national arbitration forum

 

DECISION

 

Stuart Weitzman IP, LLC v. Jeff Lander

Claim Number: FA1310001526245

PARTIES

Complainant is Stuart Weitzman IP, LLC (“Complainant”), represented by Joseph C. Gioconda of The Gioconda Law Group PLLC, New York, USA.  Respondent is Jeff Lander (“Respondent”), Panama.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <stuartweitzmanshoes.com>, registered with Fabulous Pty. Ltd.

 

PANEL

The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Houston Putnam Lowry, Chartered Arbitrator, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 23, 2013; the National Arbitration Forum received payment on October 25, 2013.

 

On October 23, 2013, Fabulous Pty. Ltd. confirmed by e-mail to the National Arbitration Forum that the <stuartweitzmanshoes.com> domain name is registered with Fabulous Pty. Ltd. and that Respondent is the current registrant of the name.  Fabulous Pty. Ltd. has verified that Respondent is bound by the Fabulous Pty. Ltd. 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 October 29, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 18, 2013 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@stuartweitzmanshoes.com.  Also on October 29, 2013, 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 November 22, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

          Complainant is a well-known and successful designer, manufacturer, and retailer of women’s footwear and handbags.  Complainant sells its high quality goods to consumers through its chain of retail stores, partnerships with department stores, and on its website stuartweitzman.com.

 

            Complainant has expended a great deal of time, effort and money in developing and promoting its name and Stuart Weitzman products, including women’s footwear and handbags.  The retail store services and products offered by Stuart Weitzman have been the subject of laudatory editorial coverage in a number of leading domestic and international magazines and journals, including Vogue, Harper’s Bazaar, and Elle, among others.  As a result of extensive sales, marketing and advertising in the United States and throughout the world, Stuart Weitzman has developed a global reputation and worldwide goodwill in its business, in its trademarks, and in the goods and services it supplies by reference to its marks.

 

            Complainant is the registrant and/or owner of the federally registered trademarks for STUART WEITZMAN (hereinafter, the “Weitzman Trademarks”) for handbags, shoes, retail store services featuring shoes, handbags and pocketbooks, and its personal name, among others.  The federal registrations for the Weitzman Trademarks are in full force and effect.  Complainant has made substantially exclusive and continuous use of the Weitzman Trademarks and personal name in commerce for a number of years, long prior to the registration of the Infringing Doman Name by Respondent.

 

            This Complaint is based on the following federally registered trademarks and/or service marks for the Weitzman Trademarks that are owned by Complainant:

 

 

 

STUART WEITZMAN  Reg. No. 1,386,002       

G&S: Handbags and shoes

 

STUART WEITZMAN  Reg. No. 2,749,908       

G&S: Retail store services featuring shoes, handbags and pocketbooks

 

           

[Image redacted] Reg.No. 3,474,821       

G&S: Handbags, shoes, and retail store services featuring shoes, handbags and pocketbooks

 

In summary, by virtue of Complainant’s prominent, substantial, and longstanding use of the Weitzman Trademarks and personal name, which long predates Respondent’s registration of the Domain Name, its extensive marketing and promotional activities, its unsolicited media attention, and the Complainant’s strong enforcement and registration program, the Weitzman Trademarks are highly distinctive trademarks that serve to symbolize substantial goodwill.

 

FACTUAL AND LEGAL GROUNDS

 

          The UDRP requires the transfer or cancellation of a domain name if the complainant can establish (1) that the domain name at issue is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (2) that the respondent has no rights or legitimate interests with respect to the domain name; and (3) that the respondent has registered and used the domain name in bad faith.  Each of these factors favors Complainant in this case.  Accordingly, transfer of the Infringing Domain Name to Complainant’s control is appropriate.

 

A.        The Infringing Domain Name is Identical or Confusingly Similar to

Complainant’s Trademarks

 

            The Infringing Domain Name is at least confusingly similar to the Weitzman Trademarks and personal name.  Respondent, who has no affiliation with Complainant, currently owns and operates the Infringing Domain Name, which fully and identically incorporates the Weitzman Trademarks and personal name into its second-level domain, stuartweitzmanshoes.

 

            In short, the Panel must find that the infringing domain name is at least confusingly similar to Complainant’s trademarks.

 

            Accordingly, this first prong of the test under the UDRP favors Complainant.

 

B.        Respondent has no Right or Legitimate Interest in the Domain Name

 

            The UDRP sets forth a list of circumstances that can demonstrate a right or legitimate interest in a disputed domain name.  It appears that none of these circumstances are present in this case.  Accordingly, the Panelist must conclude that Respondent has no right or legitimate interest in the domain name.

           

            The UDRP provides that a right or legitimate interest in a disputed domain name may be demonstrated where the registrant has been commonly known by the domain name, even if it has acquired no trademark or service mark rights.  To the best of Complainant’s knowledge, Respondent is not known by any name consisting in whole or in part of the wording STUART WEITZMAN or its substantial equivalent; indeed, it could not be so without authorization from Complainant.  Respondent is also neither an agent nor a licensee of Complainant.

