NY and Co IP LLC v. Blue Face
Claim Number: FA2109001966700
Complainant is NY and Co IP LLC (“Complainant”), represented by Renee Reuter, Missouri, USA. Respondent is Blue Face (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <nyandcompanys.us> and <nyandcompnay.us>, registered with 1API GmbH.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 28, 2021; the Forum received payment on September 28, 2021.
On September 30, 2021, 1API GmbH confirmed by e-mail to the Forum that the <nyandcompanys.us> and <nyandcompnay.us> domain names are registered with 1API GmbH and that Respondent is the current registrant of the names. 1API GmbH has verified that Respondent is bound by the 1API GmbH registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On October 5, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 25, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@nyandcompanys.us, postmaster@nyandcompnay.us. Also on October 5, 2021, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On November 1, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
1. Complainant, NY and Co IP LLC, owns the New York & Company brand, which is a specialty manufacturer and retailer of women's fashion apparel and accessories. Complainant has rights in the NEW YORK & COMPANY mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,446,405, registered June 10, 2008).
2. Respondent’s <nyandcompanys.us> and <nyandcompnay.us> domain names[i] are confusing similar to Complainant’s NEW YORK & COMPANY mark as they merely misspell Complainant’s mark and add the “.us” county code top-level domain (“ccTLD”).
3. Respondent does not have rights or legitimate interests in the <nyandcompanys.us> and <nyandcompnay.us> domain names. Complainant has not permitted Respondent to use the NEW YORK & COMPANY mark.
4. Additionally, Respondent does not use the domains for any bona fide offering of goods or services or legitimate noncommercial or fair use as the domains are inactive and may be used to pass off as Complainant.
5. Respondent registered or uses the <nyandcompanys.us> and <nyandcompnay.us> domain names in bad faith. Respondent engages in a pattern of bad faith registration.
6. Additionally, Respondent uses the domain names to attract users for commercial gain.
7. Finally, Respondent had constructive and actual knowledge of Complainant’s rights in the NEW YORK & COMPANY mark based on registration of the mark and previous UDRP proceedings against Respondent.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the NEW YORK & COMPANY mark. Respondent’s domain name is confusingly similar to Complainant’s NEW YORK & COMPANY mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the nyandcompanys.us> and <nyandcompnay.us> domain names and that Respondent registered and uses the domain name in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has rights in the NEW YORK & COMPANY mark based on registration of the mark with the USPTO (e.g., Reg. No. 3,446,405, registered June 10, 2008). Registration of a mark with the USPTO is a valid showing of rights in a mark. See H-D Michigan, LLC v. Private Whois Service, FA 1006001328876 (Forum July 12, 2010) (finding that “Complainant has sufficiently registered its HARLEY-DAVIDSON mark with the USPTO to prove Complainant’s rights in the mark according to Policy ¶ 4(a)(i), regardless of the fact that Respondent lives or operates outside the United States.”). Because Complainant provides evidence of registration of the NEW YORK & COMPANY mark with the USPTO, Complainant has proven its rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <nyandcompanys.us> and <nyandcompnay.us> domain names are confusing similar to Complainant’s NEW YORK & COMPANY mark as they merely misspell Complainant’s mark and add the “.us” ccTLD”. Misspelling a mark, or abbreviating part of a mark, as well as the addition of a ccTLD are insufficient to distinguish a domain name from a mark under Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Zhichao Yang, FA 1780211 (Forum May 3, 2018) (“Additionally, each at-issue domain name contains a misspelling or misprint of Complainant’s CLIPS4SALE and CLIPS4SALE.COM trademarks where an extra letter is added to the marks in forming the domain name.”); see also SEMCO Prods., LLC v. dmg world media (uk) ltd, FA 913881 (Forum Apr. 9, 2007) (finding that the <atlhomeshow.com> domain name was confusingly similar to the complainant’s ATLANTA HOME SHOW mark, as “atl” was a common abbreviation for the city of Atlanta); see additionally Allied Bldg. Prods. Corp. v. Henkel, FA 827652 (Forum Dec. 11, 2006) (holding that “it is well established that the top-level domain, here “.us,” is insignificant with regard to UDRP analysis” when determining confusing similarity). Thus, the Panel finds that the nyandcompanys.us> and <nyandcompnay.us> domain names are confusingly similar to the NEW YORK & COMPANY mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the nyandcompanys.us> and <nyandcompnay.us> domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent does not have rights or legitimate interests in the <nyandcompanys.us> and <nyandcompnay.us> domain names because Respondent is not commonly known by the NEW YORK & COMPANY mark. Under Policy ¶ 4(c)(iii), where a response is lacking, relevant WHOIS information may demonstrate that Respondent is not commonly known by a domain name and a lack of permission to use a mark is a further indication a respondent does not have rights or legitimate interests in the domain name. See Warner Bros. Entertainment Inc. v. José Gallardo, FA 1712001763166 (Forum Jan. 20, 2018) (“Respondent has not been commonly known by the <hogwartsmystery.com> domain name, and that Complainant has licensed or otherwise authorized Respondent to use the HOGWARTS mark for any reason. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “José Gallardo,” which does not resemble the domain name.”). Here, the WHOIS information of record identifies “Blue Face” as the registrant of the nyandcompanys.us> and <nyandcompnay.us> domain names and no information suggests Complainant authorized Respondent to use the NEW YORK & COMPANY mark. Respondent is not commonly known by the nyandcompanys.us> and <nyandcompnay.us> domain names under Policy ¶ 4(c)(iii).
