Kate Spade LLC v. Domain Admin / Whois Privacy Corp.
Claim Number: FA1701001711990
Complainant is Kate Spade LLC (“Complainant”), represented by Brian J. Winterfeldt of Mayer Brown LLP, District of Columbia, USA. Respondent is Domain Admin / Whois Privacy Corp. (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <katespadenewyork.com>, registered with Internet Domain Service BS Corp.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 11, 2017; the Forum received payment on January 11, 2017.
On January 16, 2017, Internet Domain Service BS Corp confirmed by e-mail to the Forum that the <katespadenewyork.com> domain name is registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the name. Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service BS Corp 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 January 17, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 6, 2017 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@katespadenewyork.com. Also on January 17, 2017, 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 February 13, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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
1. Complainant uses the KATE SPADE NEW YORK mark in connection with its business in sales of handbags, all-purpose carrying bags and tote bags. Complainant owns the KATE SPADE NEW YORK mark through its numerous registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,446,491, registered April 24, 2001). The disputed domain name is confusingly similar to Complainant’s mark as Respondent has simply removed the spaces between the words of the mark and added the generic top-level domain (“gTLD”) “.com.”
2. Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name as demonstrated by the WHOIS information. Respondent has failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name. Rather, Respondent uses the disputed domain name to redirect Internet users to unrelated and competitive third-party websites.
3. Respondent has registered and is using the disputed domain name in bad faith. First, Respondent uses the disputed domain name to disrupt Complainant’s business, as it redirects Internet users to Complainant’s competitors. Respondent also uses the disputed domain name in this way for its own commercial gain. Finally, due to the fame of Complainant and its marks, there is no way Respondent registered the disputed domain name without knowledge of Complainant and its rights in the KATE SPADE NEW YORK mark.
B. Respondent
1. Respondent has failed to submit a Response.
1. Respondent’s <katespadenewyork.com> domain name is confusingly similar to Complainant’s KATE SPADE NEW YORK mark.
2. Respondent does not have any rights or legitimate interests in the <katespadenewyork.com> domain name.
3. Respondent registered or used the <katespadenewyork.com> domain name in bad faith.
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 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 (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 uses the KATE SPADE NEW YORK mark in connection with its business in sales of handbags, all-purpose carrying bags and tote bags. Complainant claims to own the KATE SPADE NEW YORK mark through its numerous registrations with the USPTO (e.g., Reg. No. 2,446,491, registered April 24, 2001). Prior panels have found such registrations to be indicative of rights in a mark under Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). Accordingly, the Panel finds that Respondent has rights in the KATE SPADE NEW YORK mark under Policy ¶ 4(a)(i).
Complainant argues the disputed domain name is confusingly similar to the KATE SPADE NEW YORK mark under Policy ¶ 4(a)(i), as Respondent has simply removed the spaces between the words of the mark and added the gTLD “.com.” Complainant argues that such changes are insignificant in the realm of Policy ¶ 4(a)(i). Typically, Panels have agreed with similar arguments. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (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.”). As such, this Panel agrees that Respondent’s disputed domain name is confusingly similar to Complainant’s mark according to Policy ¶ 4(a)(i).
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 (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 (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 argues that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant notes that Respondent is not commonly known by the disputed domain name. Complainant points to the WHOIS information, which lists “Domain Admin” as registrant of the disputed domain name. The Panel recalls that Respondent has failed to submit a Response in this proceeding, and accordingly, the Panel determines based on the WHOIS information that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name).
Complainant also argues that Respondent has failed to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively. Complainant states that Respondent uses the disputed domain name to redirect Internet users to unrelated and competing websites. Complainant has attached evidence of this alleged use. See Compl., at Attached Ex. H and I. The Panel agrees with Complainant’s argument and evidence here, and the Panel finds that Respondent has failed to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii), respectively. See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business).
Complainant alleges that Respondent has registered and is using the disputed domain name in bad faith. Complainant reiterates that Respondent is using the disputed domain name to redirect Internet users to competitive and unrelated websites. Complainant argues that such behavior indicates bad faith under Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv). Generally, panels would agree that this behavior does indeed show bad faith under Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”); see also Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (holding that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶ 4(b)(iv)). Consequently, the Panel finds that Respondent has acted in bad faith under Policy ¶¶ 4(b)(iii) and 4(b)(iv).
Finally, Complainant argues that due to the fame of its marks, there is no way that Respondent knew of Complainant and its marks when registering the disputed domain name. Thus, Respondent must have had actual and/or constructive knowledge, indicating bad faith under Policy ¶ 4(a)(iii). While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <katespadenewyork.com> domain name be TRANSFERRED from Respondent to Complainant.
____________________________________
John J. Upchurch, Panelist
Dated: February 24, 2017
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