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Wal-Mart Stores, Inc. v. Jeff Milchen [2005] GENDND 330 (10 April 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Mimran Group, Inc. v. LaPorte Holdings

Case No. D2005-1016

1. The Parties

The Complainant is Mimran Group, Inc., Toronto, Ontario, Canada, represented by Ian Lurie, President, The Written Word, Inc., Seattle, WA, United States of America.

The Respondent is LaPorte Holdings, Los Angeles, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <alfredsungbridal.com> is registered with NameKing.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 27, 2005. On September 27, 2005, the Center transmitted by email to NameKing.com a request for registrar verification in connection with the domain name at issue. On September 27, 2005, NameKing.com 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 in that it did not specify the grounds upon which it was based, the Complainant filed an Amended Complaint on October 31, 2005.

The amendments were to paragraphs V [11] A. and C. 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 November 1, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was November 21, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 22, 2005.

The Center appointed Paul E. Mason as the Sole Panelist in this matter on November 29, 2005. 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.

The Panel reviewed the Complaint and noted that the Amended did not indicate the relationship of the Complainant, Mimran Group, Inc., to the Alfred Sung Company, listed in the Complaint as the owner of the trademarks referred to therein.

The Center, notified Complainant of this on December 8, 2005. Complainant’s representative responded to the Center that same day by email, stating that he had “put the wrong company name for the trademark owner” in the Complaint, that “there is no Alfred Sung Company”, and that “the Mimran Group, Inc. is the trademark owner for all Alfred Sung trademarks”.

He concluded by asking if the Complaint could be amended accordingly.

Thereupon the Panel issued its Administrative Panel Procedural Order No. 1 on December 13, 2005. In the Order, the Panel decided that the Complaint could be amended as Complainant’s representative requested above.

The Panel also noted in the Order that while the body of the Complaint did list several Alfred Sung trademarks supposedly owned by the Alfred Sung Company, in addition to naming the wrong trademark owner, it did not annex any evidence or proof that these marks were indeed owned by Complainant. In this respect, the Panel requested the Complainant to produce such evidence to the Center. On the morning of December 22, 2005, the Center sent a fax to the Panel containing copies of several “Alfred Sung” trademark registrations in the Canadian Intellectual Property Office for bridal gowns, accessories and other garments, all in the name of the Complainant, Mimran Group, Inc. as Registrant.

4. Factual Background

According to the Complaint, which has not been answered or disputed by Respondent, Alfred Sung is the trademark of the Complainant, which manufactures and distributes fashions and accessories. Alfred Sung is a registered trademark in Canada, the European Community, Indonesia, Japan, Korea, Mexico, Singapore, Taiwan, the United Kingdom and the United States of America. The body of the Complaint lists detailed trademark registration information for these jurisdictions. As noted in the previous paragraph, Complainant did send proof of such registrations in Canada at the request of the Panel.

5. Parties’ Contentions

A. Complainant

Complainant’s bare bones complaint contends that the domain name <alfredsungbridal.com> being used by Respondent -

- is quite similar to its registered trademarks as described in paragraph 4 above except for the generic top-level domain name suffix “.com”; and

- is being used by Respondent without any right or legitimate interest; and

- was registered and is being used in bad faith

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

There is no question that the domain name is virtually identical to Complainant’s registered trademarks. Although we do not have copies of all the registration certificates, the Canadian certificates faxed to the Panel and other information in Paragraph 4 of the Complaint provide sufficient detail to describe the registered marks.

The Panel also notes that the domain name and website <alfredsungbridals.com> are very similar to the domain name at issue, with only the plural “s” being used in what appears to be the Complainant’s official website “www.alfredsungbridals.com”.

B. Rights or Legitimate Interests

Complainant asserts, and Respondent has not disputed, that Respondent has no rights or legitimate interest in the domain name <alfredsungbridal.com> or mark AlfredSung. Based on the case file, this Panel finds that Respondent has no such rights or interests. None of the examples of legitimate interest of the Policy, Paragraph 4c are applicable in the current case.

C. Registered and Used in Bad Faith

The Complainant must additionally establish that the disputed domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)). Based on the record presented, this Panelist concludes that Complainant has proffered sufficient evidence of bad faith.

The traditional criteria used by WIPO Panels to determine bad faith registration and use were recently set forth in WIPO Case No. D2005-1013 <themainemall.com>.

There, the Panel found concrete evidence of bad faith registration because the Respondent furnished incomplete registration information, and presumably already knew about Complainant’s mark when registering because of Respondent’s geographical proximity to the Maine Mall itself, a well-known locale in the area.

These concrete factors are not to be so easily found in the present case, partly because Respondent has not replied to the Complaint, because the Complainant’s representative failed to provide copies of Respondent’s home page, and because as of this date, the Panel was not able to access any website, whether active or inactive, using the domain name <alfredsungbridal>. The Panel was able to access the website “www.alfredsungbridals.com” which appears to be Complainant’s official website – another item which, unfortunately, was also not addressed by Complainant’s representative in the Complaint.

However, the Panel was able to infer past existence of the website using the domain name <alfredsungbridal.com> via a publicly available Google search, which revealed a number of wedding gowns for sale on “alfredsungbridal.com”, such as “Austin’s Wedding Guide, style number 6574”, “Alfred Sung Princess Gown, style number 6572”, etc.

The implications here are that Respondent knew of the Alfred Sung name and marks when it registered its website, that Respondent used a typosquatting technique to divert and attract internet traffic (“www.alfredsungbridal.com” varying only slightly from Complainant’s “www.alfredsungbridals.com” website), and that Respondent chose to shut down its website in the face of this administrative action.

Complainant further alleges that <alfredsungbridal.com> is a domain which is not only quite similar to Complainant’s trademark, but “places itself squarely in a market that Alfred Sung occupies”. Although this website could not be found by the Panel, the Panel’s Google search bears out this point, at least as it occurred in the past.

As of this date, with no accessible website, the Respondent is not making any active use of the domain name at issue. In this situation it may be appropriate, in determining whether Respondent is acting in bad faith, to review the panel’s analysis of this element in Telstra Corporation v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000). There the Panel acknowledged that registration of a domain name together with inaction can constitute bad faith use in certain circumstances. Here, the circumstances are that –

(i) Detailed descriptions of Complainant’s trademarks in the Complaint clearly show that that the Complainant’s trademark has a strong reputation, has been in use for many years and is widely known in the bridal fashion industry;

(ii) Respondent has apparently used a typosquatting technique in the past to divert Internet traffic away from Complainant in order to sell Complainant’s products and/or competing products without authorization.

(iii) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name;

(iv) Respondent has apparently chosen to shut down its website in the face of this administrative proceeding.

Given the above facts and circumstances, this Panel finds that Respondent has registered and has been using the domain name at issue 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 name <alfredsungbridal.com> be transferred to the Complainant.

Paul E. Mason
Sole Panelist

Dated: December 22, 2005