Case number | CAC-UDRP-106248 |
---|---|
Time of filing | 2024-03-18 16:58:18 |
Domain names | stellamccartney-outlet.com, stellamccartneyjapan.com, stellamccartneyitalia.com, stellamccartneycostarica.com, stellamccartneyecuador.com, stellamccartneyperu.com, stellamccartneyhrvatska.com, stellamccartneyslovenija.com, stellamccartneycolombia.com, stellamccartneyuruguay.com, stellamccartneydubai.com, stellamccartneyegypt.com, stellamccartneynyc.com, stellamccartneyuk.com, stellamccartneyindia.com, stellamccartneyksa.com, stellamccartneyireland.com, stellamccartneymalaysia.com, stellamccartneyphilippines.com, stellamccartneyturkiye.com, stellamccartneybelgie.com, stellamccartneygreece.com, stellamccartneyhungary.com, stellamccartneynederland.com, stellamccartneynorge.com, stellamccartneyportugal.com, stellamccartneyschweiz.com, stellamccartneysuomi.com, stellamccartneyaustralia.com, stellamccartneysingapore.com, stellamccartney-nz.com, stellamccartneyromania.com |
Case administrator
Organization | Iveta Špiclová (Czech Arbitration Court) (Case admin) |
---|
Complainant
Organization | Stella McCartney Ltd |
---|
Complainant representative
Organization | Roberta Sala Peup (GriffeShield S.r.l.) |
---|
Respondent
Organization | Web Commerce Communications Limited |
---|
The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain names.
The Complainant is the holder of several trademarks including the following:
- STELLA MCCARTNEY, international figurative mark No. 796258, registered on January 27, 2003, in classes 3 and 9;
- STELLA MCCARTNEY, international figurative mark No. 952222, registered on May 8, 2007, in classes 3, 9, 14, 16, 18, 20, 24, 25, 28 and 35;
- STELLA MCCARTNEY, EU word mark No. 000546465, registered on July 6, 1999, in class 25;
- STELLA MCCARTNEY, EU figurative mark No. 002433399, registered on January 27, 2003, in classes 3, 9, 14, 18, 25 and 35;
- STELLA MCCARTNEY, UK figurative mark No. UK00801480732, registered on January 7, 2020, in classes 3, 9, 14, 18, 24, 25, 28, 35, 36, 41 and 45;
- STELLA MCCARTNEY, US word mark No. 2865923, registered on July 27, 2004, in classes 25.
The Complainant, Stella McCartney Ltd, is a fashion house founded in 2001 by British fashion designer Stella McCartney.
The Complainant is the holder of several word and figurative trademarks for STELLA MCCARTNEY.
The Complainant operates through the domain name <stellamccartney.com>.
The disputed domain names <stellamccartney-outlet.com>; <stellamccartneyjapan.com>; <stellamccartneyitalia.com>; <stellamccartneycostarica.com>; <stellamccartneyecuador.com>; <stellamccartneyperu.com>; <stellamccartneyhrvatska.com>; <stellamccartneyslovenija.com>; <stellamccartneycolombia.com>; <stellamccartneyuruguay.com>; <stellamccartneydubai.com>; <stellamccartneyegypt.com>; <stellamccartneynyc.com>; <stellamccartneyuk.com>; <stellamccartneyindia.com>; <stellamccartneyksa.com>; <stellamccartneyireland.com>; <stellamccartneymalaysia.com>; <stellamccartneyphilippines.com>; <stellamccartneyturkiye.com>; <stellamccartneybelgie.com>; <stellamccartneygreece.com>; <stellamccartneyhungary.com>; <stellamccartneynederland.com>; <stellamccartneynorge.com>; <stellamccartneyportugal.com>; <stellamccartneyschweiz.com>; <stellamccartneysuomi.com>; <stellamccartneyaustralia.com>; <stellamccartneysingapore.com>; <stellamccartneyromania.com> were registered on August 26, 2023, and the disputed domain name <stellamccartney-nz.com> was registered on October 8, 2023.
According to the Complainant’s evidence, some of the disputed domain names resolved to a website showing the STELLA MCCARTNEY word and figurative marks and offering fashion products for sale at discounted prices. The Panel was able to confirm that this is still the case for a few disputed domain names. The remaining disputed domain names currently resolve to an inactive page or webpages labelled as “dangerous website” or “not secure” by Google Chrome. According to the Complainant’s evidence, the disputed domain names resolving to an inactive website were probably previously active and resolved to a similar website.
COMPLAINANT:
The Complainant considers the disputed domain names to be confusingly similar to a trademark in which it has rights.
