Kate Spade LLC. v. Kurt Thayer
Claim Number: FA0802001143989
Complainant is Kate Spade LLC (“Complainant”), represented by Gene
Bolmarcich, of Liz Claiborne Inc.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <katespadestore.com>, registered with Godaddy.com.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 12, 2008; the National Arbitration Forum received a hard copy of the Complaint on February 25, 2008.
On February 13, 2008, Godaddy.com confirmed by e-mail to the National Arbitration Forum that the <katespadestore.com> domain name is registered with Godaddy.com and that the Respondent is the current registrant of the name. Godaddy.com has verified that Respondent is bound by the Godaddy.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 28, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 19, 2008 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on March 20, 2008.
On March 27, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant alleges, among other things, the following:
Complainant sells in interstate commerce high fashion articles, including handbags, carrying bags, tote bags, shoulder bags, clutch purses, athletic bags, backpacks, wallets, coin purses, organizers, paper goods and printed matter, cosmetic bags, shoes, fragrance and eyewear.
Complainant is the owner of federally registered trademarks, including the mark KATE SPADE (Reg. No. 2,064,708, issued May 27, 1997).
Since 1993, Complainant has used “KATE SPADE” as its corporate name.
As a result of Complainant’s extensive advertising and promotion of products bearing the KATE SPADE trademarks, Complainant has built up substantial goodwill in the marks.
Respondent does not have any legitimate rights in a trademark or service mark that is identical, similar or in any way related to the KATE SPADE mark.
Kate Spade is not Respondent's personal name, Respondent does not actually engage in any lawful business or commerce under the name Kate Spade, and Respondent is not known to the public by the name Kate Spade.
Respondent is not a licensee of Complainant, nor has Respondent ever been authorized by Complainant to use the KATE SPADE marks or any mark comprising or containing the mark KATE SPADE or to register the <katespadestore.com> domain name or any other domain name.
Respondent is not and has not been using the contested domain name in connection with any bona fide offering of goods and services.
The website associated with Respondent’s domain name has no connection whatsoever to Complainant, but rather is used to sell counterfeit KATE SPADE branded products or otherwise provide links to online auctions involving a plethora of Kate Spade branded products of unknown authenticity.
Respondent derives commercial benefit from these diversions due to click-through fees from these links.
Respondent had actual or constructive knowledge of Complainant and of Complainant’s KATE SPADE mark when it registered the disputed domain name.
Respondent's registration and use of a domain name containing Complainant’s identical mark is inherently deceptive and is likely to confuse Internet users as to the source, sponsorship, affiliation or endorsement of Respondent’s website.
B. Respondent alleges the following:
“I was unaware of the copyright issues when I purchased the domain. I have no problem giving up the domain (<katespadestore.com>) provided that i [sic] have nothing further filed against me and am not liable to pay for anything.”
Paragraph 4(a) of the Policy requires that, in the ordinary course, Complainant must prove each of the following to obtain from a Panel an order that a domain name be transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Notwithstanding the foregoing, Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
Further, Policy ¶ 3(a) provides for the transfer of a domain name registration upon the written instructions of the parties to a UDRP proceeding without the need for otherwise required findings and conclusions. See Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat. Ar. Forum Jan. 13, 2004; see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum Jun. 24, 2005).
Respondent does not contest the material allegations of the Complaint, and the parties have effectively agreed in writing to a transfer of the subject domain name from Respondent to Complainant without the need for further proceedings.
It is therefore Ordered that the < katespadestore.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: April 10, 2008
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