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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Warna Co Inc., Warnaco U.S., Inc., Ocean Pacific Apparel Corp. v. Kentech, Inc., / Titan Net

Case No. D2006-0391

 

1. The Parties

The Complainants are Warnaco Inc., Warnaco U.S., Inc. and Ocean Pacific Apparel Corp., New York, New York, United States of America, represented by Katten Muchin Rosenman LLP, United States of America.

The Respondent is Kentech, Inc. / Titan Net, Rift Valley, Kenya.

 

2. The Domain Names and Registrars

The disputed domain names <nancyganz.org>, <olgabra.org>, <warnerbra.org> and <warnerbras.org> are registered with Domain Contender, LLC. The disputed domain name <oceanpacificclothing.org> is registered with Intercosmos Media Group d/b/a directNIC.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 17, 2006. On March 30, 2006, the Center transmitted by email to Domain Contender, LLC and Intercosmos Media Group a request for registrar verification in connection with the domain names at issue. On April 3, 2003, Domain Contender, LLC and Intercosmos Media Group transmitted by email to the Center their verification responses confirming that 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 April 10, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April 30, 2006. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 3, 2006.

On May 5, 2006, Complainants requested to add additional domain names to the Complaint. This was clearly out of time and is declined.

The Center appointed Clive Elliott as the sole panelist in this matter on May 12, 2006. 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

This dispute concerns the domain names:

<warnerbras.org>

<warnerbra.org>

<olgabra.org>

<nancyganz.org>

<oceanpacificclothing.org>

Complainant is a designer, manufacturer and retailer of, among other articles, men’s, women’s and children’s sportswear, swimwear, activewear and a broad range of accessories. It sells its products under its well-known WARNER’S, NANCY GANZ, OLGA and OCEAN PACIFIC names and marks throughout the world.

Complainants are the owners of United States federal trademark registrations for WARNER’S, NANCY GANZ, OLGA and OCEAN PACIFIC.

 

5. Parties’ Contentions

A. Complainant

In terms of the identity of Respondent, Complainants contend that Kentech Inc. is related to, if not the same as, Titan Net, and that Respondent, under a variety of aliases, has a history of registering trademark-related domain names which have been the subject of a number of UDRP decisions. Therefore, while the domain name <oceanpacificclothing.org> is registered to an entity with a different corporate name than each of the other domain names at issue, the contact information, including address, telephone number and e-mail contact, for all five subject domain names is identical, suggesting that such entities are, in fact, related and that all five domain names may be the subject of the same administrative proceeding under paragraph 4(f) of the Policy.

As to the substance of the Complaint, Complainants assert that as a result of their long and extensive use and promotion of each of Complainants’ marks in interstate commerce, the Complainants’ marks have acquired distinctiveness and secondary meaning signifying Complainants and own valuable goodwill which is symbolized by each of the Complainants’ marks. By virtue of Complainants’ extensive use and advertising of each of the Complainants’ marks, including Complainants’ use of such marks on the Internet (on its own web site as well as on the web site of third party distributors), each of the marks have become well known as associated with Complainants.

Complainants assert that on February 21, 2006, they sent, via both first class mail and email, cease and desist letters to Respondent advising of Complainants’ rights in each of the marks and requesting that Respondent transfer to Complainants ownership of the <warnerbra.org>, <nancyganz.org> and <oceanpacificclothing.org> domain names. Complainants sent a similar letter to Respondent on February 28, 2006, regarding the <warnerbras.org> and <olgabra.org> domain names. It says that in each case, the letters were returned as undeliverable because the mailing address provided by Respondent was not valid. In addition, an electronic version of these letters was sent to the email address provided by Respondent to the registrar but each such electronic version was returned as undeliverable.

Complainants assert that each of the disputed domain names <warnerbras.org>, <warnerbra.org>, <nancyganz.org>, <olgabra.org> and <oceanpacificclothing.org> use Complainants’ marks in their entirety and, in most instances, in combination with a term descriptive of the very products that Complainants sell, namely, bras.

Complainants submit that Respondent has had no legitimate interest in any of the Complainants’ marks and has not made demonstrable preparations to use any of the disputed domain names in connection with a bona fide offering of goods or services. Instead, Complainants contend that Respondent has merely used each of the disputed domain names in a deliberate attempt to exploit users seeking Complainants’ websites and products. Complainants assert that this is evidenced by each of the websites for the disputed domain names (which contains links to third party advertisings used for commercial gain).

