Yakira, L.L.C. d/b/a Ecko Unltd. v. Caribbean Online International Ltd.
Case No. D2007-1262
1. The Parties
The Complainant is Yakira, L.L.C. d/b/a Ecko Unltd. (the “Complainant”), a company organized and existing under the laws of New Jersey with a principal place of business in New York, New York, United States of America, represented by Sughrue Mion, PLLC, United States of America.
The Respondent is Caribbean Online International Ltd., Nassau, Bahamas.
2. The Domain Name and Registrar
The disputed domain name <redbymarcecko.com> is registered with BelgiumDomains, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 24, 2007. On August 28, 2007, the Center transmitted by email to BelgiumDomains, LLC a request for registrar verification in connection with the domain name at issue. On August 30, 2007, BelgiumDomains, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 September 5, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was September 25, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 27, 2007.
The Center appointed Michel N. Bertschy as the sole panelist in this matter on October 16, 2007. 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
In 1989, an individual named Marc Echo began selling T-shirts airbrushed with the phrase “Echo Unlimited”. He continued to sell these T-shirts until 1993. In 1993, Marc Echo formed Echo Unlimited to sell his clothing and accessories line. In 1997, Marc Echo changed the spelling of his name and company name to “Ecko” to create Marc Ecko and Ecko Unltd. The Complainant is in the business of designing, manufacturing and selling clothing, shoes, jewelry and eyewear. In 2002, the Complainant’s affiliate launched Complex Magazine, a pop culture publication for a new generation.
The Complainant operates its main domain names at <ecko.com>, <eckounltd.com> and <eckounlimited.com> which all resolve to the same web pages. The Complainant’s main website provides a variety of information about the Complainant, provides links and/or otherwise enables users to purchase Ecko’s goods and provides a link to the Complainant’s website at “www.eckotv.com” where the public is able to upload videos. Together, these three domain names generate more than 1 million hits per month. The Complainant has also registered the following domain names, among others, which link to its main websites: <ecko1972.com>, <eckoclothing.com>, <eckocomplex.com>, <ecko-complex.com>, <eckofunction.org>, <eckomail.com>, <eckomen.com>, <eckooutletcom>, <eckored.com>, <eckored.net>, <eckored.org>, <eckounlimited.net>, <eckounlimited.org>, <eckounltd.com>, <eckounlted.net>, <eckounltd.org>, <eckowomen.com>, <marcecko.com>, <marcecko.net>, <marceko.org> and <marceckofootwear.com>.
The Complainant has continuously used its trade names, ECKO UNLIMITED and ECKO UNLTD in connection with its clothing and accessories lines since at least as early as 1997. In addition, the Complainant used its trade name ECHO UNTLD in connection with clothing between 1993 and 1997, and has continuously used its trademark ECKO UNLTD since at least as early as 1997. The Complainant has also created, adopted and used other marks that include the principal element “ecko”. These marks include ECKO FUNCTION, MARC ECKO, RHINO I and ECKORED (hereinafter collectively the “ECKO Marks”). Today, these ECKO Marks are registered though out the world. In addition, the Complainant has numerous pending applications for registration of additional Marks.
The Complainant is also the owner of a number of U. S. trademark registrations for the ECKO Marks. Through the Complainant’s long and extensive use and investment, the ECKO Marks and the ECKO UNLITD trade name have become widely in the clothing field and for related goods.
The Complainant sells its products affixed with the ECKO Marks and ECKO UNLTD trade names worldwide in specialty clothing stores and large retail department stores. In addition to the sale of its goods over the Internet, the Complainant’s sales of products worldwide bearing the ECKO Marks and/or ECKO UNLTD trade names have exceeded hundreds of millions of dollars.
Worldwide advertising costs and expenditures over the past several years for goods branded under the ECKO family of Marks (including by the Complainant and/or through its vast network of select authorized licensees and select authorized distributors) are well above ten million dollars.