 

            Otherwise, a respondent may demonstrate a right or legitimate interest in a domain name only if it can establish (a) that prior to receiving any notice of the dispute, it used or made demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (b) that it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or tarnish the trademark or service mark at issue.  In this case, Respondent will not be able to make such a showing on these provisions.  Respondent has neither prepared to use nor actually used the domain name in any bona fide way for purposes of offering goods or services.  Indeed, the Infringing Domain Name is currently parked without any content and being offering for sale to the highest bidder on the Sedo.com Domain Marketplace.  Also, Respondent may not argue that a fair use has been made of the domain name.  The Weitzman Trademarks are distinctive and associated in the public’s mind with Complainant. 

 

            Additionally, based on Complainant’s extensive advertising, sales, and the popularity of its respective products, the Weitzman Trademarks and personal name have acquired secondary meaning so that the public associates these trademarks exclusively with Complainant.  Respondent is misappropriating the Weitzman Trademarks and personal name in order to misleadingly divert consumers away from Complainant’s own website, or those operated by its partners, to a site accessible under the Infringing Domain Name for commercial gain, and with the intent to tarnish and disparage the Weitzman Trademarks and personal name, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of its infringing website, all of which poses serious harm to the goodwill represented by the Weitzman Trademarks and personal name. 

 

            Respondent has no right to or legitimate interest in engaging in conduct that is to the detriment of Complainant.  The use of the Weitzman Trademarks and personal name has and will continue to dilute the distinctive, unique, and source identifying function of the Weitzman Trademarks and personal name and cause substantial damage to Complainant and its reputation.^[1] In short, the Panel must find that Respondent has no rights or legitimate interest in the domain name.

 

            Accordingly, this second prong of the test under the UDRP favors Complainant.

 

C.        Respondent has Registered and Used the Domain Name in Bad Faith

 

The UDRP lists several sets of circumstances that constitute evidence of the registration and use of a domain name in bad faith.  Various indicia of bad faith are present in this case.

 

The UDRP provides for a finding of bad faith where a respondent intentionally attempts to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of a respondent’s web site or location or of a product or service on a respondent’s web site or location.  In this case, Respondent’s registration also took place well after Complainant’s registration of the Weitzman Trademarks.  The circumstances strongly suggest an opportunistic registration of the Infringing Domain Name by Respondent to trade off of the goodwill inherent to the Weitzman Trademarks and personal name, all of which Respondent had at least constructive notice of.  This alone is sufficient to support a finding of bad faith.  Further, Respondent has registered and is currently selling the Infringing Domain Name for commercial gain in a deliberate attempt to confuse consumers and defraud the public by creating the false impression that Infringing Domain Name is, in fact, Complainant’s genuine Internet website, or, at the very least, is associated with or sponsored by Complainant, which it is not.

 

In short, the Panel must find that Respondent has registered and used the Infringing Domain Name in bad faith.

 

Accordingly, this third prong of the test under the UDRP favors Complainant.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(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.

 

DISCUSSION

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 the following three elements to obtain an order cancelling or transferring a domain name:

 

(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.”).

 

Identical and/or Confusingly Similar

Complainant is a well-known designer, manufacturer, and retailer of women’s shoes and handbags. Complainant owns rights in the STUART WEITZMAN mark through registrations of the mark with the United States Patent & Trademark Office (“USPTO”) (e.g., Reg. No. 1,386,002 registered March 11, 1986). A complainant may establish its rights in a mark under Policy ¶4(a)(i) by registering the mark with the USPTO. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). A complainant does not need to register its mark in the respondent’s country of residence to establish its rights in the mark under the Policy. 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). Therefore, Complainant’s registration of the STUART WEITZMAN mark with the USPTO adequately establishes Complainant’s rights in the mark under Policy ¶4(a)(i).

 

Complainant claims the <stuartweitzmanshoes.com> domain name is confusingly similar to Complainant’s STUART WEITZMAN mark because the domain name fully appropriates the mark. The disputed domain name eliminates the space found between words in Complainant’s mark, adds the generic top-level domain (“gTLD”) “.com,” and adds the generic term “shoes.”  A domain name is confusingly similar to a complainant’s mark even though the domain name eliminates the space found between words in the mark and adds a gTLD such as “.com” (or a ccTLD) See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names.  Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark”). In Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004), the panel ruled a domain name is confusingly similar to a complainant’s mark where the domain name incorporates the mark and merely adds a generic or descriptive word. The added word “shoes” is descriptive of some of the products marketed by Complainant under its STUART WEITZMAN mark. For the foregoing reasons, the <stuartweitzmanshoes.com> domain name is confusingly similar to Complainant’s STUART WEITZMAN mark pursuant to Policy ¶4(a)(i).

 

The Panel finds Policy ¶4(a)(i) satisfied.

