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Mimran Group, Inc. v. Kathy Silverstein and KAS [2004] GENDND 1223 (10 September 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Mimran Group, Inc. v. Kathy Silverstein and KAS

Case No. D2004-0566

1. The Parties

The Complainant is Mimran Group, Inc, Toronto, Ontario, of Canada, represented by Ian Lurie, United States of America.

The Respondent is Kathy Silverstein and KAS, located at West Palm Beach, Florida, United States of America and, Montreal, Quebec, Canada.

2. The Domain Names and Registrars

The disputed domain name <alfredsungbridesmaid.com> is registered with Tucows. The disputed domain name <alfredsungbridesmaids.com> is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 29, 2004. On July 30, 2004, the Center transmitted by email to Tucows and Network Solutions, LLC a request for registrar verification in connection with the domain named at issue. On July 30, 2004, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. On August 2, 2004, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on August 2, 2004. 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”), 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 August 4, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was August 24, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 25, 2004.

The Center appointed Daniel Peña as the sole panelist in this matter on August 31, 2004. 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 owns the registrations for the trademark “ALFRED SUNG” in many countries around the world. The Complainant’s rights in several of the “ALFRED SUNG” trademarks “” pre-date the Respondent’s registration of the disputed domain name.

The Complainant’s registered trademarks include, amongst many others, the following

Registration Number	Registration Date	Expires on	Jurisdiction
416,257	September 3 1993	September 3 2008	Canada
493,878	May 1, 1998	May 1, 2013	Canada
00593285	July 24, 1997	July 24, 2007	European Community
349,487	January 24, 1997		Indonesia
3272328	March 12, 1997	March 12, 2007	Japan
347777	October 1, 1996	October 1,2006	Republic of Korea
579,962	June 29, 1998	May 6, 2008	Mexico
T94/07512H	August 29, 1994	August 29, 2004	Singapore
648,508	September 1, 1995	July 15, 2004	Taiwan, province of China
648,507	September 1, 1995	July 15, 2004	Taiwan, province of China
672,160	March 1, 1995	February 28, 2005	Taiwan, province of China
646,167	July 16, 1994	June 15, 2004	Taiwan, province of China
A1,493,172	March 5, 1992	March 5, 2009	UK
1,364,576	October 8, 1985	October 8, 2005	USA
2,192,791	September 29, 1998	September 29, 2008	USA
2,208,387	December 8, 1998	December 8, 2008	USA

The Complainant manufactures and distributes fashions and accessories with Alfred Sung trademark.

5. Parties’ Contentions

A. Complainant

Complainant holds ALFRED SUNG trademarks in 10 different jurisdictions, including the United States, Canada, the European Community, Mexico and Japan, for products including women’s apparel, men’s apparel, fragrances, bridal wear and accessories and bath goods. Respondent holds no trademark or other rights to the Alfred Sung name.

Respondent continues to hold both of these domains, but does not have permission from the Complainant to own or use them. One domain is pointed to a temporary site, but remains held and controlled by Respondent. The other is not pointed at any Alfred Sung site. In addition, Respondent was originally permitted to use <alfredsungbridesmaid.com> as part of a license agreement. That agreement has ended, and Respondent is obligated to return control of that domain to Alfred Sung.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

Given that the domain names <alfredsungbridesmaid.com> and <alfredsungbridesmaids.com> are not identical to the ALFRED SUNG trademark registered and used in several countries by the Complainant, the Panel must examine if both domain names are confusingly similar.

The inclusion of the expressions “bridesmaid” and “bridesmaids” as the final part of the domain names does not make a sufficient difference between the domain name and the Complainant’s trademarks. On the contrary, and considering the activities of the Complainant Alfred Sung, this Panel believes that the expressions included may confuse the public about the business origin, the quality of products or services, the title-holder of the domain name and, above all, the actual owner of the disputed domain name.

B. Rights or Legitimate Interests

Respondent has not presented any evidence with respect to his legitimate interest to keep the ownership of the domain names. The fact of not replying to the Complaint within the term established by the Center and of not presenting any relevant evidence or response leads the Panel to consider that Respondent has no legitimate interests or rights to register and use the contested domain names. (Policy, 4(c)(i))

On the contrary, Complainant has stated and proved that it holds intellectual property rights that have been affected by the existence of the Respondent’s domain names. Such rights lead the Panel to believe that Respondent has no legitimate interests or intellectual property rights in the contested domain names thus complying with the second requirement of the Policy. (Policy, 4(c))

C. Registered and Used in Bad Faith

In accordance with the Rules for Uniform Domain Name Dispute Resolution Policy, the Panel shall examine whether bad faith existed at the time of registration and whether the use of the disputed domain name is also a bad faith use.

With regard to the domain name registration, the Panel considers that bad faith existed since the Respondent registered the domain names with knowledge of Complainant’s rights in the marks and mainly in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name (Policy, 4(b)(ii)). The fact that the Respondent registered the domain name <alfredsungbridesmaid.com> with the permission of the Complainant does not prevent a finding of bad faith. In this case, the combination of the Respondent’s continued use after the license agreement was terminated, the registration of the second domain name in bad faith, and the lack of a legitimate use for the domain names leads the panel to infer that the original registration of the domain name <alfredsungbridesmaid.com> was in bad faith.

Concerning the use of the disputed domain names, the Panel considers that the passive holding of a domain name <alfredsungbridesmaid> can be seen as use in bad faith, in particular when there is no obvious legitimate use of the domain name. The fact that the domain name <alfredsungbridesmaids> has been linked with a website related to Alfred Sung products is also considered as an evidence of registration and use 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 names <alfredsungbridesmaid.com> and <alfredsungbridesmaids.com> be transferred to the Complainant.

Daniel Peña
Sole Panelist

Dated: September 10, 2004