WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lernco, Inc. v. Jet Stream Enterprises Limited

Case No. D2010-1573

1. The Parties

The Complainant is Lernco, Inc. of Wilmington, Delaware, United States of America, represented by Colucci & Umans, United States of America.

The Respondent is Jet Stream Enterprises Limited of St. Johns, Antigua and Barbuda.

2. The Domain Name and Registrar

The disputed domain name <newyorklerners.com> is registered with Answerable.com (I) Pvt Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 16, 2010. On September 17, 2010, the Center transmitted by email to Answerable.com (I) Pvt Ltd a request for registrar verification in connection with the disputed domain name. On September 19, 2010, Answerable.com (I) Pvt Ltd transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 23, 2010. The Center verified that the Complaint together with the amendment to 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 September 24, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 14, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 15, 2010.

The Center appointed Johan Sjöbeck as the sole panelist in this matter on October 21, 2010. 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 has submitted evidence that it is the owner of the following trademark registration issued by the United States Patent and Trademark Office (“USPTO”):

LERNER with registration No. 1,431,895 and registration date March 10, 1987 for costume jewelry in International Class 14; handbags made of fine leather and imitation leather in International Class 18; shirts, t-shirts, blouses, tank tops, sweaters, skirts, dresses, suits, jumpsuits, rompers, pants, jeans, pantsuits, sweatshirts, sweatpants, sweatsuits, coats, jackets, vests, outerwear jackets, shorts, socks, knee-hi stockings, pantyhose, swimwear, sleepwear, robes, lingerie, underwear, panties, slips, hats, scarves, gloves, mittens, and belts made of cloth in International Class 25.

The Complainant has submitted evidence that it is the owner of the United States Application Serial No. 77/152,566, dated October 4, 2007 to register the mark LERNER for retail store services featuring personal care products, home fragrance products, candles, jewelry, watches, bags, small leather accessories and hair accessories and mail order catalog services and on-line retail store services featuring personal care products, home fragrance products, candles, jewelry, watches, bags, small leather accessories, clothing and hair accessories in International Class 35.

In addition to the above, the Complainant has submitted evidence that it is the owner of the cancelled trademark registration LERNER NEW YORK with registration No. 2,260,860 and registration date July 13, 1999 for mail order catalog services featuring clothing, in Class 35. The trademark was cancelled in February, 2010.

The disputed domain name <newyorklerners.com> was registered on October 18, 2002.

5. Parties’ Contentions

A. Complainant

The Complainant is the owner of the registered trademark LERNER. The Complainant also uses its LERNER trademark in the domain name <lernerny.com> which is redirected to the Complainant’s primary website at “www.nyandcompany.com”.

As a result of the Complainant’s exclusive and long-term use, the LERNER trademark and domain name <lernerny.com> have acquired widespread public recognition and goodwill. The disputed domain name <newyorklerners.com> incorporates the Complainant’s trademark LERNER. Specifically, the Respondent has placed the geographic designation “New York” in front of the Complainant’s trademark LERNER.

In addition, the Respondent has misspelled the LERNER trademark by placing an “s” at the end, namely “Lerners”. As such, the disputed domain name <newyorklerners.com> is confusingly similar to the Complainant’s trademark LERNER.

Furthermore, the disputed domain name mimics the Complainant’s domain name <lernerny.com> by spelling out “New York” and placing these words in front of “Lerner(s)”. Moreover, the disputed domain name is the reverse word order of the Complainant’s recently cancelled LERNER NEW YORK trademark.

On the website to which the disputed domain name resolves, the Respondent is providing links to third-party commercial sites and the Respondent is achieving commercial gain through pay-per-click advertising. The Respondent’s use of the disputed domain name is likely to give rise to confusion as to an association or affiliation between the Complainant and the Respondent.

The Complainant contacted the Respondent on February 3, 2010 and February 25, 2010 and demanded that the Respondent transfer the disputed domain name to the Complainant. The Respondent did not reply.

The Respondent does not have and has never had any connection with the Complainant, does not deal in the Complainant’s products and is not a licensee of the Complainant. There is no evidence of the Respondent’s use of, or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods and services. The Respondent is not commonly known by the disputed domain name and is not making a legitimate, fair use of the disputed domain name without the intent of commercial gain.

The Respondent registered the disputed domain name <newyorklerners.com> which incorporates the Complainant’s well-known trademark LERNER with no apparent good faith reason for doing so other than to trade on the goodwill of the Complainant. The Respondent has created a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.

The Respondent’s failure to reply to the Complainant’s cease and desist letters is evidence of bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:

(i) that the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

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

A. Identical or Confusingly Similar

The Complainant is, according to the submitted evidence, the owner of the registered trademark LERNER. The disputed domain name <newyorklerners.com> incorporates the registered trademark LERNER in its entirety with the addition of the geographic designation “New York” as a prefix. Furthermore, the disputed domain name contains the letter “s”, commonly used as a plural signifier.

