Mr. Manolo Blahnik and MB Foundation Limited and Manolo Blahnik International Limited v. Nina Talalayevsky
Claim Number: FA1811001814739
Complainants are Mr. Manolo Blahnik, MB Foundation Limited, and Manolo Blahnik International Limited (“Complainant”), represented by Rahool Sarjua of DLA Piper UK LLP, United Kingdom. Respondent is Nina Talalayevsky (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <manolo-blahnik.us>, registered with NameCheap, Inc.
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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 2, 2018; the Forum received payment on November 2, 2018.
On November 3, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <manolo-blahnik.us> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On November 9, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 29, 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@manolo-blahnik.us. Also on November 9, 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 3, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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 usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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 is known internationally as a provider of luxury fashion items, including, but not limited to, shows and handbags designed by Complainant. Complainant has rights in the MANOLO BLAHNIK mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,373,422, registered Jan. 22, 2008). See Compl. Annex 5. Respondent’s <manolo-blahnik.us> domain name is identical or confusingly similar to Complainant’s mark as it adds a hyphen between the terms of the mark and appends the “.us” country code top-level domain (“ccTLD”).
Respondent has no rights or legitimate interests in the <manolo-blahnik.us> domain name. Respondent is not commonly known by the disputed domain name, 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, Respondent uses the domain name to offer Complainant’s products for sale at greatly reduced prices without authorization. See Compl. Annexes 15 (Respondent’s website) & 16 (Complainant’s website).
Respondent registered and uses the <manolo-blahnik.us> domain name in bad faith. Respondent has intentionally attempted to attract, for commercial gain, Internet users to its competing website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website. See Compl. Annex 15. Further, Respondent clearly had actual knowledge of Complainant’s rights in the mark given its longstanding reputation and acclaim.
B. Respondent
Respondent failed to submit a Response in this proceeding. Respondent registered the <manolo-blahnik.us> domain name on May 10, 2018.
The Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark; that Respondent lacks any rights or legitimate interests in and to the disputed domain name; and that Respondent has engaged in bad faith use and registration of the disputed 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."
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD 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 the instant proceedings, 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 Panel accepts that the evidence provided by the Complaint is sufficient to establish a sufficient nexus or link between the Complainants. As such, the Panel will treat them all as a single entity in this proceeding.
The Panel finds that the disputed domain name, <manolo-blahnik.us>, is confusingly similar to Complainant’s trademark, MANOLO BLAHNIK. Complainant has adequately plead its rights and interests in and to this trademark. Respondent arrives at the disputed domain name by merely exchanging a blank with a hyphen and adding the “.us” country code top-level domain (“ccTLD”).
As such, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark.
The Panel further finds that Respondent lacks any rights or legitimate interests in or to the disputed domain name. Respondent has no rights or legitimate interests in or to the disputed domain name. Respondent is no commonly known by the disputed domain name. 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, Respondent apparently uses the domain name to offer Complainant’s products for sale at greatly reduced prices without authorization. See Compl. Annexes 15 (Respondent’s website) & 16 (Complainant’s website).
As such, the Panel finds that Respondent lacks any rights or legitimate interests in or to the disputed domain name.
The Panel also finds that Respondent has engaged in bad faith use and registration of the disputed domain name. It appears that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its competing website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website. Using a disputed domain name to trade upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). Complainant provides screenshots of both its own website and the website located at the disputed domain name, which shows that Respondent does appear to offer the same product for sale as Complainant does on its own webpage. See Compl. Annexes 15 & 16. The Panel finds that Respondent attempted to commercially benefit from Complainant’s mark in bad faith under Policy ¶ 4(b)(iv).
Further, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the MANOLO BLAHNIK mark at the time of registering the <manolo-blahnik.us> domain name. Given the fame of Complainant’s mark and the totality of the circumstances, the Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain name.
As such, the Panel finds that Respondent engaged in bad faith use and registration of the disputed domain name.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <manolo-blahnik.us> domain name be transferred from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: December 4, 2018
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