NY and Co Lp, LLC v. Blue Face
Claim Number: FA2107001953666
Complainant is NY and Co Lp, LLC (“Complainant”), represented by Renee Reuter, Missouri, USA. Respondent is Blue Face (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nycompanystyle.com>, registered with 1API GmbH.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 1, 2021; the Forum received payment on July 1, 2021.
On July 2, 2021, 1API GmbH confirmed by e-mail to the Forum that the <nycompanystyle.com> domain name is registered with 1API GmbH and that Respondent is the current registrant of the name. 1API GmbH has verified that Respondent is bound by the 1API GmbH registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 6, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 26, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@nycompanystyle.com. Also on July 6, 2021, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On July 28, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant, NY and Co IP, LLC, operates a women’s fashion apparel retailer. Complainant has rights in the NEW YORK & COMPANY and NY STYLE marks through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., NEW YORK & COMPANY – Reg. 2,507,567, registered Nov. 13, 2001; NY STYLE – Reg. 4,089,208, registered Jan. 17, 2012).
2. Respondent’s <nycompanystyle.com>[i] domain name combines Complainant’s marks, omits an “&,” and adds the “.com” generic top-level domain (“gTLD”).
3. Respondent lacks rights and legitimate interests in the <nycompanystyle.com> domain name as it is not commonly known by the domain name and is neither an authorized user or licensee of the NEW YORK & COMPANY or NY STYLE marks.
4. Additionally, Respondent does not use the domain name for any bona fide offer of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent attempts to pass off as Complainant and offers competing goods and services.
5. Respondent registered and uses the <nycompanystyle.com> domain name in bad faith. Respondent attempts to pass itself off as Complainant to disrupt Complainant’s business and attract consumers for commercial gain.
6. Respondent’s use of a privacy service provides further evidence of bad faith.
7. Additionally, Respondent registered the domain name with knowledge of Complainant’s rights in the NEW YORK & COMPANY and NY STYLE marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the NEW YORK & COMPANY and NY STYLE marks. Respondent’s domain name is confusingly similar to Complainant’s NEW YORK & COMPANY and NY STYLE marks. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <nycompanystyle.com> domain name and that Respondent registered and uses the domain name in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has rights in the NEW YORK & COMPANY and NY STYLE marks through registration with the USPTO. Registration of a mark with a national trademark agency, such as the USPTO, is generally sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant’s ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Complainant provides evidence of its registration with the USPTO (e.g., NEW YORK & COMPANY – Reg. 2,507,567, registered Nov. 13, 2001; NY STYLE – Reg. 4,089,208, registered Jan. 17, 2012). Thus, Complainant has rights in the NEW YORK & COMPANY and NY STYLE marks under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <nycompanystyle.com> domain name is confusingly similar to Complainant’s NEW YORK & COMPANY and NY STYLE marks, merely combining the marks, omitting the “&” and adding the “.com” gTLD. Combination of marks, omission of portions of a mark, and adding a gTLD to a mark, do not negate confusing similarity between a domain name and a mark under Policy ¶ 4(a)(i). See Hewlett-Packard Development Company, L.P. v. Yangxiaoyi / Qingyuan Tianheng Trading Company Ltd., FA 1625637 (Forum June 23, 2015) (“The combination of a complainant’s mark does not allow a respondent to avoid a finding of confusing similarity under Policy ¶ 4(a)(i).”); see also McKinsey Holdings, Inc. v. Indidom, D2000-1616 (WIPO Jan. 31, 2001) (finding that the removal of the ampersand from “McKinsey & Company” does not affect the user’s understanding of the domain name, and therefore the domain name <mckinseycompany.com> is identical and/or confusingly similar to the mark “McKinsey & Company”); see additionally Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel therefore finds the <nycompanystyle.com> domain name is confusingly similar to Complainant’s marks under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <nycompanystyle.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent lacks rights and legitimate interests in the <nycompanystyle.com> domain name as it is not commonly known by the domain name and is neither an authorized user nor licensee of the NEW YORK & COMPANY or NY STYLE marks. When a response is lacking, relevant WHOIS information may demonstrate that a respondent is not commonly known by a domain name under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). Here, the WHOIS information of record identifies “Blue Face” as the registrant of the <nycompanystyle.com> domain name. The Panel therefore holds that Respondent is not commonly known by the <nycompanystyle.com> domain name under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent fails to use the <nycompanystyle.com> domain name for any bona fide offer of goods or services or for any legitimate noncommercial or fair use, but instead to pass off as Complainant and offer goods which directly compete with Complainant’s business. Such use of an infringing domain name does not constitute a bona fide offer or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See ShipChain, Inc. v. 谢东东 / 谢东东, FA 1785189 (Forum June 21, 2018) (“The resolving webpages between Complainant’s and Respondent’s websites are virtually the same. Respondent’s use of the disputed domain name does not confer rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii).”). Complainant provides screenshots of the <nycompanystyle.com> domain name as evidence that Respondent attempts to pass off as Complainant and offer goods highly similar to those offered by Complainant. Thus, Respondent lacks rights and legitimate interests in the <nycompanystyle.com> domain name under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <nycompanystyle.com> domain name in bad faith because Respondent attempts to pass off as Complainant to offer counterfeit, unauthorized, or nonexistent versions of Complainant’s goods, disrupting Complainant’s business and attracting users for commercial gain. See Ontel Products Corporation v. waweru njoroge, FA1762229 (Forum Dec. 22, 2017) (“Respondent’s primary offering seem to be counterfeits of Complainant’s toy car products. Respondent’s use of the <magictrackscars.com> domain name is thus disruptive to Complainant’s business per Policy ¶ 4(b)(iii)”); see also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). Complainant provides screenshots of the resolving website of the <nycompanystyle.com> domain name as evidence of Respondent’s attempts to pass off as Complainant and offer unauthorized goods. The Panel therefore finds bad faith disruption and attraction for commercial gain under Policy ¶¶ 4(b)(iii) and (iv).
Complainant also contends that Respondent registered the <nycompanystyle.com> domain name with knowledge of Complainant’s rights in the NEW YORK & COMPANY and NY STYLE marks. Actual knowledge of another’s trademark rights is sufficient to establish bad faith, and can be shown by the notoriety of the mark and the use a respondent makes of the domain. See The Am. Auto. Assoc., Inc. v. Zag Media Corp., FA 1226952 (Forum Nov. 13, 2008) ("Mere constructive knowledge is insufficient to support a finding of bad faith."); see also iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). By incorporating exactly the words from Complainant’s marks, it can be easily inferred that Respondent had actual knowledge of those marks when Respondent registered the <nycompanystyle.com> domain name, thus demonstrating bad faith under Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nycompanystyle.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: August 6, 2021
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