Saks & Company LLC v. Sally Loynes
Claim Number: FA1807001799540
Complainant is Saks & Company LLC (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Sally Loynes (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <saksfifthavenuesalestore.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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 31, 2018; the Forum received payment on July 31, 2018.
On August 2, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <saksfifthavenuesalestore.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 August 7, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 27, 2018 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@saksfifthavenuesalestore.com. Also on August 7, 2018, 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 August 29, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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
Complainant sells products from European and American designers for men and women in 39 luxury department stores across the United States. Complainant is part of Hudson’s Bay Company’s HBC portfolio of luxury to premium department stores and off-price fashion shopping destinations. Complainant has rights in the SAKS FIFTH AVENUE mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,994,280, registered Aug. 20, 1996). Respondent’s <saksfifthavenuesalestore.com> domain name is identical or confusingly similar to Complainant’s mark as it contains the entire mark and adds the generic terms “sale” and “store” along with the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <saksfifthavenuesalestore.com> domain name. Respondent is not commonly known by the disputed domain name, as the WHOIS information lists the registrant as “Sally Loynes.” Nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, the domain name resolves to a website that displays Complainant’s logo and feigns being an official website of Complainant. Respondent uses the infringing domain name to host a website purporting to market heavily discounted goods identical to those offered on Complainant’s own website, likely in an attempt to phish for customer’s personal and financial information.
Respondent registered and uses the <saksfifthavenuesalestore.com> domain name in bad faith. Respondent uses the domain name for commercial gain and to benefit from the goodwill and reputation associated with Complainant’s SAKS FIFTH AVENUE mark by passing off as Complainant. Such use disrupts Complainant’s business. Further, Respondent likely passes off as Complainant in order to phish for personal and/or financial information from unsuspecting users. Additionally, based on the use of the domain name, Respondent clearly knew of Complainant’s mark prior to registering the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant sells products from European and American designers for men and women in 39 luxury department stores across the United States. Complainant is part of Hudson’s Bay Company’s HBC portfolio of luxury to premium department stores and off-price fashion shopping destinations. Complainant has rights in the SAKS FIFTH AVENUE mark through its registration of the mark with the USPTO (e.g. Reg. No. 1,994,280, registered Aug. 20, 1996). Respondent’s <saksfifthavenuesalestore.com> domain name is identical or confusingly similar to Complainant’s mark.
Respondent registered the <saksfifthavenuesalestore.com> domain name on June 15, 2018.
Respondent has no rights or legitimate interests in the <saksfifthavenuesalestore.com> domain name. The domain name resolves to a website that displays Complainant’s logo and mimics being an official website of Complainant and purports to market heavily discounted goods identical to those offered on Complainant’s website.
Respondent registered and uses the <saksfifthavenuesalestore.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 has rights in the SAKS FIFTH AVENUE mark under Policy ¶ 4(a)(i)
through its registration of the mark with the USPTO (e.g. Reg. No. 1,994,280, registered Aug. 20, 1996). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i)).
Respondent’s <saksfifthavenuesalestore.com> domain name is confusingly similar to Complainant’s SAKS FIFTH AVENUE mark as it contains the entire mark and adds the generic terms “sale” and “store” along with the “.com” gTLD.
Respondent has no rights or legitimate interests in the <saksfifthavenuesalestore.com> domain name. The WHOIS identifies “Sally Loynes” as the registrant. Complainant has not authorized Respondent to use the SAKS FIFTH AVENUE mark. Respondent is not commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent’s <saksfifthavenuesalestore.com> domain name resolves to a website that displays Complainant’s logo and mimics being an official website of Complainant. Respondent uses the infringing domain name to host a website purporting to market heavily discounted goods identical to those offered on Complainant’s own website. Passing off shows a failure to make a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Therefore, Respondent fails to make a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
Respondent registered and uses the <saksfifthavenuesalestore.com> domain name in bad faith under Policy ¶¶ 4(b)(iii) & (iv) by disrupting Complainant’s business and creating a likelihood for confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name to commercially benefit by passing off as Complainant. See Lambros v. Brown, FA 198963 (Forum Nov. 19, 2003) (finding that the respondent registered a domain name primarily to disrupt its competitor when it sold similar goods as those offered by the complainant and “even included Complainant's personal name on the website, leaving Internet users with the assumption that it was Complainant's business they were doing business with”); see also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”).
Respondent had actual knowledge of Complainant’s rights in the SAKS FIFTH AVENUE mark at the time of registering the at-issue domain name. Therefore, Respondent registered and uses the <saksfifthavenuesalestore.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <saksfifthavenuesalestore.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: September 10, 2018
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