Stuart Weitzman IP, LLC v. Privacy Protection Service Inc. d/b/a PrivacyProtect.org / Tech Domain Services Private Limited
Case No. D2014-1767
The Complainant is Stuart Weitzman IP, LLC of New York, New York, United States of America, represented by The Gioconda Law Group PLLC, United States of America.
The Respondent is Privacy Protection Service Inc. d/b/a PrivacyProtect.org of Nobby Beach, Queensland, Australia / Tech Domain Services Private Limited of Mumbai, Maharashtra, India.
2. The Domain Name and Registrar
The disputed domain name is registered with Tirupati Domains and Hosting Pvt Ltd. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 9, 2014. On October 9, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 13, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 13, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 16, 2014.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 17, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 6, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 7, 2014.
The Center appointed Adam Samuel as the sole panelist in this matter on November 12, 2014. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is part of a group of companies that designs, makes and sells women’s footwear and handbags. The Complainant owns a number of trademark registrations for the name STUART WEITZMAN in the United States of America, the oldest of which is number 1386002, registered on March 11, 1986. It sells its goods through its domain name which was registered on August 18, 1995. The disputed domain name was registered on May 1, 2007.
5. Parties’ Contentions
These are the parties’ contentions (with which the Panel does not necessarily agree).
The disputed domain name fully incorporates the WEITZMAN trademarks and personal name.
The Respondent is not commonly known by any name consisting in whole or in part of the Complainant’s trademark or its substantial equivalents.
The registration of disputed domain name well after the Complainant’s registration of its trademark using a privacy service strongly suggests and opportunistic registration of the disputed domain name by the Respondent to trade off the goodwill inherent in the Complainant’s trademarks and name.
The Respondent is using or preparing to use the disputed domain name for the purposes of commercial gain that will have effect of confusing consumers and defrauding the public by creating the false impression that the disputed domain name is in fact the Complainant’s domain name or is associated with it.
The Respondent has offered the disputed domain name for sale on the “Sedo” domain marketplace. The Complainant has offered on two occasions to buy the disputed domain name through this website for USD 100 and received counter-offers of USD 2,750 and USD 2,500. The Respondent registered the domain name with the specific goal of profiting for its resale. This behaviour evidences the Respondent’s bad faith under the Policy.
The disputed domain name resolves to a parking website which in turn resolves to a website that promotes various generic hyperlinks selling the products of the Complainant’s competitors. The Respondent is commercially benefiting from click-through fees.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which it has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The disputed domain name consists of the letters “www”, the Complainant’s trademark, and the generic Top-Level-Domain (gTLD) “.com”. The initials “www” usually denote the “world wide web” on which the disputed domain name appears. Consequently, the addition of “www” does not dissociate the disputed domain name from the Complainant’s mark. For all these reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
The Respondent is not called “Stuart Weitzman” or anything similar and does not appear to engage in a legitimate trade under that or any related name. There is no evidence that the Complainant has ever authorized the Respondent to use its trademarks. For these reasons, and in the absence of any response on this point, notably one contradicting the Complainant’s claim that the Respondent has never been connected to it in any way, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
It is impossible, at least without a Response to the Complaint, to identify the reason why the Respondent registered the disputed domain name. The Respondent has tried to sell the domain name for a sum in excess of his or its “documented out-of-pocket costs directly related to the domain name”. However, this was over six years after the registration of the domain name.
The disputed domain name clearly reflects the Complainant’s trademark, an internationally known shoe manufacturer. The Respondent has left the disputed domain name on a parking page ever since. In this Panel’s view, one is left with three possible motives for the Respondent’s decision to register the disputed domain name: to disrupt the Complainant’s relationship with its customers or potential customers, attempt to attract Internet users for potential gain or persuade the Complainant to buy the disputed domain name from it for an amount in excess of the Respondent’s out-of-pocket expenses. These all constitute evidence of registration and use in bad faith. The Respondent’s motivation may have been more than one of these and perhaps all three.
It is unnecessary in the circumstances to reach a conclusion about the other points made in the Complaint.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Date: November 26, 2014