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Kate Spade LLC v. Karen Vog [2005] GENDND 760 (26 May 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Kate Spade LLC v. Karen Vog

Case No. D2005-0284

1. The Parties

The Complainant is Kate Spade LLC, Barbara Kolsun, New York, New York, United States of America, represented by Keats McFarland & Wilson, LLP, United States of America.

The Respondent is Karen Vog, Belle, Illinois, United States of America.

2. The Domain Name and Registrar

The disputed domain name <kate-spade-handbag.com> is registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 18, 2005. On March 21, 2005, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On March 22, 2005, Go Daddy Software 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. The Center verified that 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 March 31, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was April 20, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 21, 2005.

The Center appointed Andrew Mansfield as the sole panelist in this matter on May 12, 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.

4. Factual Background

Complainant sells in interstate commerce high fashion articles including without limitation handbags, all purpose carrying bags, tote bags, shoulder bags, clutch purses, all purpose athletic bags, backpacks, wallets, coin purses, organizers, paper goods and printed matter, cosmetic bags, shoes, fragrance and eyewear.

Complainant is the owner of the following federally registered trademarks: KATE SPADE® (Reg. Nos. 2,064,708; 2,384,267; 2,522,892; 2,578,942; 2,724,972; 2,848,846; 2,905,861; 2,919,490; and 2,918,996), KATE SPADE® (in stylized form) (Reg. No. 2,068,911), KATE SPADE and design® (Reg. No. 2,073,406), and KATE SPADE NEW YORK® (Reg. Nos. 2,446,491; 2,537,318; 2,654,803; 2,613,247; 2,841,312; and 2,848,845) (hereinafter collectively referred to as KATE SPADE Trademarks). Complainant submitted to the Panel printouts from the United States Patent and Trademark Office Website evidencing Complainant’s above-referenced federal trademark registrations.

5. Parties’ Contentions

A. Complainant

Since 1993, Complainant alleges that it has been engaged in the business of producing high quality clothing and accessories and has used the KATE SPADE trademark as its corporate name. As a result of that long-standing use, Complainant states that it is world-renowned and universally recognized as a producer and distributor of high quality clothing and accessories. Complainant’s annual revenue from its sales of “Kate Spade” Products bearing the KATE SPADE Trademarks exceeds $70,000,000 per year. Numerous news and publicity articles have featured the famous “Kate Spade” Products and KATE SPADE Trademarks.

Complainant alleges that all products produced by Kate Spade and distributed throughout the U.S. feature the KATE SPADE Trademarks.

Complainant further alleges that the KATE SPADE Trademarks have achieved world-renowned recognition and have become famous. Millions of consumers have seen and/or are familiar with the KATE SPADE Trademarks. As a result of Complainant’s extensive advertising and promotion of the “Kate Spade” Products bearing the KATE SPADE Trademarks, Complainant affirms that it has built up substantial good will in the KATE SPADE Trademarks.

Complainant alleges that Complainant’s U.S. federal trademark registrations serve as prima facie evidence of the validity of the KATE SPADE Trademarks and of Complainant’s exclusive right to use the KATE SPADE Trademarks. Some are allegedly incontestable.

Complainant avers that it has used KATE SPADE Trademarks on the Internet since September 1997 when it launched <katespade.com> to promote the “Kate Spade” Products.

On June 16, 2004, Respondent registered the domain name <kate-spade-handbag.com>. This domain name incorporates Complainant’s KATE SPADE trademark, with the addition of a dash (“-”) between the words KATE and SPADE and a dash (“-”) between the words “Spade” and “Handbag”.

Complainant alleges that the disputed domain name resolves to Internet websites that offer “Kate Spade” Products for sale. Moreover, Respondent has allegedly also provided hyperlinks on the website located at the Domain Name that resolve to links where competitor’s products are offered for sale. Internet users allegedly believe that they are clicking on hyperlinks that lead to Complainant’s products but are misdirected to competitors’ goods.

