NY and Co IP LLC v. Blue Face
Claim Number: FA2111001973065
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 NAME
The domain name at issue is <nyscompanystyles.com>, (‘the Domain Name’) registered with 1API GmbH.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 12, 2021; the Forum received payment on November 12, 2021.
On November 15, 2021, 1API GmbH confirmed by e-mail to the Forum that the <nyscompanystyles.com> Domain Name is registered with 1API GmbH and that Respondent is the current registrant of the name. 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 22, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 13, 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@nyscompanystyles.com. Also on November 22, 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 December 20, 2021 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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 for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN 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 Name be transferred from Respondent to Complainant.
A. Complainant
The Complainant’s contentions can be summarised as follows:
Complainant owns the marks NEW YORK & COMPANY, NY STYLE and other marks containing NY registered in the United States (e.g., NEW YORK & COMPANY – Reg. 2,507,567, registered Nov. 13, 2001; NY STYLE – Reg. 4,089,208, registered Jan. 17, 2012) for clothing (‘NY Marks’).
The Domain Name combines the distinctive elements of the Complainant’s NY marks adding two instances of the letter ‘s’ and the “.com” gTLD which does not prevent confusing similarity between the Complainant’s NY marks and the Domain Name.
Respondent does not have rights or legitimate interests in the Domain Name, is not commonly known by it and is not authorised by the Complainant to use the NY marks.
Respondent offers competing goods and services under the Domain Name mimicking the overall look and feel of the Complainant’s official site at nyandcompany.com and has previously registered other typosquatting versions of this official domain name of the Complainant and also registered the Domain Name after decisions under the UDRP for registering and using the domain names including the Complainant’s mark in bad faith for very similar sites to the one attached to the Domain Name which also mimicked the Complainant’s official site. This is not a bona fide offering of goods or services or a non-commercial legitimate or fair use. It is registration and use in bad faith. Respondent attempts to pass itself off as Complainant to disrupt Complainant’s business and attract consumers for commercial gain.
As well as registering several domain names containing the distinctive elements of the Complainant’s NY marks the Respondent has been the subject of several adverse decisions under the UDRP relating to the Complainant’s and third party marks and has registered a number of other domain names involving the trademarks of the Complainant and third parties.
Respondent’s use of a privacy service provides further evidence of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the marks NEW YORK & COMPANY, NY STYLE and other marks containing NY registered in the United States (e.g., NEW YORK & COMPANY – Reg. 2,507,567, registered Nov. 13, 2001; NY STYLE – Reg. 4,089,208, registered Jan. 17, 2012) for clothing. It owns the domain name nyandcompanystyle.com.
The Domain Name registered in 2021 offers competing goods and services to the Complainant and copies the look and feel of the Complainant’s official site using material taken from the Complainant’s site. The Respondent has registered a number of other domain names containing the distinctive elements of the Complainant’s NY marks and third party marks and has also been the subject of adverse decisions under the UDRP relating to both the Complainant’s and third party marks including cases involving the use of similar sites mimicking the site of the Complainant as involved in this case.
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 and is being used in bad faith.
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”).
The Domain Name in this Complaint combines distinctive elements of the Complainant’s NY marks (registered in the USA for clothing and used in commerce since at least 2008) the generic term ‘company’, two instances of the letter ‘s’ and the gTLD “.com”.
The addition of the generic word ‘company’ does not prevent confusing similarity between the Domain Name and the Complainant’s NY marks. See Abbott Laboratories v. Miles White, FA 1646590 (Forum Dec. 10, 2015) (holding that the addition of generic terms do not adequately distinguish a disputed domain name from complainant’s mark under Policy 4(a)(i).).
Panels have found that adding single letters to a registered mark in a domain name does not prevent confusing similarity between that domain name and that mark. See Twitch Interactive, Inc. v. Antonio Teggi, FA 1626528 (Forum Aug. 3, 2015) (finding that twitcch.tv is confusingly similar to the TWITCH TV trade mark because the domain name consisted of a common misspelling of the mark by merely adding the letter ‘c’). The Panel agrees that the addition of two instances of a single letter ‘s’ does not prevent confusing similarity between the Complainant’s marks and the Domain Name.
The gTLD “.com” does not serve to distinguish the Domain Name from the Complainant’s marks, which are the distinctive component of the Domain Name. See Red Hat Inc. v. Haecke, FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar to the Complainant’s NY marks.
As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.
Rights or Legitimate Interests
The Complainant has not authorized the use of its marks. There is no evidence or reason to suggest the Respondent is commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The use of the Domain Name is commercial so cannot be legitimate noncommercial fair use.
The web site attached to the Domain Name mimics the look and feel of the Complainant's web site including material taken from the Complainant’s site to offer competing goods. It does not make it clear that there is no commercial connection with the Complainant. The Panel finds this use is deceptive and confusing. As such it cannot amount to the bona fide offering of goods and services. See Am. Intl Group Inc. v. Benjamin, FA 944242 (Forum May 11, 2007) (finding that the Respondent's use of a confusingly similar domain name to compete with the Complainant's business did not constitute a bona fide use of goods and services.).
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
In the opinion of the panelist the use made of the Domain Name in relation to the Respondent’s site is confusing and disruptive in that visitors to the site might reasonably believe it is connected to or approved by the Complainant as it purports to offer products on a site mimicking the look and feel of the Complainant’s web site taking material from the Complainant’s web site, giving the impression that the site attached to the Domain Name is official and showing actual knowledge of the Complainant, its rights, business and services.
Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation or endorsement of the web site and services or goods offered on it likely to disrupt the business of the Complainant. See Asbury Auto Group Inc. v. Tex. Int'l Prop Assocs, FA 958542 (Forum May 29, 2007) (finding that the respondent's use of the disputed domain name to compete with the complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of a competing business and was therefore evidence of bad faith and use).
Finally the Complainant has brought evidence that the Respondent is the subject of previous UDRP Complaints in which the Complainant was successful against the Respondent in similar circumstances. There is also other evidence that the Respondent has been the subject of adverse rulings in the UDRP process involving third parties not connected to this Complaint and has registered numerous domain names containing the marks of third parties. Accordingly there is sufficient evidence of a pattern of bad faith registrations on the part of the Respondent. See The Toronto-Dominion Bank v. Ryan G Foo/PPA Media Services/Jinesh Shah/WhoIs Privacy Corp, FA 1408001576648 (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).).
As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under paragraphs 4(b)(ii), (iii) and (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nyscompanystyles.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: December 21, 2021
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