Asian and Western Classics B.V. v. New York Link, Inc.
Claim Number:† FA0502000422746
Complainant is Asian and Western Classics B.V. (ďComplainantĒ), represented by Paul D. McGrady of Greenberg Traurig LLP, 77 West Wacker Drive, Ste. 2500, Chicago, IL 60601.† Respondent is New York Link, Inc. (ďRespondentĒ), 5 East 22nd Street, New York, NY 10010.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <karllagerfeld.com>, registered with Tucows Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 16, 2005; the National Arbitration Forum received a hard copy of the Complaint on February 18, 2005.
On February 17, 2005, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the domain name <karllagerfeld.com> is registered with Tucows Inc. and that Respondent is the current registrant of the name.† Tucows Inc. has verified that Respondent is bound by the Tucows Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On February 21, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 14, 2005 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 16, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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."† 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. Respondentís <karllagerfeld.com> domain name is identical to Complainantís KARL LAGERFELD mark.
2. Respondent does not have any rights or legitimate interests in the <karllagerfeld.com> domain name.
3. Respondent registered and used the <karllagerfeld.com> domain name in bad faith.
B.† Respondent failed to submit a Response in this proceeding.
Complainant, Asian and Western Classics B.V., designs, sources and markets menís and womenís apparel and, through strategic licensing agreements, offers a variety of related apparel, acessories, footwear, fragrances and home furnishings.† Complainantís products are sold in Complainantís own establisments in Europe as well as in high level department and specialty stores throughout Europe and Asia.
Complainant holds numerous registrations for the KARL LAGERFELD mark, including an international registration with the World Intellectual Property Organization (Reg. No. 487965 issued August 30, 1984), which bestows rights in Germany, Austria, Benelux, Croatia, Spain, France, Italy, Liechtenstein, Macedonia, Morocco, Portugal, Serbia-Montenegro, Slovenia and Switzerland.† In addition, Complainant holds national registrations in several countries, including Germany, Norway, Turkey, France, Norway, Monaco and Macao.
Karl Lagerfeld is the principal designer for fashion companies such as Chanel and Fendi.† He began his work as a fashion designer in the 1950s, working with well-known designers such as Pierre Balmain, Jean Patou, Krizia and Charles Jourdan.† Mr. Lagerfeld also served as a consultant to Fendi and as an artistic director for Chloť.† In 2004, he introduced the KARL LAGERFELD line for H&M stores, which have a retail presence in Europe, Canada and the United States.†
Respondent registered the <karllagerfeld.com> domain name on December 13, 1996, well after Complainant registered its KARL LAGERFELD mark.† As of the date the Complaint was filed, the domain name did not resolve to any content.† Respondent provided evidence from the Internet archive at the <waybackmachine.org> domain name that the disputed domain name had not resolved to any content since 2000.† Furthermore, in 2000, the domain name resolved to Respondentís website at the <nylink.com> domain name that promoted the sale of Respondentís goods and services as an Internet Service Provider (ISP).† Additionally, Complainant has submitted evidence of at least two cases in which Respondent has registered domain names of others to prevent them from registering a corresponding domain name.
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."
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.
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.
Complainant has established in this proceeding that it has rights in the KARL LAGERFELD mark through registration with several national authorities as well as with multiple international authorities.† See Janus Intíl Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.† Respondent has the burden of refuting this assumption); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which Respondent operates.† It is sufficient that Complainant can demonstrate a mark in some jurisdiction).
The <karllagerfeld.com> domain name registered by Respondent is identical to Complainantís KARL LAGERFELD mark because the domain name incorporates Complainantís mark in its entirety, adding only the generic top-level domain (gTLD) ď.com.Ē† The Panel finds that it has been widely accepted under the Policy that the addition of a gTLD to Complainantís identical mark is irrelevant to making a determination under Policy ∂ 4(a)(i).† Therefore, the Panel concludes that the disputed domain name is identical to Complainantís registered mark.† See Blue Sky Software Corp. v. Digital Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical to Complainantís registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference"); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD) name Ď.comí is . . . without legal significance since use of a gTLD is required of domain name registrants.").
Accordingly, the Panel finds that Policy ∂ 4(a)(i) has been satisfied.†
Respondent has failed to respond to the allegations set forth by Complainant in the Complaint.† In this circumstance, the Panel is entitled to accept all reasonable allegations and inferences in the Complaint as true.† See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainantís allegations are true unless clearly contradicted by the evidence); see also Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (drawing two inferences based on Respondentís failure to respond: (1) Respondent does not deny the facts asserted by Complainant, and (2) Respondent does not deny conclusions which Complainant asserts can be drawn from the facts).
Complainant asserts that Respondent does not have rights or legitimate interests in the <karllagerfeld.com> domain name that contains Complainantís KARL LAGERFELD mark in its entirety.† Once Complainant makes a prima facie case in support of its allegations, the burden is shifted to Respondent to show that it does have rights or legitimate interests pursuant to Policy ∂ 4(a)(ii).† However, Respondent has not responded to Complainantís allegations and has, thus, presented no proof of Respondentís rights or legitimate interests.† Therefore, due to Respondentís failure to respond to the Complaint, the Panel will assume that Respondent lacks rights and legitimate interests in the disputed domain name.† See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).
