Mr. Manolo Blahnik and MB Foundation Limited and Manolo Blahnik International Limited v. Alexander Coleman
Claim Number: FA1811001816130
Complainant is Mr. Manolo Blahnik and MB Foundation Limited and Manolo Blahnik International Limited (“Complainant”), represented by Rahool Sarjua of DLA Piper UK LLP, United Kingdom. Respondent is Alexander Coleman (“Respondent”), Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <manoloblahnik.us.org>, registered with 1API GmbH.
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.
Paul M. DeCicco, as Panelist.
Complainant participated in the mandatory CentralNic Mediation, and the mediation process has terminated.
Complainant submitted a Complaint to the Forum electronically on November 13, 2018; the Forum received payment on November 12, 2018.
On November 13, 2018, 1API GmbH confirmed by e-mail to the Forum that the <manoloblahnik.us.org> domain name is registered with 1API GmbH and that Respondent is the current registrant of the name. 1API GmbH has verified that Respondent is bound by the 1API GmbH registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the CentralNic Dispute Resolution Policy (the “CDRP Policy”).
On November 15, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 5, 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@manoloblahnik.us.org. Also on November 15, 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 December 10, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 to the CDRP Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the CDRP Policy, CDRP 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 contends as follows:
Complainant uses the MANOLO BLAHNIK mark in connection with its luxury fashion brand.
Complainant has rights in the MANOLO BLAHNIK mark based upon its registration of the mark with trademark agencies around the world.
Respondent’s <manoloblahnik.us.org> domain name is confusingly similar to Complainant’s mark because Respondent includes the MANOLO BLAHNIK mark in the domain name and adds the “.us.org” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <manoloblahnik.us.org> domain name because Respondent is not commonly known by the disputed domain name and is not authorized or permitted to use Complainant’s mark in any fashion. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to sell counterfeit or unauthorized versions of Complainant’s products.
Respondent registered and uses the <manoloblahnik.us.org> domain name in bad faith. Respondent attempts to attract, for commercial gain, users to the disputed domain name’s website and create confusion among Internet users as to the source of the competing goods/services offered on the resolving website. Further, Respondent had actual knowledge of Complainant’s rights in the MANOLO BLAHNIK mark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the MANOLO BLAHNIK mark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the MANOLO BLAHNIK trademark.
Respondent uses the at-issue domain name to sell counterfeit or unauthorized versions of Complainant’s products.
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.
The CDRP also requires that Complainant have participated in a CentralNic Mediation, and that said mediation must have been terminated prior to the consideration of the Complaint.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the CDRP Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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.”).
Preliminary Issue: Multiple Complainants
In this proceeding there are three Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
The three Complainants in this matter are Manolo Blahnik (“Mr. Blahnik”), MB Foundation Limited (“MBF”), and Manolo Blahnik International Limited (“MBIL”). The Complaint alleges that Mr. Blahnik owns both MBF and MBIL. MBIL deals with manufacture, distribution, and sale of products designed and created by Mr. Blahnik, and MBF owns certain trademarks used by MBIL and its authorized licensees and partners worldwide. The Panel finds in light of the above and the fact that there is no objection to consolidating and continuing the proceedings as captioned, that the three Complainants (herein elsewhere referred to collectively as Complainant) have a sufficient nexus to each other and to the matters complained of, such that they shall be treated as if a single entity. See Facebook, Inc. and Instagram, LLC v. Xiamen eName Network Co., Ltd /weiwei, D2016-0409 (WIPO May 10, 2016) ("The Panel considers that it is fair and equitable in the circumstances of the case to order consolidation as requested. The Second Complainant is a subsidiary of the First Complainant and they have common interests."); see also, Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003) (treating the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a EUTM trademark registration for the MANOLO BLAHNIK trademark, as well as its other trademark registrations for such mark worldwide, evidence Complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Alibaba Group Holding Limited v. YINGFENG WANG, FA 1568531 (Forum Aug. 21, 2014) (“Complainant has rights in the ALIBABA mark under the Policy through registration with trademark authorities in numerous countries around the world.”).
Next, the at-issue domain name contains Complainant’s entire MANOLO BLAHNIK trademark less its space, all followed by the top-level domain name “.us” (the country code for The United States) “.org.” The slight differences between the at-issue <manoloblahnik.us.org> domain name and Complainant’s MANOLO BLAHNIK trademark are insufficient to distinguish one from the other for the purposes of the Policy. Therefore, the Panel finds that pursuant to Policy ¶ 4(a)(i) Respondent’s <manoloblahnik.us.org> domain name is confusingly similar to Complainant’s MANOLO BLAHNIK trademark. See Dell Inc. v. Suchada Phrasaeng, FA 1745812 (Forum Sep. 28, 2017) (“Adding geographical terms does not sufficiently distinguish a domain name from a mark to prevent a finding of confusingly similarity under a Policy ¶4(a)(i) analysis.”); see also See Dansko, LLC v. zhang wu, FA 1757745 (Forum Dec. 12, 2017) (finding the <danskoshoes.us.com> domain name to be confusingly similar to the DANSKO mark under Policy ¶ 4(a)(i), despite the addition of the “.us” ccTLD and the “.com” gTLD).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Alexander Coleman” and the record contains no evidence that otherwise tends to prove that Respondent is commonly known by the <manoloblahnik.us.org> domain name. The Panel therefore concludes that Respondent is not commonly known by the <manoloblahnik.us.org> domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Furthermore, Respondent uses the <manoloblahnik.us.org> domain name to sell counterfeit or unauthorized versions of Complainant’s products. Using the domain name in this manner indicates neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a non-commercial or fair use under Policy ¶4(c)(iii). See Fadal Engineering, LLC v. DANIEL STRIZICH, INDEPENDENT TECHNOLOGY SERVICE INC, FA 1581942 (Forum Nov. 13, 2014) (finding that Respondent’s use of the disputed domain to sell products related to Complainant without authorization “does not amount to 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).”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below Policy ¶ 4(b) bad faith circumstances are present and there is additional non-Policy ¶ 4(b) evidence from which the Panel may independently conclude that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
First, Respondent uses the confusingly similar <manoloblahnik.us.org> domain name to suggest that the website addressed by the domain name is somehow sponsored by or affiliated with Complainant. Respondent’s deceptive use of the MANOLO BLAHNIK trademark capitalizes on Complainant’s trademark to assist Respondent’s online marketing of counterfeit MANOLO BLAHNIK products via the <manoloblahnik.us.org> website. Use of the confusingly similar domain name to falsely suggest affiliation with Complainant indicates Respondent’s bad faith registration and use of the domain name under Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 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.”). Further, Respondent’s use of the domain name to market counterfeit goods, in itself, demonstrates Respondent’s bad faith. See H-D U.S.A., LLC v. Janis Vecvanags, FA1503001608165 (Forum Apr. 6, 2015) (holding that the respondent’s use of the disputed domain name to sell counterfeit HARLEY-DAVIDSON products disrupted the complainant’s business and indicated bad faith under Policy ¶ 4(b)(iii));
Finally, Respondent registered the <manoloblahnik.us.org> domain name knowing that Complainant had trademark rights in MANOLO BLAHNIK. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark and Respondent’s marketing of counterfeit MANOLO BLAHNIK products via the at-issue domain name. It is thus clear that Respondent intentionally registered the at-issue domain name to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <manoloblahnik.us.org> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (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").
Having established all three elements required under the CDRP Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <manoloblahnik.us.org> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: December 11, 2018
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