Maggie Sottero Designs, LLC v. wang bing
Claim Number: FA1205001444842
Complainant is Maggie Sottero Designs, LLC (“Complainant”), represented by Tyler Davis of Holland & Hart LLP, Colorado, USA. Respondent is wang bing (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <maggiasottero.com>, registered with Godaddy.com, LLC.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 18, 2012; the National Arbitration Forum received payment on May 18, 2012.
On May 21, 2012, Godaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <maggiasottero.com> domain name is registered with Godaddy.com, LLC and that Respondent is the current registrant of the name. Godaddy.com, LLC has verified that Respondent is bound by the Godaddy.com, LLC 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 May 22, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 11, 2012 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@maggiasottero.com. Also on May 22, 2012, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 18, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 makes the following assertions:
Respondent’s <maggiasottero.com> domain name, the domain name at issue, is confusingly similar to Complainant’s MAGGIE SOTTERO mark.
Respondent does not have any rights or legitimate interests in the domain name at issue.
Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Founded in 1997, Complainant is one of the most recognized bridal gown manufacturers in the world. Complainant’s MAGGIE SOTERO mark is well known tin the bridal gown industry for high end, high quality bridal wear. Complainant registered the MAGGIE SOTTERO with trademark authorities throughout the world, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,415,876 registered December 26, 2000)
Respondent is not commonly known by the disputed domain name and has never been associated or affiliated with Complainant and Complainant has never authorized Respondent to use the MAGGIE SOTTERO mark. Respondent uses the <maggiasottero.com> domain name to sell counterfeit wedding dresses, bridesmaid dresses, flower girl dresses, mother of the bride dresses, prom dresses, and quinceañera dresses. Respondent registered and is using the disputed domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the MAGGIE SOTTERO mark as to the source, sponsorship, affiliation, or endorsement of the disputed domain name and the products offered at the resolving website. Respondent was on notice of Complainant’s rights in the MAGGIE SOTTERO mark when it registered the disputed domain name on June 28, 2011.
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant has established rights in the MAGGIE SOTTERO mark by registering the mark with the USPTO (e.g., Reg. No. 2,415,876 registered December 26, 2000). The Panel concludes that Complainant established its rights in the MAGGIE SOTTERO mark under Policy ¶ 4(a)(i) because the mark is duly registered. See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Respondent’s <maggiasottero.com> domain name is confusingly similar to Complainant’s MAGGIE SOTTERO mark. The “e” in MAGGIE has been replaced by an “a” in the domain name. The disputed domain name also removes the space between terms of the mark and adds the generic top-level domain (“gTLD”) “.com.” Based upon the minor alterations to Complainant’s mark in the disputed domain name, the Panel finds that Respondent’s <maggiasottero.com> domain name is confusingly similar to Complainant’s MAGGIE SOTTERO mark under Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that the domain names <beanybaby.com>, <beaniesbabies.com>, <beanybabies.com> are confusingly similar to the complainant’s mark BEANIE BABIES).
The Panel finds that Policy ¶ 4(a)(i) has been established.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts that Respondent is not commonly known by the disputed domain name. Complainant states that Respondent is not, and has never been, associated or affiliated with Complainant and Complainant has never authorized Respondent to use the MAGGIE SOTTERO mark. The Panel notes that the WHOIS information identifies the registrant of the disputed domain name as “wang bing.” Based upon the evidence on record, the Panel concludes that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent is not using the disputed domain name to make a bona fide offering of goods or services. Respondent uses the <maggiasottero.com> domain name to sell counterfeit wedding dresses, bridesmaid dresses, flower girl dresses, mother of the bride dresses, prom dresses, and quinceañera dresses. A screenshot from the website associated with the disputed domain name indicates that Respondent offers dresses for sale. The Panel infers from the content provided on the website that Respondent charges Internet users that choose to purchase a dress from Respondent’s website. Therefore, Respondent is not making a bona fide offering of goods or services Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See eLuxury.com Inc. v. WangJunJie, FA 1075554 (Nat. Arb. Forum Nov. 30, 2007) (concluding that the sale of counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name)
Respondent has engaged in typosquatting, indicating a lack of rights and legitimate interests in the disputed domain name. Respondent merely replaced an “e” from its mark with an “a” and then used the new configuration, “maggia sottero” as its domain name. Accordingly, the Panel concludes that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent registered and is using the disputed domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the MAGGIE SOTTERO mark as to the source, sponsorship, affiliation, or endorsement of the disputed domain name and the products offered at the resolving website. Respondent sells dresses from the resolving website that purport to be Complainant’s products but are not. The sale of products from a website, such as this, is commercial for the purposes of the Policy. Therefore, Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv) because Respondent is trying to commercially gain by tricking Internet users into believing that Respondent and Complainant are affiliated. See Affliction, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain by creating confusion as to the complainant’s connection with the website by selling counterfeit products).
Further, Respondent has engaged in typosquatting, which is further evidence that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See K.R. USA, INC. v. SO SO DOMAINS, FA 180624 (Nat. Arb. Forum Sept. 18, 2003) (finding that the respondent’s registration and use of the <philadelphiaenquirer.com> and <tallahassedemocrat.com> domain names capitalized on the typographical error of Internet users seeking the complainant's THE PHILADELPHIA INQUIRER and TALLAHASSEE DEMOCRAT marks, evincing typosquatting and bad faith pursuant to Policy ¶ 4(a)(iii)).
Respondent was on notice of Complainant’s rights in the MAGGIE SOTTERO mark when it registered the disputed domain name. While some Panels have declined to find bad faith registration and use based upon constructive knowledge, the Panel finds that this Respondent had actual knowledge of Complainant’s rights in the MAGGIE SOTTERO mark when Respondent registered the disputed domain name. See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <maggiasottero.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: June 23, 2012
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