Complainant is Rebecca Taylor, Inc. of New York, New York, United States of America (“United States”), represented by Sills Cummis & Gross P.C., United States.
Respondent is Veronica Cox of Wilmington, North Carolina, United States.
The disputed domain name <rebeccataylordress.com> (the “Disputed Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 26, 2018. On September 28, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 29, 2018, the Registrar transmitted by email to the Center its verification response confirming that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 3, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 23, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 24, 2018.
The Center appointed Maxim H. Waldbaum as the sole panelist in this matter on October 29, 2018. 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.
On September 26, 2018 Complainant filed a Complaint with the Center to transfer the Disputed Domain Name <rebeccataylordress.com> to Complainant. The Disputed Domain Name has been registered to Respondent since May 11, 2017. Complainant holds trademark registrations for the mark REBECCA TAYLOR in the United States (Reg. Nos. 2132863; 2601789; and 4145906; respectively registered on January 27, 1998; July 30, 2002; and May 22, 2018). Complainant also operates the website in the United States “www.rebeccataylor.com” for Complainant’s goods and services, being apparel, primarily dresses, bags and footwear and accessories.
Respondent operates the website “www.rebeccataylordress.com”, which appears to offer for sale discounted apparel under Complainant’s trademarks. On August 23, 2018 a cease and desist letter was sent to Respondent by Complainant demanding that Respondent cease and desist using the Disputed Domain Name, among other things, and transfer such Disputed Domain Name to Complainant. No communications were ever received by Complainant after that date to the filing of the Complaint and thereafter.
Complainant has, for over 20 years, developed a substantial business with the mark REBECCA TAYLOR in connection with apparel, primarily dresses, bags and footwear and accessories with retail and online services and has obtained multiple registration for the trademark REBECCA TAYLOR for such goods, in the United States and the world.
By virtue of the quality of its products, longstanding use, extensive promotion, advertising and unsolicited publicity for its trademark REBECCA TAYLOR, Complainant has established valuable trademark rights in the mark. The mark is exclusively associated with Complainant and has achieved secondary meaning in the marketplace. The Disputed Domain Name wholly incorporates Complainant’s trademark with the addition of a generic term, which does not prevent a finding of confusing similarity. Accordingly, the Disputed Domain Name is identical or confusingly similar to the Complainant’s trademark.
Complainant has an active presence on the Internet, operating the website “www.rebeccataylor.com”, devoted to the promotion of Complainant’s goods and services. The website has become a valuable tool in promoting Complainant’s goods and services. (Complaint pp 7-8).
The Disputed Domain Name <rebeccataylordress.com> was registered on May 11, 2017 to Respondent. Complainant discovered such registration on or before August 15, 2018. The materials on such site show unauthorized use of Complainant’s exact mark REBECCA TAYLOR and unauthorized copies of Complainant’s propriety images depicting Complainant’s head designer Rebecca Taylor with models wearing REBECCA TAYLOR branded goods. The website is designed specifically with the intent to confuse consumers into believing the website at the Disputed Domain Name is related to or affiliated with Complainant’s website. Respondent seeks to imply this false affiliation by using the mark of Complainant, REBECCA TAYLOR, as the trade name and company name displayed on the top of each website page, followed by the images of Complainant’s head designer Rebecca Taylor. Such website of Respondent purports to sell Complainant’s clothing and accessories by displaying the REBECCA TAYLOR mark as part of the style name in Respondent’s individual products’ listings. (Complaint pp. 8-9).
Respondent has no rights or legitimate interest in the Disputed Domain Name. Respondent is not a licensee of Complainant or otherwise authorized to use Complainant’s trademark. Furthermore, Respondent’s above described use cannot constitute a bona fide use.