Additionally, Complainant argues Respondent does not use the nyandcompanys.us> and <nyandcompnay.us> domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use as the domains are inactive and may be used to pass off as Complainant. Under Policy ¶¶ 4(c)(ii) and (iv), failure to make active use of a domain name incorporating the mark of another is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use. See Activision Blizzard, Inc. / Activision Publishing, Inc. / Blizzard Entertainment, Inc. v. Cimpress Schweiz GmbH, FA 1737429 (Forum Aug. 3, 2017) (“When Respondent is not using the disputed domain name in connection with an active website, the Panel may find that Respondent is not using the disputed domain name for a bona fide offering of goods or services.”). Nothing in the record indicates that Respondent has made any active use of the domain names.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered or uses the <nyandcompanys.us> and <nyandcompnay.us> domain names in bad faith because Respondent engages in a pattern of bad faith registration. Pervious UDRP rulings against a respondent and registration of multiple infringing domain names may indicate a pattern of bad faith under Policy ¶ 4(b)(ii). See The Toronto-Dominion Bank v. Ryan G Foo / PPA Media Services / Jinesh Shah / Whois Privacy Corp. / Domain Administratory / Fundacion Private Whois / Domain Admin / Whois Privacy Corp, FA1408001576648 (Forum Jan. 12, 2015) (“The Panel determines that Respondent’s documented history of adverse UDRP rulings, as well as Respondent’s multiple registrations relating to Complainant’s marks, are independently sufficient to constitute a pattern as described by Policy ¶ 4(b)(ii). Therefore the Panel finds bad faith under the provision.”). Complainant provides evidence of 18 previous UDRP cases involving Respondent, as well Respondent’s registration of four other domain names incorporating the NEW YORK & COMPANY mark. Therefore, the Panel agrees with Complainant and finds bad faith per Policy ¶ 4(b)(ii).
Additionally, Complainant argues that Respondent uses the nyandcompanys.us> and <nyandcompnay.us> domain names in bad faith to attract users for commercial gain. Under Policy ¶ 4(b)(iv), use of a domain name incorporating the mark of another to attract users to a respondent’s own website for commercial gain is evidence of bad faith registration and use. See MySpace, Inc. v. Myspace Bot, FA 672161 (Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme). Therefore, because the record supports Complainant’s assertion, the Panel finds bad faith per Policy ¶ 4(b)(iv).
Finally, Complainant contends that Respondent had constructive and actual knowledge of Complainant’s rights in the NEW YORK & COMPANY mark based on registration of the mark and previous UDRP proceedings against Respondent. While constructive knowledge is insufficient for a finding of bad faith, per Policy ¶ 4(a)(iii), actual knowledge of a Complainant’s trademark rights is sufficient to establish bad faith and can be demonstrated by the fame of the mark and the use the Respondent makes of the domain name. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."); see also Immigration Equality v. Brent, FA 1103571 (Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii)."). The Panel finds Respondent had actual knowledge of Complainant’s rights in the NEW YORK & COMPANY mark, which constitutes bad faith per Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nyandcompanys.us> and <nyandcompnay.us> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: November 8, 2021
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