Asian and Western Classics B.V. v. New
York Link, Inc.
Claim
Number: FA0502000422746
Complainant is Asian and Western Classics B.V. (“Complainant”),
represented by Paul D. McGrady of Greenberg Traurig LLP,
77 West Wacker Drive, Ste. 2500, Chicago, IL 60601. Respondent is New York
Link, Inc. (“Respondent”), 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 postmaster@karllagerfeld.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. Respondent’s <karllagerfeld.com>
domain name is identical to Complainant’s 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 men’s and women’s apparel and, through strategic licensing
agreements, offers a variety of related apparel, acessories, footwear,
fragrances and home furnishings.
Complainant’s products are sold in Complainant’s 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
Chloé. 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 Respondent’s website
at the <nylink.com> domain name that promoted the sale of Respondent’s
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 Int’l 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 Complainant’s KARL
LAGERFELD mark because the domain name incorporates Complainant’s mark in its
entirety, adding only the generic top-level domain (gTLD) “.com.” The Panel finds that it has been widely
accepted under the Policy that the addition of a gTLD to Complainant’s
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 Complainant’s 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 Complainant’s 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 ‘.com’ 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
Complainant’s 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 Respondent’s 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 Complainant’s 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 Complainant’s allegations and has, thus, presented no proof of
Respondent’s rights or legitimate interests.
Therefore, due to Respondent’s 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 Respondent’s 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 “outside the ambit
of the hearsay rule”). It is the
Panel’s determination that Respondent’s prior use of a domain name confusingly
similar to Complainant’s 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 Respondent’s use of
Complainant’s 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 Complainant’s 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 Complainant’s
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 “sit on his rights” 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 “New York Link, Inc.” Complainant also asserts that it has not
granted Respondent any license, permission or authorization to use
Complainant’s KARL LAGERFELD mark or any confusingly similar variations. The Panel finds nothing in the record to
contest Complainant’s 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 “nothing in
Respondent’s WHOIS information implies that Respondent is ‘commonly known by’
the disputed domain name” 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 Complainant’s 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 Respondent’s 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 others’ famous and
registered trademarks).
Complainant
provided evidence that Respondent has used the <karllagerfeld.com>
domain name to resolve to Respondent’s website, which promoted Respondent’s
goods and services. Such use
constitutes an attempt by Respondent to commercially benefit from attracting
Internet users interested in locating Complainant’s KARL LAGERFELD products and
services, who type in Complainant’s mark followed by the common gTLD
“.com.” The Panel determines that
Respondent’s attempts to benefit from the goodwill surrounding Complainant’s
mark by attracting Internet users to Respondent’s website through a likelihood
of confusion with Complainant’s 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
“totality of circumstances”); see also Do The Hustle, LLC v. Tropic
Web, D2000-0624 (WIPO Aug. 21, 2000) (“the examples [of bad faith] in
Paragraph 4(b) are intended to be illustrative, rather than exclusive”).
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 Respondent’s 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 Respondent’s 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 “It makes
no sense whatever to wait until it actually ‘uses’ the name, when inevitably,
when there is such use, it will create the confusion described in the Policy”).
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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