Complainant is River Light V, L.P. of New York, New York, United States of America, represented by Olshan Grundman Frome Rosenzweig & Wolosky LLP, of the United States of America.
Respondent is SL Pace, of Flower Mound, Texas, United States of America.
2. The Domain Name and Registrar
The disputed domain name is <torybirch.com>; it is registered with Dotster, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on September 28, 2009. On September 29, 2009, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the disputed domain name. On September 29, 2009, Dotster, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant, providing contact information for registrant, and providing other details of the registration. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“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 6, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was October 26, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 27, 2009.
On October 27, 2009, the Center received an email communication from one of the contact email addresses used to send Respondent a copy of the Complaint (in addition to delivery by courier) and the notification of default. The unsigned message stated: “Today is the first time I am hearing of this and I would like to respond.” The next day, October 28, 2009, the Center responded, describing the prior notifications that had been sent and concluding “If you wish to make a late Response to the Complaint, the Center will bring the Response to the Panel's attention (when appointed), and it will be at the sole discretion of the Panel to consider it.” However, no Response was received.
The Center appointed Debra J. Stanek as the sole panelist in this matter on October 30, 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
Complainant owns and uses the trademark TORY BURCH for apparel, shoes, retail stores, jewelry, accessories, and related items. In 2008 Complainant obtained United States federal trademark registrations for a variety of goods and services, including retail clothing stores, jewelry, bags, retail clothing stores; most of the applications were filed in December 2005 and alleged a date of first use of December 2005. Complainant currently offers its TORY BURCH products in numerous countries and through its official website at “www.toryburch.com.”
The domain name was registered on April 12, 2005. Recently, it appears that the domain name is not active, but is currently “parked” by the domain registrar. At various times, and at present, it has displayed links to third party websites that purport to offer handbags and other accessories, including products offered under the TORY BURCH mark.
5. Parties' Contentions
A. Complainant
1. The domain name is identical or confusingly similar to a mark in which Complainant has rights.
The domain name is confusingly similar to Complainant's TORY BURCH trademark because it is a misspelling of Complainant's mark, with a difference of only a single letter.
Further, consumers are more likely than not to misspell Complainant's mark by replacing the letter “u” with “i” because “birch” is the phonetic equivalent of “burch” and the letters “i” and “u” are adjacent to one another on a computer keyboard, making such misspelling more likely.
2. Respondent has no rights or legitimate interests in respect of the domain name.
Respondent has no prior rights in the typosquatted term <torybirch.com> and does not run a legitimate business outside of the fashion and accessories industry under the name “Tory Burch” or “Tory Birch.”
Respondent has registered the domain name and is engaged in cash parking activities where, upon information and belief, Respondent receives monetary payment for allowing the registrar to feature links on <torybirch.com> to sponsored sites that offer TORY BURCH brand goods.
On August 20, 2009, Complainant sent a letter to Respondent via Federal Express and by email describing its rights in the TORY BURCH trademark and demanding that Respondent stop using the domain name, and transfer it. Respondent did not respond. Therefore, prior to any notice of the dispute, Respondent was not using, and did not engage in demonstrable preparations to use the domain name with a bona fide offering of goods or services.
Upon information and belief, Respondent, as an individual, business, or other organization, has not been commonly known by the domain name.
Respondent is not making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain. The registration of the domain name and its use with “cash parking,” which leads viewers to sites that feature TORY BURCH products, is intended to misleadingly divert consumers.
3. The domain name was registered and is being used in bad faith.
Respondent invites offers for purchase of the domain name, which upon information and belief, would likely be for valuable consideration in excess of Respondent's documented out-of-pocket costs directly related to the domain name. Therefore, 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 to a competitor of that Complainant.
Complainant understands that Respondent receives compensation for providing links on the “www.torybirch.com” site to other sites that sell TORY BURCH products. According to the “Sedo.co.uk” website, the website at the domain name had at least 803 visitors between August 15, 2009 and September 15, 2009. Since the price of a yearly registration of a domain name is between USD10-USD100, there is simply no way that Respondent's sale of the domain name will fail to result in financial gain.
Respondent has been parking domain names in bad faith since at least as early as 2006. Upon information and belief, Respondent has had several domain name disputes filed against him since 2006, all of which were decided in favor of the complainant and resulting in the transfer of the domain names at issue.
Because Respondent has no legitimate business interest in the <torybirch.com> domain name, and the slight misspelling in the domain address is clearly intended to draw in actual TORY BURCH consumers, upon information and belief, Complainant believes that Respondent has registered the domain name primarily for the purpose of disrupting the business of River Light V, L.P.
By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its own website for the purpose of linking to other online locations, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's web site.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
To prevail, Complainant must prove that:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Policy, paragraph 4(a). The Policy sets out examples of circumstances that may evidence a respondent's rights or legitimate interests in a domain name, see Policy, paragraph 4(c), as well as circumstances that may evidence a respondent's bad faith registration and use, see Policy, paragraph 4(b).
Even if a respondent has not answered the complaint, a default does not automatically result in a finding for the complainant. Rather, the complainant continues to have the burden of establishing that it is entitled to relief. The Panel may, however, draw such inferences from a respondent's default as it considers appropriate. See paragraph 14(b) of the Rules.
A. Identical or Confusingly Similar
Complainant has established its rights in the TORY BURCH mark by virtue of the evidence of its United States trademark registrations.