The Complainant heavily advertises its clothing and accessory line throughout the world and also receives unsolicited press, in a variety of well-known magazines. These magazines include without limitation, Cosmo, Dirt Rider, DNR, EGM, Expert Gamer, The Fader, Flaunt, Frank 151, Import Tuner, Jane, Marie Clair, Marvel, Maxim, Mixer, MX Racer, Nylon, Official Playstation Magazine, Paper, Playboy, Racer X, Ride, Slam, Slap, Snap, The Source, Spin Stress, Stuff, Super Street, Thrasher, Tokion, Toyfare, Trace, Transworld Motorcross, Transworld Skate, Transworld Snow, Transworld Surf, Transworld Stance, URB, Vibe, XLR8R, XXL and ym.
The Complainant also regularly participates as a vendor in several annual tradeshows for the fashion and accessories industry, where it exhibits its products affixed with its ECKO Marks and/or displays the ECKO UNLTD trade name. These tradeshow include the Men’s Apparel Guild in California (“MAGIC”); Action Sports Retailer (“ASR”); NY Menswear Week Runway Show; 7th on Sixth and Macy’s Passport fashion shows.
The Respondent registered the Domain Name <redbymarkecko.com>, on March 29, 2007. At the time that the Respondent registered the Domain Name, the Complainant had registered a US Trade Mark RED BY MARK ECKO trademark and had used ECKO Marks for many years.
The Respondent is using the Domain Name to resolve to a website that provides a search engine and search results. The website features links to various websites selling the Complainant’s clothing and accessories. It appears as though the Respondent receives money for the links on its website as they are “sponsored links”. One of the first links on the “www.redbymarkecko.com” site, when “www.redbymarkecko.com” is typed into the browser, is Rhino Red Shoes with a link to “www.zappos.com”. The Complainant alleges that zappos.com’s Associates Program pays the Respondent a commission on a pay-per-click basis if the user of the Domain Name links to “www.zappos.com” and then makes a purchase.
In addition, the Complainant alleges that the Respondent maintains a relationship with Wan Fu China. The webpage at “www.redbymarkecko.com” contains an email address for “[email address]@wanfuchina.com”. The domain name <wanfuchina.com> is held by Wan Fu China which has been Respondent in a number of UDRP proceedings in which Wan Fu China was held to be warehousing domain names.
5. Parties’ Contentions
A. Complainant
(i) The Complainant contends that it has registrations of the RED BY MARC ECKO and its other trademarks which it refers to as the ECKO Marks, that the trademark registrations are valid and subsisting, and that they serve as prima facie evidence of its ownership and the validity of the ECKO Marks. The Complainant argues that the term ECKO is the dominant element of the ECKO Marks.
(ii) The Complainant argues that the Domain Name is confusingly similar to the ECKO Marks, pursuant to paragraph 4(a)(i) of the Policy, as well as virtually identical to and confusingly similar to the Complainant’s RED BY MARC ECKO trade mark.
(iii) The Complainant contends that the Respondent has no rights or legitimate interests in the Domain Name, pursuant to paragraph 4(a)(ii) in the view of the Complainant’s continuous and prior use of its RED BY MARC ECKO trade mark and that none of the situations described in paragraph 4(c) of the Policy can be established.
(iv) The Complainant contends that the Respondent registered and is using the Domain Name in bad faith in violation of paragraph 4(a)(iii).
The Complainant alleges that the registration of the <redbymarkecko.com> domain name is intended to and will confuse the relevant purchasing public into believing the Complainant maintains, or has approved, endorsed or is the sponsor of, or is otherwise associated with the Complainant.
Moreover, the Complainant contends that the Respondent hosts sponsored links at the website to which the Domain Name resolves a practice which has been held as being in violation of paragraph 4(b)(iv) of the Policy by numerous WIPO UDRP panels.
Finally, the Complainant alleges that the Respondent is deriving commercial gain by driving traffic to a website using confusion regarding the source of the website and being paid a commission by <zappos.com>.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth three elements that must be established by the Complainant to merit a finding that the Respondent has engaged in abusive domain name registration and to obtain relief. These elements are that:
(i) the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the Respondent’s domain name has been registered and is being used in bad faith.
Each of the aforesaid elements must be proved by the Complainant to warrant relief.
A. Identical or Confusingly Similar
There are two requirements that a complainant must establish under paragraph 4(a)(i) of the Policy; that it has rights in a trade or service mark, and that the domain name is identical or confusingly similar to the marks.
