to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's BCBG Mark. The Panel finds that the Respondent registered the Disputed Domain Name to attract customers to its website by using a domain name that is confusingly similar to the Complainant's BCBG Mark. The use of a domain name to intentionally attempt to attract Internet users to a registrant's website by creating a likelihood of confusion with a complainant's mark as to the source, sponsorship, affiliation or endorsement of the registrant's website for commercial gain demonstrates registration and use in bad faith. In addition, the online store at the Disputed Domain Name is confusingly similar to the Complainant's genuine online retail store at "www.bcbg.com". Thus, the Respondent's attempt to use the significant goodwill in the BCBG Mark by registering the Disputed Domain Name and using that Disputed Domain Name to misdirect visitors to a website which appears to be the Complainant's official site allegedly advertising and seemingly selling genuine BCBG products, demonstrates the Respondent's bad faith registration and use of the Disputed Domain Name under the Policy, paragraph 4(b)(iv). Such use creates the impression that the Respondent's website is sponsored, affiliated or endorsed by the Complainant.
Second, the Panel finds that the Respondent had actual knowledge of the Complainant's rights in its widely‑used BCBG Mark when registering the Disputed Domain Name. The Respondent's actual knowledge of the Complainant's rights can be inferred from the Respondent's use of the BCBG Mark to create a website that displays and sells goods to convince customers that the website is affiliated with the genuine BCBG brand. The Complainant has alleged that the website to which the Disputed Domain Name resolves offers for sale unauthorized and/or counterfeit goods and this assertion has not been rebutted by the Respondent. This is strong evidence of bad faith. See Prada S.A. v. Domains for Life, WIPO Case No. D2004-1019.
Third, the Respondent's registration and use of the Disputed Domain Name that is confusingly similar to the Complainant's well-known trademark is sufficient evidence of bad faith registration and use. See Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (use of a name connected with such a well-known service and product by someone with no connection to the service and product suggests opportunistic bad faith).
Finally, the Respondent has exhibited a pattern of bad faith registration and use of domain names that contain well-known trademarks. The Panel conducted a reverse WhoIs search and found that the Respondent has registered 163 such domain names, which pattern of serial abusive cybersquatting is strong evidence of bad faith.
Accordingly, the third element of paragraph 4(a) of the Policy has been met by the 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, <bcbgmaxazriaonlineoutlet.com>, be transferred to the Complainant.
Lynda M. Braun
Sole Panelist
Date: January 14, 2018