The disputed domain name is not identical to Complainant's mark. As a general matter, a domain name is likely to be deemed confusingly similar to a mark if it incorporates the mark or a variation of the mark, excluding spacing and the generic top-level domain, which are not relevant for these purposes. Here, the domain name consists of a minor variation of the mark, by substituting the letter “i” for the letter “u” in “burch.” The appearance of the domain name is virtually identical to that of Complainant's TORY BURCH mark. The pronunciation of the two would be identical. The connotation of each is also similar, that of an individual's name. The overall impression of the domain name is that it is simply a misspelling of Complainant's mark.
The Panel finds that Respondent's domain name is confusingly similar to a mark in which Complainant has rights.
B. Rights or Legitimate Interests
The Panel, consistent with the consensus view, finds that Complainant may establish that Respondent has no rights or legitimate interests in respect of the domain name by making a primafacie showing that Respondent lacks rights or legitimate interests that is not rebutted by Respondent. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 2.1 (once complainant makes prima facie case, respondent has burden of showing rights or legitimate interests in the domain name).
Paragraph 4(c) of the Policy sets out the following examples:
(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 Panel finds that Complainant has made a prima facie showing as to the examples set out in paragraph 4(a) of the Policy.
While Complainant's U.S. federal trademark registrations did not issue until after Respondent had registered the domain name, on this record, there is no reason to believe, from the WhoIs record or otherwise, that Respondent is known by the name “Torybirch.”
It also appears that Respondent was using, or permitting the use of, the domain name to provide links to third party sites offering products in competition with Complainant or offering Complainant's products. Such a use is not legitimate and further, it establishes the connection between the domain name and Complainant's mark and related goods and services. Taken with Respondent's failure to submit a Response, those facts give rise to certain adverse inferences regarding Respondent's rights or legitimate interests in the domain name. These factors weigh in favor of finding that Respondent's offering is not bona fide.
The Panel finds that Complainant has made a prima facie showing as to this element. Respondent, who has not replied, has not rebutted this showing.
C. Registered and Used in Bad Faith
Under the Policy, Complainant must establish that the domain name was registered and is being used in bad faith. The Policy itself sets out four sets of circumstances, evidence of which can establish bad faith, see Policy, paragraph 4(b)(i)-(iv):
(1) Registering the domain name primarily to sell it for more than documented out-of-pocket costs, see Policy, paragraph 4(b)(i).
(2) Registering the domain name to prevent the owner of the trademark from reflecting the mark in a domain name, where there is a pattern of such conduct, see Policy, paragraph 4(b)(ii).
(3) Registering the domain name primarily to disrupt the business of a competitor, see Policy, paragraph 4(b)(iii).
(4) Using the domain name to intentionally attempt to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with complainant's mark as to the source, sponsorship, affiliation, or endorsement, see Policy, paragraph 4(b)(iv).
In the Panel's view, the fact that the “www.torybirch.com” website contains a statement that the domain name “may be for sale by its owner” does not establish that it was registered “primarily” to sell it for more than Respondent's out-of-pocket costs.
It is not clear from Complainant's reference to other domain name disputes involving Respondent that Complainant intends to show that Respondent has engaged in a pattern of bad faith registration under the Policy, paragraph 4(b)(ii). Absent a clearer argument, the Panel does not so conclude.
As to the remaining examples of bad faith under the Policy, the Panel notes that Complainant's United States federal trademark registrations did not actually issue until after Respondent had registered the domain name. Several applications to register the TORY BURCH mark for various goods and services were filed in December 2005, were not issued until 2008, and claimed dates of first use in commerce of January 2006. All of these dates are after Respondent's registration of the <torybirch.com> domain name.
Consistent with the consensus view, the Panel finds that, as a general matter, when a domain name is registered before trademark rights have been established, the registration is not likely to be in bad faith. In general in such cases, the registrant would not have contemplated the complainant's then non-existent rights. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 3.1. However, also consistent with the consensus view, the Panel finds that there may be situations where the facts (and inferences from those facts) establish that a respondent was aware of the potential rights in the mark and registered the domain name to take advantage of any rights that might arise. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 3.1.
Complainant has not provided detailed evidence regarding the length of use and amount of sales, the nature and extent of its advertising, consumer surveys, to establish rights in the unregistered TORY BURCH mark prior to the April 2005 domain name registration. See Overview of WIPO Panel Views on Selected UDRP Questions, Paragraph 1.7 (complainant asserting rights in unregistered trademark rights must show that the mark has become a distinctive identifier associated with complainant or its goods and services, such as by providing evidence of length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition). Further, while the raft of documentary evidence provided by Complainant consists primarily of reprints of magazine articles in which various products are variously identified under the mark TORY BY TRB and TORY BURCH, or that identify the designer herself by name, “Tory Burch,” they do nonetheless establish extensive media recognition of the designer, her name, the TORY BY TRB mark, and the potential trademark rights in the TORY BURCH mark1.
On balance, it is not unreasonable, under the circumstances presented here (which include, among other things, references to TORY BURCH and competing products on the site associated with the domain name and the Respondent's failure to respond to the Complaint), to impute to Respondent actual knowledge of the designer's name, business, and Complainant's potential and growing rights in therein at the time the domain name was registered.
Accordingly, the Panel finds that Respondent on balance registered and is using the domain name in bad faith.
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, <torybirch.com> be transferred to Complainant.
Debra J. Stanek Sole Panelist
Dated: November 22, 2009
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