The Complainant contends that it has registrations of trademarks which it refers to as the ECKO Marks and of the RED BY MARC ECKO Mark, that its trademark registrations are valid and subsisting, and that they serve as prima facie evidence of its ownership and the validity of the ECKO Marks. The Complainant argues that the term ECKO is the dominant element of the ECKO Marks.
The Complainant has provided evidence of the existence the RED BY MARC ECKO Trade Mark. For the limited purpose of this proceeding, the Panel thus finds that the Complainant has rights in the “RED BY MARC ECKO” trademark and that the domain name <redbymarkecko.com> is identical to the Complainant’s “RED BY MARC ECKO” trademark.
The first requirement of the Policy is satisfied.
B. Rights or Legitimate Interests
The Complainant bears the “general burden of proof” under paragraph 4(a)(ii) of the Policy, which burden rests on the Respondent once the Complainant makes his case prima facie. Once such prima facie case is made, the Respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If a Respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (Overview of WIPO Panel Views on Selected UDRP Questions,Second UDRP Element, 2.1.).
Paragraph 4(c) of the Policy sets forth examples of circumstances whereby a domain name registrant may demonstrate a right or legitimate interest in a domain name:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent did not reply to the Complainant’s contentions. The Respondent’s default does not automatically result in a decision in favour of the Complainant. Subject to the principles described above, the Complainant must establish each of the three elements required by paragraph 4(a) of the Policy. While a panel may draw negative inferences from a respondent’s default, paragraph 4 of the Policy requires a complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding (Overview of WIPO Panel Views on Selected UDRP Questions,Procedural questions, 4.6.).
The Respondent is not a licensee of the Complainant and is not otherwise authorized to use the Complainant’s marks. The Panel finds the Complainant has made its prima facie case of Respondent’s lack of rights.
The web site operated by the Respondent provides a search engine and search results that list an array of available searches and hosts sponsored links. One of the first links is Rhino Red Shoes with a link to “www.zappos.com”. RHINO I is a registered trademark of the Complainant. Moreover, the Respondent receives commission from “www.zappos.com” when a user of “www.redbymarkecko.com” links to “www.zappos.com” and then makes a purchase.
In these circumstances, the Respondent is clearly making a commercial use of the domain name, with intent for commercial gain, and has misleadingly diverted consumers to its web site.
In these circumstances, the Respondent’s use of the disputed domain name does not suggest any right or legitimate interest. There appears to be no reason to suppose that the Respondent could claim a right or legitimate interest in respect of the domain name on any other basis.
The Panel finds that the second requirement of the Policy is satisfied.
C. Registered and Used in Bad Faith
For paragraph 4(a)(iii) to apply, the Complainant must demonstrate the conjunctive conditions that the Respondent registered the domain name in bad faith and continues to use it in bad faith.
Paragraph 4(b) of the Policy sets out four non exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including: (1) “[the Respondent] has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name, or; (2) “[has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the Respondent has] engaged in a pattern of such conduct; or” (3) “[the Respondent] has registered the domain name primarily for the purpose of disrupting the business of a competitor, or; (4)”by using the domain name [the Respondent] has intentionally attempted to attract, for commercial gain, Internet users to [its] website or other on line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, affiliation or endorsement of [its] website or location or of a product or service on [its] website or location.”
Whether the Respondent has registered and used the Complainant’s name in bad faith is clearly evident on the facts of this case. Indeed, the Complainant has proved that the Respondent has registered a domain name which incorporates the trade mark “RED BY MARC ECKO” suggesting an affiliation to the Complainant. The website operated by the Respondent diverts Internet users to a sponsored site offering goods such as those commercialized by the Complainant. As the Respondent has failed to provide any bona fide explanation for this, the Panel concludes that the Respondent has attempted to attract, for commercial gain, internet users to a commercial on line location by creating a likelihood of confusion with the Complainant’s marks. The fact that the Respondent has an extensive history of typosquatting only strengthens the inference of bad faith.
The Panel finds that the Complainant has shown the necessary elements of bad faith under the Policy paragraph 4(b).
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <redbymarkecko.com> be transferred to the Complainant.
Michel N. Bertschy Sole Panelist
Dated: October 30, 2007
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