Complainant asserts that Respondent is using a domain name that is confusingly similar to Complainant’s KATE SPADE Trademarks and that such use is for Respondent’s commercial gain.

Complainant alleges that Respondent lacks rights or legitimate interests in the domain name in dispute. Respondent has never been known by the name “Kate Spade”, or the domain name in dispute. Complainant has never given a license nor in any way authorized Respondent to make use of Complainant’s KATE SPADE Trademarks.

Complainant asserts that the above facts cause the Domain Name to be subject to cancellation or transfer under Paragraph 4(a) of the Policy, because: (a) The Infringing Domain Name is identical or confusingly similar to trademarks in which the Complainant has rights; (b) The Respondent has no rights or legitimate interests in the Infringing Domain Name; and (c) The Infringing Domain Name was registered and is being used in bad faith.

By declaration, Complainant provides evidence that either: (1) the contact information for Respondent listed with the Registrar is false; or, (2) Respondent has falsely denied being the person responsible for the registration and use of the Domain Name. In addition, Respondent offered the Domain Name for sale shortly after the commencement of this proceeding.

B. Respondent

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

6. Discussion and Findings

In order to succeed in its Complaint the Complainant has the burden of proof in showing that each element within paragraph 4(a) of the Policy is present. These are as follows:

(i) the domain name in dispute is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name was registered and is being used by the Respondent in bad faith.

The Panel proceeds to deal with each of these elements in turn.

A. Identical or Confusingly Similar

The only difference between Complainant’s trademark KATE SPADE and the Domain Name is the addition of a hyphen and the generic word “handbag” to the Domain Name. Panels interpreting the Policy have found domain names confusingly similar based upon the addition of a hyphen to a mark. See, e.g., Teleplace, Inc. v. Oliveira, NAF Claim No. FA0010000095835 (December 4, 2000) (finding the domain names <teleplace.com>, <tele-place.com>, and <theteleplace.com> to be confusingly similar to Complainant’s mark TELEPLACE); See also InfoSpace.com v. Tenenbaum Ofer, WIPO Case No. D2000-0075 (April 7, 2000) (finding that “the domain name ‘info-space.com’ is identical to Complainant’s INFOSPACE trademark. The addition of a hyphen and .com are not distinguishing features.”)

The Domain Name entirely incorporates Complainant’s trademark KATE SPADE. Rather than distinguish the Domain Name from the trademark, the addition of the word “handbag” to the Domain Name actually creates greater confusion and similarity between the Domain Name and Complainant’s trademark.

The Panel finds that the Domain Name is confusingly similar to Complainant’s trademark KATE SPADE.

B. Rights or Legitimate Interests

The following are examples of circumstances where Respondent may have rights or legitimate interests over a contested domain name:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

Respondent filed no response in this matter. The Panel is unable to discern any rights or legitimate interests that Respondent has in “Kate-Spade-Handbags”.

Based on the case file, the Panel finds that Respondent has no rights or legitimate interests in the domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides the following non-exclusive examples of registration and use in bad faith:

“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

As demonstrated by Complainant, Respondent is making a commercial use of the Domain Name. Internet users are drawn to the Domain Name under the false assumption and fostered pretense that the Domain Name is associated with Complainant. Respondent has intentionally sought to foster confusion between the Domain Name and Complainant’s trademark KATE SPADE as evidenced by the inclusion of links to both official goods and those that compete with Complainant. Respondent is not a licensee of Complainant and has no right to profit from its association with Complainant’s trademark. Respondent certainly has no right to misdirect Internet users seeking legitimate “Kate Spade” products and display competing goods.

The Panel also considers the fact that contact information for Respondent provided to the Registrar is false. The listing of false information undermines the Policy. If, on the other hand, the information with the Registrar is accurate, Respondent has provided false information to Complainant’s counsel. In either situation, the registration and contact information is further evidence that Respondent engaged in a bad faith registration and continues to use the Domain Name in bad faith.

The Panel finds that the Domain Name was registered and is being used 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 be transferred to the Complainant.

Andrew Mansfield
Sole Panelist

Dated: May 26, 2005