national arbitration forum

DECISION

Claim Number: FA0701000888716

PARTIES

Complainant is Yurman Studio, Inc. (“Complainant”), represented by Louis S. Ederer, of Arnold & Porter LLP, 399 Park Avenue, New York, NY 10022. Respondent is Domain Drop S.A. (“Respondent”), PO Box 556, Main Street, Charlestown, West Indies KN.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <davidyurmanoutlet.com>, registered with Domaindoorman, Llc.

PANEL

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.

Louis E. Condon as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 16, 2007; the National Arbitration Forum received a hard copy of the Complaint on January 17, 2007.

On January 16, 2007, Domaindoorman, Llc confirmed by e-mail to the National Arbitration Forum that the <davidyurmanoutlet.com> domain name is registered with Domaindoorman, Llc and that Respondent is the current registrant of the name. Domaindoorman, Llc has verified that Respondent is bound by the Domaindoorman, Llc registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On January 18, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 7, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@davidyurmanoutlet.com by e-mail.

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

On February 13, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A. Complainant makes the following assertions:

1. Respondent’s <davidyurmanoutlet.com> domain name is confusingly similar to Complainant’s DAVID YURMAN mark.

2. Respondent does not have any rights or legitimate interests in the <davidyurmanoutlet.com> domain name.

3. Respondent registered and used the <davidyurmanoutlet.com> domain name in bad faith.

B. Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Yurman Studio, Inc., holds several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the DAVID YURMAN mark (i.e. Reg. No. 1,725,487 issued on October 20, 1992 and Reg. No. 2,014,167 issued on November 5, 1996). Complainant has used the DAVID YURMAN mark since 1970 in connection with its international sale of fine jewelry, precious stones and watches. Complainant has registered the domain name <davidyurman.com>, which it uses in connection with the promotion and sale of its goods.

Respondent registered the <davidyurmanoutlet.com> domain name on July 10, 2006. Respondent is using the disputed domain name to redirect Internet users to Respondent’s website featuring links and advertisements to websites selling designer fashions.

DISCUSSION

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."

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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

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.

Identical and/or Confusingly Similar

Complainant has established rights to the DAVID YURMAN mark through registration of the mark with the USPTO. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").

Respondent’s <davidyurmanoutlet.com> domain name is confusingly similar to Complainant’s DAVID YURMAN mark because Respondent’s domain name incorporates Complainant’s mark in its entirety and merely adds the generic or descriptive term “outlet” to the mark. The Panel finds that this minor addition does not alter Complainant’s mark sufficiently to negate the confusingly similar aspects of Respondent’s domain name under Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Brambles Indus. Ltd. v. Geelong Car Co. Pty. Ltd., D2000-1153 (WIPO Oct. 17, 2000) (finding that the domain name <bramblesequipment.com> is confusingly similar because the combination of the two words "brambles" and "equipment" in the domain name implies that there is an association with the complainant’s business).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainant has alleged that Respondent does not have rights or legitimate interests in the <davidyurmanoutlet.com> domain name. Complaint must make a prima facie case and then the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel assumes that Respondent does not have any rights or legitimate interests in the disputed domain name here because Respondent has failed to respond to the Complaint. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”). The Panel will evaluate the available evidence to determine whether Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).

Complainant alleges that Respondent is using the <davidyurmanoutlet.com> domain name to redirect Internet users to Respondent’s website featuring links and advertisements to other websites selling designer fashions. Respondent’s use of the disputed domain name to display links and advertisements to other websites is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommericial or fair use under Policy ¶ 4(c)(iii). See Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring pop-up advertisements and links to various third-party websites is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because the registrant presumably receives compensation for each misdirected Internet user); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (holding that the respondent’s use of the disputed domain name to host a series of hyperlinks and a banner advertisement was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name).

Additionally, Respondent has offered no evidence and no evidence is present in the record suggesting that Respondent is commonly known by the <davidyurmanoutlet.com> domain name. Respondent’s WHOIS information identifies Respondent as “Domain Drop S.A.” Therefore, Respondent has failed to establish rights or legitimate interest in the <davidyurmanoutlet.com> domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).

The Panel finds Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent has registered and is using the <davidyurmanoutlet.com> domain name, which is confusingly similar to Complainant’s DAVID YURMAN mark, in order to redirect Internet users to Respondent’s website featuring links and advertisements to other websites selling designer fashions. The Panel finds that such use constitutes disruption and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding that the disputed domain names were registered and used in bad faith where the respondent registered domain names which infringed upon the complainant’s mark, had no resemblance to the respondent’s business name and where the respondent’s competing business was located one and a half blocks from the complainant’s business).

Respondent is using the <davidyurmanoutlet.com> domain name to redirect Internet users to Respondent’s website featuring links and advertisements to other websites selling designer fashions for the assumed profit of Respondent. The Panel finds that because Respondent’s domain name is confusingly similar to Complainant’s DAVID YURMAN mark, Internet users may become confused as to Complainant’s affiliation with the website. Presumably, Respondent is profiting from this confusion. As such, Respondent’s use of the <davidyurmanoutlet.com> domain name to display links and advertisements to other websites constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where the respondent registered and used a domain name confusingly similar to the complainant’s mark to attract users to a website sponsored by the respondent); see also Hancock Fabrics, Inc. v. Active Advantage, Inc., FA 204111 (Nat. Arb. Forum Dec. 4, 2003) (“Respondent’s use of the <hancockfabric.com> domain name, a domain name confusingly similar to Complainant’s HANCOCK FABRICS mark, to redirect Internet traffic to a website that provides a selection of jokes demonstrates Respondent’ bad faith use of the disputed domain name because Respondent has created a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of Respondent’s website, which evidences bad faith registration and use under Policy ¶ 4(b)(iv).”).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <davidyurmanoutlet.com> domain name be TRANSFERRED from Respondent to Complainant.

Louis E. Condon, Panelist

Dated: February 28, 2007

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