The Complainant claims that the Respondent has no rights or legitimate interests in respect of the disputed domain names, as, according to the Complainant:
- the Respondent is not a licensee, an authorized agent of the Complainant or in any other way authorized to use Complainant’s trademarks. Specifically, the Respondent is not and has never been authorized to register and use the disputed domain names by the Complainant;
- the Respondent is not commonly known by the disputed domain names;
- the Respondent has not provided the Complainant with any evidence of the use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods;
- the disputed domain names are or were redirected by the Respondent to websites where the STELLA MCCARTNEY trademarks are published, where images protected by copyright were used and where counterfeit products are offered for sale;
- the Respondent faced several UDRP filings, all of which were upheld. These cases involved registering domain names containing well-known trademarks along with country names, mirroring the circumstances of the present case.
Finally, the Complainant considers that the disputed domain names were registered and are being used in bad faith, as according to the Complainant:
- the Respondent had knowledge of the STELLA MCCARTNEY trademarks at the time of the registration of the disputed domain names;
- the disputed domain names were registered years after the Complainant obtained its trademark registrations;
- the Respondent’s purpose in registering the disputed domain names was solely to capitalize on the reputation of the Complainant's STELLA MCCARTNEY trademarks for financial gain, by intentionally creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement goods offered or promoted through web sites linked to the disputed domain names;
- on the web site linked to the disputed domain names, there is no disclaimer informing the users as to the Respondent’s lack of relationship with the Complainant;
- the items offered for sale on the websites linked to the disputed domain names at discounted prices are likely counterfeit;
- in registering thirty-two domain names, confusingly similar to the Complainant’s STELLA MCCARTNEY trademarks, the Respondent has been engaged in a pattern of conduct.
RESPONDENT:
The Respondent did not reply to the Complainant’s contentions.
The Complainant has, to the satisfaction of the Panel, shown the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).
The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain names (within the meaning of paragraph 4(a)(ii) of the Policy).
The Complainant has, to the satisfaction of the Panel, shown the disputed domain names have been registered and are being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).
The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.
Paragraph 15 of the Rules provides that the Panel is to decide about the complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. The onus is on the Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainant must show that all three elements set out in Paragraph 4 (a) of the Policy have been established before any order can be made to transfer a domain name. As the proceedings are administrative, the standard of proof is the balance of probabilities. Thus, for the Complainant to succeed it must prove, within the meaning of Paragraph 4(a) of the Policy and on the balance of probabilities that: 1. The domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; 2. The Respondent has no rights or legitimate interests in respect of the domain names; and 3. The domain names have been registered and are being used in bad faith. The Panel has therefore dealt with each of these requirements in turn.
1. Identity of confusing similarity The Complainant must first establish that there is a trademark or service mark in which it has rights. Since the Complainant shows to be the holder of the registered STELLA MCCARTNEY marks, it is established that there is a trademark in which the Complainant has rights. The Panel observes that the disputed domain names all incorporate the Complainant’s STELLA MCCARTNEY trademark in its entirety, adding the term “outlet”, the name of a country or a common abbreviation of the name of a country. In the Panel’s view, such additions do not prevent the Complainant’s trademark from being recognizable within the disputed domain names (see section 1.8 WIPO Overview 3.0; IM PRODUCTION v. Xue Han, CAC Case No. 104877 <isabel-marantus.com>). Finally, it is well established that the Top-Level Domains (“TLDs”) such as “.com” may be disregarded when considering whether a disputed domain name is identical or confusingly similar to the trademark in which the Complainant has rights (see section 1.11 WIPO Overview 3.0). Therefore, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademark. Accordingly, the Complainant has made out the first of the three elements that it must establish.
2. No rights or legitimate interests Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain names. It is established case law that it is sufficient for the Complainant to make a prima facie showing that the Respondent has no right or legitimate interest in the disputed domain names in order to shift the burden of proof to the Respondent (see section 2.1 WIPO Overview 3.0 and Champion Innovations, Ltd. V. Udo Dussling (45FHH), WIPO case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO case No. 2004-0110). The Panel notes that the Respondent has not been commonly known by the disputed domain names and that the Respondent has not acquired trademark or service mark rights. According to the information provided by the Registrar, the Respondent is known as “Web Commerce Communications Limited”. The Respondent’s use and registration of the disputed domain names was not authorized by the Complainant. There are no indications that a connection between the Complainant and the Respondent existed. Fundamentally, a respondent’s use of a domain name will not be considered “fair” if it falsely suggests affiliation with the trademark owner. The correlation between a domain name and the complainant’s mark is often central to this inquiry. Generally speaking, UDRP panels have found that where a domain name consists of a trademark plus an additional term, such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner (see section 2.5.1 WIPO Overview 3.0). The disputed domain names all incorporate the Complainant’s STELLA MCCARTNEY trademark in its entirety, merely adding the term “outlet”, the name of a country or a common abbreviation of the name of a country. In the Panel’s view, such combination may even increase the risk of confusion with the Complainant as it can easily be considered as referring to the outlet store of the Complainant or the website for a specific country of the Complainant. Therefore, the Panel finds that the disputed domain names carry a risk of implied affiliation with the Complainant and cannot constitute fair use. Beyond looking at the domain name(s) and the nature of any additional terms appended to it, UDRP panels assess whether the overall facts and circumstances of the case, such as the content of the website linked to the disputed domain name and the absence of a response, support a fair use or not (see sections 2.5.2 and 2.5.3 of the WIPO Overview 3.0). The Panel observes that some of the disputed domain names resolve to websites showing the STELLA MCCARTNEY figurative marks and offering fashion products identical or at least similar to the Complainant’s products for sale at discounted prices. In the Panel’s view, this does not amount to a legitimate non-commercial or fair use of the disputed domain names, or use in connection with a bona fide offering of goods and services. The Panel considers that, in the circumstances of the present case, there are serious indications that the Respondent intends to sell counterfeit goods. UDRP panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods) can never confer rights or legitimate interests on a respondent (see section 2.13 of the WIPO Overview 3.0). Moreover, the Respondent does not accurately and prominently disclose its (absence of) relationship with the Complainant. As a result, the Respondent fails the so-called “Oki Data test” for legitimate resellers, distributors or service providers of a complainant’s goods or services. The Panel observes that the rest of the disputed domain names currently resolve to inactive web pages. In the circumstances of this case, the Panel finds that this does not amount to any legitimate non-commercial or fair use either, especially since, according to the Complainant’s evidence, the disputed domain names resolving to an inactive website most probably previously resolved to active websites similar to those described above. The Respondent had the opportunity to demonstrate rights or legitimate interests but did not do so. In the absence of a Response from the Respondent, the prima facie case established by the Complainants has not been rebutted. Therefore, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain names. In light of the above, the Complainant succeeds on the second element of the Policy.
3. Bad faith The Complainant must prove on the balance of probabilities that the disputed domain names were registered in bad faith and that these are being used in bad faith (see section 4.2 WIPO Overview 3.0 and e.g. Telstra Corporation Limited v. Nuclear Marshmallow, WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd, WIPO Case No. D2006-1052). According to the Panel, the awareness of a respondent of the complainant and/or the complainant’s trademark rights at the time of registration can evidence bad faith (see Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO Case No. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070). In the present case, the Panel finds that the Respondent must have been aware of the Complainant and its trademark rights when it registered the disputed domain names as:
In the Panel’s view, the use of the disputed domain names described above indicates that the Respondent has intentionally attempted to attract Internet users to its websites for commercial gain by creating a likelihood of confusion with the Complainant’s trademark (see Simyo GmbH v. Domain Privacy Service FBO Registrant / Ramazan Kayan, WIPO Case No. D2014-2227). Moreover, the Panel finds that the Respondent has also engaged in a pattern of bad faith conduct of targeting the Complainant’s STELLA MCCARTNEY trademarks by registering 32 domain names including the STELLA MCCARTNEY trademark in its entirely. Given the totality of the circumstances discussed above, the current state of some of the disputed domain names referring to inactive web pages does not prevent a finding of bad faith under the doctrine of passive holding (see section 3.3 of the WIPO Overview 3.0). Finally, the Respondent did not formally take part in the administrative proceedings. According to the Panel, this serves as an additional indication of the Respondent’s bad faith. Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the disputed domain names were registered and are being used in bad faith. In light of the above, the Complainant also succeeds on the third and last element of the Policy. |
- stellamccartney-outlet.com: Transferred
- stellamccartneyjapan.com: Transferred
- stellamccartneyitalia.com: Transferred
- stellamccartneycostarica.com: Transferred
- stellamccartneyecuador.com: Transferred
- stellamccartneyperu.com: Transferred
- stellamccartneyhrvatska.com: Transferred
- stellamccartneyslovenija.com: Transferred
- stellamccartneycolombia.com: Transferred
- stellamccartneyuruguay.com: Transferred
- stellamccartneydubai.com: Transferred
- stellamccartneyegypt.com: Transferred
- stellamccartneynyc.com: Transferred
- stellamccartneyuk.com: Transferred
- stellamccartneyindia.com: Transferred
- stellamccartneyksa.com: Transferred
- stellamccartneyireland.com: Transferred
- stellamccartneymalaysia.com: Transferred
- stellamccartneyphilippines.com: Transferred
- stellamccartneyturkiye.com: Transferred
- stellamccartneybelgie.com: Transferred
- stellamccartneygreece.com: Transferred
- stellamccartneyhungary.com: Transferred
- stellamccartneynederland.com: Transferred
- stellamccartneynorge.com: Transferred
- stellamccartneyportugal.com: Transferred
- stellamccartneyschweiz.com: Transferred
- stellamccartneysuomi.com: Transferred
- stellamccartneyaustralia.com: Transferred
- stellamccartneysingapore.com: Transferred
- stellamccartney-nz.com: Transferred
- stellamccartneyromania.com: Transferred
PANELLISTS
Name | Flip Petillion |
---|