The ability for generic words and geographic designations to distinguish the disputed domain name from the trademark of the Complainant is limited. See for example Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102, regarding the domain name <nokiagirls.com>, in which the addition of the noun “girls” was not sufficient to distinguish the domain name from the trademark NOKIA. Also see Six Continents Hotels, Inc. v. Dkal, WIPO Case No. D2003-0244, in which it was held that an addition of a place name to a trademark, such as “Atlanta” to CROWNE PLAZA is a common method for indicating the location of a business enterprise identified by the trademark or service mark.

Furthermore, in previous cases it has been established that adding or deleting the plural “s” from a corporate name is not sufficient to eliminate the likelihood of confusion as it is a common mistake consumers make when referring to companies and/or their marks. See for example Medtronic, Inc. v. gotdomains4sale.com, WIPO Case No. D2001-1033.

Having the above in mind, it is the opinion of the Panel that the disputed domain name is confusingly similar to the Complainant’s trademark and that the Complainant has proved the requirements under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests with respect to the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

(a) that it has made 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 prior to the dispute; or

(b) that it is commonly known by the domain name, even if it has not acquired any trademark rights; or

(c) that it intends to make a legitimate, noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

The Complainant’s trademark registration for LERNER predates the registration of the disputed domain name <newyorklerners.com>. The Complainant has not licensed or otherwise consented to the Respondent’s use of the trademark LERNER in connection with the disputed domain name <newyorklerners.com> which is confusingly similar to the Complainant’s registered trademark.

On February 3, 2010 and February 25, 2010 the Complainant contacted the Respondent. The Complainant informed the Respondent about the trademark and requested that the Respondent remove the content of the website and that the Respondent agree to transfer the disputed domain name to the Complainant. The Respondent did not reply.

From the submitted evidence in this case, it is clear that the Respondent’s website, to which the disputed domain name resolves, contains numerous sponsored commercial links not only to third-party websites in the same area of business as the Complainant but also to the Complainant’s website. The Respondent’s use of the disputed domain name serves the purpose of generating revenue via advertised pay-per-click products and links and it has been held in previous cases that such use does not represent a use in connection with a bona fide offering of goods and services.

The Respondent is not making a legitimate, noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark. The Respondent has not submitted any evidence in this case indicating that the Respondent is the owner of any trademark rights similar to the disputed domain name or that the Respondent is or has been commonly known by the disputed domain name.

By not submitting a Response, the Respondent has failed to invoke any circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in respect of the disputed domain name. Thus, there is no evidence in the case that refutes the Complainant’s submissions, and the Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include without limitation:

(i) circumstances indicating the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the domain name was registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided there is a pattern of such conduct; or

(iii) circumstances indicating that the domain name was registered primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the domain name has intentionally been used in an attempt to attract, for commercial gain, Internet users to a website or other on-line location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on a website or location.

At the time when the Respondent registered the disputed domain name <newyorklerners.com>, the Complainant was the owner, not only of the trademark LERNER, but also of the trademark LERNER NEW YORK, which contains the geographic designation “New York”.

The evidence submitted by the Complainant demonstrates that the website to which the disputed domain name resolves has contained a link to the Complainant’s main website “www.nyandcompany.com”.

Furthermore, the Panel has noted that the Respondent has been a party in at least two previous UDRP proceedings. In both proceedings it was held that the Respondent had acted in bad faith. Considering the fact that the Respondent has a recorded history of registering domain names that include other parties’ trademarks, the circumstances indicate that the conduct of the Respondent constitutes a pattern. See Kraft Foods Global Brands, LLC v. Jet Stream Enterprises Limited, Jet Stream, WIPO Case No. D2009-0547 and Fluor Corporation v. Jet Stream Enterprises Limited, WIPO Case No. D2010-0395.

In the absence of contrary evidence, the Panel finds that the Respondent knew or should have known of the Complainant’s trademarks at the time the Respondent registered the disputed domain name.

Furthermore, the Complainant has submitted evidence showing that the website to which the disputed domain name resolves contains numerous advertising links to commercial third party websites promoting and/or offering third party products and services. Such exploitation of the reputation of trademarks to obtain click-through commissions from the diversion of Internet users is an indication of use in bad faith as demonstrated in prior UDRP decisions. See e.g., L´Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623 and F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451.

There is no evidence in the case that refutes the Complainant’s submissions.

Thus, the evidence in the case before the Panel indicates that the disputed domain name has intentionally been used in an attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website.

The Panel concludes that the Complainant has proved the requirements under paragraph 4(b) of the Policy and that the disputed domain name <newyorklerners.com> has been registered and used 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 disputed domain name <newyorklerners.com> be transferred to the Complainant.

Johan Sjöbeck
Sole Panelist
Dated: November 4, 2010