According to an Internet archive produced by Complainant from <waybackmachine.org>, Respondent has used the <karllagerfeld.com> domain name to resolve to Respondentís website at the <nylink.com> domain name to promote the sale of Respondents ISP goods and services.† Cf. Telewizja Polska USA, Inc. v. Echostar Satellite Corp., No. 02 C 3293, 2004 WL 2367740, at *5 (N.D. Ill. Oct. 15, 2004) (finding images from the Way Back Machine admissible as evidence that falls ďoutside the ambit of the hearsay ruleĒ).† It is the Panelís determination that Respondentís prior use of a domain name confusingly similar to Complainantís KARL LAGERFELD mark to divert Internet users to a website sponsored by Respondent is not a use in connection with a bona fide offering of goods or services pursuant to Policy ∂ 4(c)(i) or a legitimate noncommercial or fair use of the domain name pursuant to Policy ∂ 4(c)(iii).† See U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that Respondentís use of Complainantís mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where Respondent attempted to profit using Complainantís mark by redirecting Internet traffic to its own website).
As of the time the Complaint was filed, Respondent was not using the <karllagerfeld.com> domain name to resolve to any content.† In fact, Complainant provided evidence that the only use Respondent has made of the disputed domain name was for a brief period in 2000 when Respondent directed the domain name to its own website, as discussed above.† Thus, the Panel finds that Complainantís failure to use the disputed domain name since 2000 constitutes passive holding and indicates that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ∂ 4(a)(ii).† See Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where Respondent has advanced no basis on which the Panel could conclude that it has a right or legitimate interest in the domain names, and no use of the domain names has been established); see also LFP, Inc. v. B & J Props., FA 109697 (Nat. Arb. Forum May 30, 2002) (finding that a respondent cannot simply do nothing and effectively ďsit on his rightsĒ for an extended period of time when that respondent might be capable of doing otherwise); see also LFP, Inc. v. B & J Props., FA 109697 (Nat. Arb. Forum May 30, 2002) (recognizing that in certain instances excusable delays will inevitably arise, but noting that those delays must be quantifiable and limited; they cannot extend indefinitely).
Complainant contends that Respondent has never been commonly known by the <karllagerfeld.com> domain name or any variations thereof.† Furthermore, Complainant points out that the WHOIS record for the disputed domain name identifies Respondent as ďNew York Link, Inc.Ē† Complainant also asserts that it has not granted Respondent any license, permission or authorization to use Complainantís KARL LAGERFELD mark or any confusingly similar variations.† The Panel finds nothing in the record to contest Complainantís assertions and concludes that Respondent has not established rights and legitimate interests in the disputed domain name pursuant to Policy ∂ 4(c)(ii).† See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating ďnothing in Respondentís WHOIS information implies that Respondent is Ďcommonly known byí the disputed domain nameĒ as one factor in determining that Policy ∂ 4(c)(ii) does not apply); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ∂ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").
Thus, the Panel finds that Policy ∂ 4(a)(ii) has been satisfied.
Respondent has registered a domain name identical to Complainantís registered mark, preventing Complainant from registering a corresponding domain name.† Complainant has provided evidence that Respondent has engaged in a pattern of cybersquatting.† See Gaulme SA & Jean-Paul Gaultier SA v. New York Link, D2000-0822 (WIPO Oct. 31, 2000) (transferring the <jeanpaulgautier.com> domain name to the complainant, owner of the JEAN-PAUL GAULTIER mark); see also Mugler v. New York Link, D2001-0713 (WIPO Oct. 18, 2001) (transferring the <thierry-mugler.com> domain name to the complainant, owner of the THIERRY MUGLER mark).† The Panel finds that Respondentís history of registering marks nearly identical to the marks of others to prevent those trademark owners from registering a corresponding domain name is evidence of bad faith registration and use of the disputed domain name pursuant to Policy ∂ 4(b)(ii).† See Am. Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding a bad faith pattern of conduct where Respondent registered many domain names unrelated to its business which infringe on famous marks and websites); see also Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that Respondent violated Policy ∂ 4(b)(ii) by registering multiple domain names that infringe upon othersí famous and registered trademarks).
Complainant provided evidence that Respondent has used the <karllagerfeld.com> domain name to resolve to Respondentís website, which promoted Respondentís goods and services.† Such use constitutes an attempt by Respondent to commercially benefit from attracting Internet users interested in locating Complainantís KARL LAGERFELD products and services, who type in Complainantís mark followed by the common gTLD ď.com.Ē† The Panel determines that Respondentís attempts to benefit from the goodwill surrounding Complainantís mark by attracting Internet users to Respondentís website through a likelihood of confusion with Complainantís mark and diverting them for commercial gain is evidence of bad faith registration and use pursuant to Policy ∂ 4(b)(iv).† See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ∂ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent).
Although evidence of bad faith registration and use may be shown by proving the existence of any of the four circumstances listed under Policy ∂ 4(b), the Panel is entitled to consider other factors in support of its finding of bad faith registration and use.† See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the ďtotality of circumstancesĒ); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (ďthe examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusiveĒ).
Complainant has provided evidence that Respondent has not used the <karllagerfeld.com> domain name for almost five years.† Furthermore, Respondent did not provide any evidence of demonstrable preparations to use the disputed domain name.† Under these circumstances, the Panel concludes that Respondentís failure to use the domain name for this period constitutes passive holding and is evidence of bad faith registration and use pursuant to Policy ∂ 4(a)(iii).† See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also Mondich & Am. Vintage Wine Biscuits, Inc. v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that Respondentís failure to develop its website in a two year period raises the inference of registration in bad faith); see also Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ∂ 4(b)(iv) even though Respondent has not used the domain name because ďIt makes no sense whatever to wait until it actually Ďusesí the name, when inevitably, when there is such use, it will create the confusion described in the PolicyĒ).
The Panel finds that Policy ∂ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <karllagerfeld.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:† March 30, 2005
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