G-III Leather Fashions, Inc. v. Andre Schneider / DomCollect AG
Claim Number: FA1312001534657
Complainant is G-III Leather Fashions, Inc. (“Complainant”), represented by Linda M. Merritt of Fulbright & Jaworski LLP, Texas, USA. Respondent is Andre Schneider / DomCollect AG (“Respondent”), Switzerland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <elizajdresses.com>, registered with 1&1 Internet AG.
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 December 13, 2013; the National Arbitration Forum received payment on December 13, 2013.
On December 19, 2013, 1&1 Internet AG confirmed by e-mail to the National Arbitration Forum that the <elizajdresses.com> domain name is registered with 1&1 Internet AG and that Respondent is the current registrant of the name. 1&1 Internet AG has verified that Respondent is bound by the 1&1 Internet AG 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 December 20, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 9, 2014 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@elizajdresses.com. Also on December 20, 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 January 14, 2014, 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:
1. Respondent’s < elizajdresses.com > domain name, the domain name at issue, is confusingly similar to Complainant’s ELIAZA J mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, G-III Leather Fashions, Inc., is a leading manufacturer of dresses under the ELIZA J brand and is the owner of a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the ELIZA J mark (Reg. No. 3,112,897, registered July 4, 2006). The domain name <elizajdresses.com> is confusingly similar to Complainant’s ELIZA J mark.
Respondent is not commonly known by the name ELIZA J nor does Respondent operate a business or other organization under the marks or name ELIZA J. Respondent’s website redirects to a pay-per-click landing page displaying links to sponsored advertisers for sellers of dresses that directly compete with Complainant’s dresses. Respondent is intentionally using the ELIZA J mark in the domain name to attract Internet searchers for commercial gain. Respondent had actual knowledge or reasonably should have had knowledge of Complainant’s ELIZA J mark when Respondent commenced use of <elizajdresses> and registered the <elizajdresses.com> domain name on April 24, 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 is a leading manufacturer of dresses under the ELIZA J brand and is the owner of a trademark registration with the USPTO for the ELIZA J mark (Reg. No. 3,112,897, registered July 4, 2006). While Respondent appears to reside in Switzerland, Policy ¶ 4(a)(i) does not require that Complainant register its mark in the country in which Respondent resides, so long as Complainant can establish rights in the mark in some jurisdiction. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Therefore, Complainant’s registration of the ELIZA J mark with the USPTO sufficiently establishes Complainant’s rights in the mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
Respondent’s <elizajdresses.com> domain name is confusingly similar to Complainant’s ELIZA J mark. Respondent adds the generic term “dresses” to Complainant’s mark in the disputed domain name, and this inclusion of a generic term is irrelevant to a Policy ¶ 4(a)(i) determination. See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element). The Panel also observes that Respondent omits the space in Complainant’s ELIZA J mark and adds the generic top-level domain (“gTLD”) “.com.” In U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007), the panel held that “Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).” The Panel therefore finds that Respondent’s omission of spaces and inclusion of a gTLD does not negate finding confusing similarity under Policy ¶ 4(a)(i). Thus, Respondent’s <elizajdresses.com> domain name is confusingly similar to Complainant’s ELIZA J mark pursuant to Policy ¶ 4(a)(i).
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.”).
Respondent is not commonly known by the name ELIZA J nor does Respondent operate a business or other organization under the mark or name ELIZA J. The registrant of the <elizajdresses.com> domain name is identified as “Andre Schneider / DomCollect AG” in the WHOIS record. Respondent does not submit any evidence that it is commonly known by the domain name. Consequently, the Panel holds that Respondent is not commonly known by the <elizajdresses.com> domain name according to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Respondent’s domain name redirects to a pay-per-click landing page, displaying links to sponsored advertisers for sellers of dresses that directly compete with Complainant’s dresses. Respondent’s <elizajdresses.com> domain name contains links that directly compete with Complainant such as “Find Eliza J Dresses For Women,” “Eliza J Ruffle Wrap Dress,” “Eliza J Lace & Faille Dress,” and others. In H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008), the panel found 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. Accordingly, Respondent is not using the <elizajdresses.com> domain name in connection with a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent is intentionally using the ELIZA J mark in the <elizajdresses.com> domain name to attract Internet searchers for commercial gain. Respondent’s <elizajdresses.com> domain name provides competing hyperlinks such as “Find Eliza J Dresses For Women,” “Eliza J Ruffle Wrap Dress,” “Eliza J Lace & Faille Dress,” and others. It appears that Respondent receives monetary compensation for driving traffic to third-party websites via the <elizajdresses.com> domain name. Accordingly, Respondent is capitalizing and commercially benefitting on the likelihood that users seeking Complainant will be confused when they reach the <elizajdresses.com> website and will thus generate income for Respondent. Prior panels have held that a respondent’s use of a disputed domain name to provide competing links demonstrates bad faith use and registration under Policy ¶ 4(b)(iv). See 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.’”). Thus, the Panel finds that Respondent has registered and is using the <elizajdresses.com> domain name in bad faith under Policy ¶ 4(b)(iv).
It clearly appears that Respondent had actual knowledge or reasonably should have had knowledge of Complainant’s ELIZA J mark when Respondent commenced use of <elizajdresses.com>. Respondent also had constructive notice of Complainant’s rights in the ELIZA J mark as a result of Complainant’s ownership of trademark registrations for the ELIZA J mark with the USPTO. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, in light of the use made of the associated website, this Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). 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 Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
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 <elizajdresses.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: January 29, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page