 

Rights or Legitimate Interests

Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii).  Then the burden shifts to Respondent to show it has 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 claims Respondent is not commonly known by any name consisting in whole or in part of the wording STUART WEITZMAN. A panel will normally find a respondent is not commonly known by a disputed domain name where there is nothing the record, including the WHOIS information, to suggest otherwise. See, e.g., M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶4(c)(ii) based on the WHOIS information and other evidence in the record). The WHOIS information when this proceeding was brought indicated the disputed domain name was registered using a privacy service.  The present WHOIS information identified “Jeff Lander” as the registrant of the <stuartweitzmanshoes.com> domain name once this proceeding was commenced. The WHOIS information shows Respondent is commonly known as “Jeff Lander” and not as <stuartweitzmanshoes.com>. This Panel finds Respondent is not commonly known by the disputed domain name pursuant to Policy ¶4(c)(ii).

 

Complainant claims Respondent is not using the disputed domain name for a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii) because the website resolves to a parked website. The <stuartweitzmanshoes.com> domain name resolves to a website that promotes various generic hyperlinks, including links entitled “NORDSTROM Official Site,” “Sexy Shoes & Heels,” “Stride Rite- Official Site,” and “Bridal Wedding Shoe, 80% OFF.” The website clearly promotes links to Complainant’s competitors in the women’s shoe industry. A respondent’s use of a disputed domain name to host links to complainant’s competitors is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See, e.g., H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use). Respondent has failed to use the disputed <stuartweitzmanshoes.com> in a manner protected under Policy ¶¶4(c)(i) or 4(c)(iii).

 

Complainant claims Respondent has offered the disputed domain for sale to the general public.  This is further evidence Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶4(a)(ii). The <stuartweitzmanshoes.com> domain name is being offered for sale on the “Sedo” domain marketplace, which solicits Internet users to make an offer to purchase the domain name. A respondent’s willingness to sell a disputed domain name is evidence the respondent lacks rights or legitimate interests in the domain name under Policy ¶4(a)(ii). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶4(a)(ii)). In light of the fact Respondent is offering to sell the <stuartweitzmanshoes.com> domain name on the “Sedo” domain marketplace (and this appears to be the sole purpose for registering the domain name), the Panel finds Respondent lacks rights or legitimate interests in the disputed domain name pursuant to Policy ¶4(a)(ii).

 

Finally, Respondent used a privacy service to register the disputed domain name.  This means Respondent was not willing to publicly associate Respondent’s name to the disputed domain name.  The only one who publicly associated itself with the disputed domain name was the “bare” legal trustee (the privacy service who did not control the content of the web site).  This means Respondent acquired no rights or legitimate interests while holding the disputed domain name.

 

The Panel finds Policy ¶4(a)(ii) satisfied.

 

Registration and Use in Bad Faith

Respondent has offered the disputed domain name for sale to the general public, which evidences Respondent’s bad faith under Policy ¶4(b)(i). The <stuartweitzmanshoes.com> domain name is being offered for sale on the “Sedo” domain marketplace, which solicits Internet users to make an offer to purchase the domain name. A respondent’s offering of a disputed domain name for sale to the general public demonstrates the respondent’s bad faith because the respondent registered the disputed domain name with the primary intent of selling it. See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”). Respondent has failed to rebut this claim.  In this case, it appears Respondent registered the <stuartweitzmanshoes.com> domain name with the primary intent of selling it, demonstrating Respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶4(b)(i).

 

Complainant claims Respondent has demonstrated bad faith registration and use under Policy ¶4(b)(iv) because the disputed domain name is being used to attract Internet users to a parked website for Respondent’s commercial gain. When the disputed domain name resolves to a parked website operated by a domain parking company, the respondent is still responsible for the content associated with the disputed domain name. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“Although the websites accessed via the Disputed Domains may be operated by domain parking service providers, that activity is legally and practically attributable back to respondent.”). According to a screenshot submitted by Complainant, the <stuartweitzmanshoes.com> domain name resolves to a website that promotes various generic hyperlinks, including links entitled “NORDSTROM Official Site,” “Sexy Shoes & Heels,” “Stride Rite- Official Site,” and “Bridal Wedding Shoe, 80% OFF.” The <stuartweitzmanshoes.com> domain name is clearly being used to promote links to Complainant’s competitors in the women’s shoe industry. It constitutes bad faith registration and use of a disputed domain name under Policy ¶4(b)(iv) where the domain name promotes hyperlinks to third-party competitors of the complainant, because the respondent presumably receives click-through fees therefrom. See, e.g., Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’). In this case, the Panel presumes Respondent is commercially profiting from its promotion of competing hyperlinks in the form of click-through fees (or at least free parking).  Respondent has demonstrated bad faith registration and use of the disputed domain name pursuant to Policy ¶4(b)(iv).

 

Finally, the registration of a disputed domain name in using a privacy service raises the rebuttable presumption of bad faith registration and use in a commercial context.  Respondent has done nothing to rebut this presumption.  For that reason alone, this Panel determines Respondent registered and used the domain name in bad faith.

 

The Panel finds Policy ¶4(a)(iii) satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.

 

Accordingly, it is Ordered the <stuartweitzmanshoes.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Houston Putnam Lowry, Chartered Arbitrator, Panelist

Dated: Tuesday, November 26, 2013