On August 23, 2018 Complainant’s attorney sent a cease and desist letter notifying Respondent of Complainant’s rights in the mark and considering the uses by Respondent to be trademark infringement and unfair competition, the use of Complainant’s photographs images to be copyright infringement and in violation of the laws and regulations against trafficking in domain names under ICANN policies and regulations. Complainant demanded and demands Respondent cease and desist from all such illegal and infringing use and transfer the Disputed Domain Name to Complainant. Respondent never responded to such demands. Considering the exact incorporation of Complainant’s trademark into the Disputed Domain Name, the unauthorized use of Complainant’s trademarks and copyrighted materials, and Respondent’s impersonation of Complainant, the Disputed Domain Name was registered and is being used in bad faith.
Respondent did not reply to Complainant’s contentions.
Respondent has defaulted. The Panel is not obligated to find for Complainant. However, with Respondent having failed to respond to any of the above assertions, the Panel may review Complainant’s presentations, if reasonable and supportable, as proper findings absent any unusual circumstances. No such circumstances are provided in the record.
From the record presented, Complainant has substantial rights in the known and incontestable trademark REBECCA TAYLOR in connection with apparel, including primarily dresses, bags, footwear and accessories for retail and online store services. There is no doubt that the Disputed Domain Name wholly incorporates the Complainant’s trademark. Furthermore, the use of the generic or descriptive terms “dress” and “.com” does not prevent a finding that the Disputed Domain Name is identical or confusing similar to Complainant’s trademark. F.Hoffman-LaRoche AG v. Macalve e-dominos S.A., WIPO Case No. D2006-0451. Accordingly, the Panel concludes the mark used by Respondent is clearly identical and confusingly similar to that of Complainant.
From the record Complainant has shown significant and legitimate rights for its trademarked goods. Respondent has not shown and could not show from the record presented that Respondent has any such rights or interest. There is no commercial relationship between the parties. Respondent has shown no evidence that it should have any rights or legitimate interest.
Complainant’s trademark rights significantly predate the registration of the Disputed Domain Name, and as such any potential attempts by Respondent to create rights or legitimate interests in “Rebecca Taylor” or “Rebecca Taylor Dress” are poisoned by the illegitimate acts of Respondent in trespassing on the well established rights of Complainant solely for ill gotten gains. These actions by Respondent, as an illegitimate junior user, do not instill any rights in Respondent. Chanel, Inc v. Esto Technology Group, WIPO Case No. D2000-0413. The mimicking use by Respondent in selling to unsuspecting customers alleged goods of Complainant is clearly set forth in Respondent’s website (Annex 5 to Complaint, compared to Complainant’s website, Annex 4). Respondent’s uses do not satisfy a bona fide offering of goods and services pursuant to paragraph 4(c)(i) of the Policy. Option One Mortgage Corporation v. Option One Lending, WIPO Case No. D2004-1052. Accordingly, the Panel concludes Complainant has met its burden regarding Respondent rights or legitimate interests.
Complainant’s rights in the REBECCA TAYLOR trademarks for their goods and services, as noted above, are compelling and supported by evidence annexed to the Complaint.
The Panel concludes that Respondent, given its activity in intentionally infringing the trademark rights of Complainant, was fully aware of Complainants longstanding use and good will in the REBECCA TAYLOR trademark for dresses and other apparel and accessories at the time of registration of the Disputed Domain Name. Respondent has sought and continues to seek the creation of an impression that Respondent is the owner of all the trademark rights in the designs created by Rebecca Taylor, and thus improperly seeks to take advantage of Complainant’s trademark and associated good will. By registering the Disputed Domain Name, Respondent has completed the circle of bad faith to steal the intellectual property rights of another. Further, Respondent intentionally recreated the website of Complainant to further deceive potential consumers. All of this activity and the effects on Complainant from these misdeeds can only lead to the conclusion that Respondent’s actions in registering the Disputed Domain Name and conducting an illegitimate business model in contravention of the Policy paragraph 4(a)(iii) and 4(b) and Rule paragraph 3(b)(ix)(3), registering and using in bad faith the Disputed Domain Name.
For the foregoing reasons, in accordance with paragraphs 4(j) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <rebeccataylordress.com> be transferred to Complainant.
Maxim H. Waldbaum
Date: November 12, 2018
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