WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Jane Norman Limited, Jane Norman (Holdings) Limited v.

Domain Admin c/o Dynadot Privacy

Case No. D2009-0555

1. The Parties

The Complainants are Jane Norman Limited and Jane Norman (Holdings) Limited, both of London, United Kingdom of Great Britain and Northern Ireland, represented by SJ Berwin LLP., United Kingdom.

The Respondent is Domain Admin c/o Dynadot Privacy of San Mateo, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <janenorman.com> is registered with Dynadot, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 27, 2009. On April 28, 2009, the Center transmitted by email to Dynadot, LLC a request for registrar verification in connection with the disputed domain name. On April 29, 2009, Dynadot, 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” 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 May 6, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was May 26, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 27, 2009.

The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on June 11, 2009. 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

Complainants are the holders, amongst others, of the following trademark registrations:

Complainants also hold the domain name <janenorman.co.uk> registered on December 3, 1998 and <janenorman.eu> registered on July 18, 2006.

The disputed domain name <janenorman.com> was registered on May 11, 1999.

5. Parties' Contentions

A. Complainants

Complainants argue the following:

I. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights

- That Complainants are proprietors of a large number of registered trademark registrations, trademark applications and domain names for JANE NORMAN.

- That JANE NORMAN was founded in London in 1952 and is one of the United Kingdom's most well-known fashion brands selling women's clothing and accesories.

- That JANE NORMAN has grown considerably and now operates more than 250 stores in United Kingdom, Europe and the Middle East, generating sales in the most recent financial year of £180 million.

- That goods currently sold, offered for sale and distributed under the JANE NORMAN brand by the Complainants, their subsidiaries, distributors or licensees include: women's clothing; swimwear; bags; jewelry; accessories; and footwear.

- That the disputed domain name is identical and/or confusingly similar to the trademarks JANE NORMAN.

II. Respondent has no rights or legitimate interests in respect of the domain name

- That Complainants have not licensed or otherwise directly or indirectly authorized Respondent to use the JANE NORMAN trademarks.

- That Respondent uses the JANE NORMAN trademark as a tool to attract Internet users to Respondent's web site, and then redirects them through the use of links connected to various third party web which sell and provide similar goods and services to those of the Complainants, including, Simply Bee, Next, ASOS and Marks and Spencer.

- That some of these links direct users to JANE NORMAN branded clothing being sold by third parties while others redirect to clothing, accessories and other similar goods and/or services that are sold under other brands.

- That one such link redirects users to a web site advertising “Fun & Sexy Adult Toys”, which could cause said users to mistakenly believe that the Complainants are the sponsors, affiliates, endorsers and/or even the source of such products.

- That Complainants believe that Respondent is likely to be a member of the affiliate schemes run by the various third party web sites to which users are directed, and that Respondent will receive payment for directing said users to these third party web sites.

- That it is clear that Respondent is taking advantage of the reputation and goodwill of the JANE NORMAN trademarks, thus leveraging off the fame of the mark for Respondent's own benefit.

- That the use of the trademarks JANE NORMAN by Respondent is not in connection with a bona fide offering of goods and services in accordance with paragraph 4(c)(i) of the Policy.

- That Respondent is not offering Complainants' JANE NORMAN products for sale at all but is instead directing Internet users to third party web sites.

- That although Respondent's web site itself does not sell any goods, the third party web sites to which Internet users are directed, do sell different third party goods.

- That Respondent's web site is likely to confuse Internet users into thinking that said site is an official web site for JANE NORMAN products, which is authorized by, or associated with Complainants.

III. The domain name was registered and is being used in bad faith

- That Complainants rely on the same facts and matters discussed above, regarding Respondent's absence of rights or legitimate interests in the domain name, to show that said domain name was registered and is being used in bad faith.

- That Respondent intentionally attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with Complainants' mark as to the source, sponsorship, affiliation, or endorsement of Respondent's web site.

- That Respondent may suggest that it is not responsible for the links featured on its web site and that these links may have been generated by a “parking company, but that Respondent is actually responsible for said links.

- That whether or not Respondent actually derives any financial gain from the sponsored links is irrelevant.