Moreover, Complainants submit that Respondent has evidenced a pattern of registering domain names incorporating the marks of third parties and offering them for sale and that the registration and use of each of the disputed domain names is in bad faith and with full knowledge of each of Complainants’ marks and by virtue of Complainants’ federal trademark registrations.

B. Respondent

Respondent did not reply to Complainants’ contentions nor sought further time in which to do so. Accordingly, the Panel is only able to assess the evidence and submissions filed by Complainants. In the absence of any dispute as to the accuracy and correctness of that evidence, those submissions will be presumed to be true.

 

6. Discussion and Findings

Firstly, where appropriate the Complainants’ marks, names and trademark registrations are referred to in the rest of this decision for convenience, as the “trademarks.”

Having considered the Complaint, the Panel finds that for the reasons stated by Complainants the Complaint relating to the five domain names is properly brought as part of the same administrative proceeding. In terms of the substantive grounds the Panel finds that:

(1) the domain names registered by Respondent are identical or confusingly similar to trademarks in which Complainants have rights;

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

(3) the domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

It is apparent from the evidence that Complainants have used their WARNER’S, NANCY GANZ, OLGA and OCEAN PACIFIC trademarks throughout the world and that they comprise distinctive and valuable assets of the company. In the absence of contradiction by Respondent this evidence is accepted.

It is found that these trademarks provide Complainants with protectable rights pursuant to the Policy. The disputed domain names clearly adopt critical elements of the trademarks and on the face of it are either identical or confusingly similar to the said trademarks. On this basis the ground is clearly made out.

B. Rights or Legitimate Interests

Once a complainant makes a prima facie case the burden shifts to the respondent to establish rights or legitimate interests in the disputed domain name. See Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 (finding that once the complainant asserts that the respondent does not have rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name). The Panel concludes that on the basis of the record and in the absence of any effort to contradict Complainants’ assertions and submissions that a prima facie case is established under this ground.

Complainants contend that Kentech Inc. is related to or the same as, Titan Net, and that Respondent, under a variety of aliases, has a history of registering trademark-related domain names which have been the subject of at least eight UDRP decisions. Complainants cite in particular the decision in Dr. Ing. h.c.F. Porsche AG v. Kentech, Inc. a.k.a. Helois Lab a.k.a. Orion Web a.k.a. Titan Net a.k.a. Panda Ventures a.k.a. Spiral Matrix and Domain Purchase, NOLDC, Inc., WIPO Case No. D2005-0890. This contention appears to have merit.

In the light of this adverse finding against what seems to be the same party and in the absence of any effort at explanation, it is found that the ground is made out.

C. Registered and Used in Bad Faith

As to what constitutes bad faith under the Policy, this is now well established and it does not require further elaboration. Complainants assert that Respondent has evidenced a pattern of registering domain names incorporating the marks of third parties and offering them for sale. In support of the submission it relies on Sociйtй des Hфtels Meridien v. Spiral Matrix/Kentech Inc., WIPO Case No. D2005-1196, (the respondent found to have abusively registered and used 20 different domain names, including <hotellemeridien.com> and <lemreidian-hotels.com>, and Dr. Ing. h.c.f. Porsche AG v. Kentech Inc. a.k.a Helois, Inc. a.k.a. Orion Web a.k.a. Titan Net a.k.a. Panda Ventures a.k.a. Spiral Matrix and Domain Purchase, NOLDC, Inc., WIPO Case No. D2005-0890, (the respondent found to have abusively registered and used 22 different domain names, including <porsches.net> and <porsche911magazine.com>).

Given the substantial reputation and goodwill in Complainants’ trademarks and for the reasons given above it is difficult to see how Respondent can claim to have registered and used the disputed domain names in good faith. Accordingly, it is not necessary to repeat what has been said above.

Once again, absent explanation or purported justification, it is found that the ground is established.

 

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, <nancyganz.org>, <oceanpacificclothing.org>, <olgabra.org>, <warnerbra.org> and <warnerbras.org> be transferred to Complainants.

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Clive L. Elliott
Sole Panelist

Dated: May 26, 2006