- That the fact that Respondent has used Dynadot´s privacy service to protect its identity constitutes evidence of Respondent's bad faith.

- That the Complainants have attempted to contact Respondent through Dynadot but have received no response.

- That since Complainants' letter was sent to Respondent, Respondent's web site has been altered so that a blank page is now displayed.

- That this refusal to respond to Complainants and the amendments made to website should also be treated as evidence of bad faith.

B. Respondent

The Respondent did not reply to the Complainants' contentions.

6. Discussion and Findings

In accordance with the Policy, paragraph 4(a), Complainants must prove that:

(i) The domain name in question is identical or confusingly similar to a trademark or service mark in which Complainants have rights;

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

In the administrative proceeding, Complainants must prove that each three of these elements are present.

As Respondent has failed to submit a Response to the Complaint, the Panel may accept as true all of the reasonable allegations of the Complaint. (Encyclopaedia Britannica, Inc. v. null John Zuccarini, Country Walk, WIPO Case No. D2002-0487; Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).

A. Identical or Confusingly Similar

The domain name <janenorman.com> is identical to Complainants' trademark JANE NORMAN. Said trademark is fully incorporated in the disputed domain name.

Previous decisions rendered under the Policy have recognized that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark. See for example: Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615; Compagnie Générale des Etablissement MICHELIN v. Lost in Space, SA, WIPO Case No. D2002-0504; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047; Toyota France and Toyota Motor Corporation v. Computer-Brain, WIPO Case No. D2002-0002; and Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd, WIPO Case No. D2000-0802.

The addition of the generic top-level domain “.com” is immaterial for purposes of the Policy. To carry into effect the similarity analysis, a panel must not take into account the generic top-level domain (gTLD) “.com”, because such gTLD has no legal significance. See Ahmanson Land Company v. Vince Curtis, WIPO Case No. D2000-0859 (citing in turn Monty and Pat Roberts, Inc. v. J. Bartell,WIPO Case No. D2000-0300, J.P. Morgan & Co., Incorporated and Morgan Guaranty Trust Company of New York v. Resource Marketing, WIPO Case No. D2000-0035; See also Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 and Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409).

Complainants' trademark registrations for JANE NORMAN have not been contested by the Respondent.

The first element of the Policy has been met.

B. Rights or Legitimate Interests

The following are examples of circumstances where a respondent may have rights or legitimate interests in a contested 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.” (Policy, paragraph 4(c)).

Respondent's diversion of traffic by using Complainants' trademarks cannot be considered to be a bona fide offering of goods or services. Respondent has been taking advantage of Complainants' trademarks and goodwill, without Complainants' consent.

Respondent has not submitted any evidence showing that Respondent has been commonly known as <janenorman.com>. In fact, Respondent has chosen to conceal his identity. Nothing in the record shows that Respondent is or has been known by the disputed domain name. Complainants have not authorized Respondent to use the trademarks JANE NORMAN. Said trademarks have been, according to the arguments and evidence submitted by the Complainants, been used not as Respondent's name, but as a tool for attracting and diverting traffic.

This traffic diversion to other web sites that offer products similar to those sold by Complainants is not legitimate. It is commercial. It cannot be fair use. Based on the record, Respondent has implemented a scheme to misleadingly divert consumers to third party web pages.

The second element of the Policy has been met.

C. Registered and Used in Bad Faith

According to paragraph 4(b) of the Policy, the following circumstances shall be evidence of registration and use in bad faith:

(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's web site, which in turn redirects traffic to third parties' web sites, by creating a likelihood of confusion with the Complainants' mark as to the source, sponsorship, affiliation, or endorsement of Respondent's site, or the sites to which traffic is diverted (See Hewlett-Packard Company v. NA, NAF Claim No. 154141; Savin Corporation v. Cal Toner c/o Domain Manager, NAF Claim No. 230934; State Fair of Texas v. Granbury.com, NAF Claim No. 95288).

This conduct falls within Paragraph 4(b)(iv) of the Policy.

The third element of the Policy has been met.

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 <janenorman.com> be transferred to the Complainants.

Kiyoshi I. Tsuru
Sole Panelist

Dated: June 25, 2009