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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Kahn Lucas Lancaster, Inc. v. Marketing Total S.A.

Case No. D2007-1236

1. The Parties

Complainant is Kahn Lucas Lancaster, Inc., New York, of United States of America, represented by Charles Quinn, United States of America.

Respondent is Marketing Total S.A., Charlestown, West Indies, of Saint Kitts and Nevis.

2. The Domain Name and Registrar

The disputed domain name <emilywest.com> is registered with BelgiumDomains, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 21, 2007. On August 23, 2007, the Center transmitted by email to BelgiumDomains, LLC a request for registrar verification in connection with the domain name at issue. On August 23, 2007, BelgiumDomains, LLC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. 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 August 28, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was September 17, 2007. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 18, 2007.

The Center appointed Alexandre Nappey as the sole panelist in this matter on October 2, 2007. 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 has owned and continuously used EMILY WEST to identify a line of girl’s dresses, tops, pants, and skirts for eighteen years. Complainant is the registered owner of United States Trademark Registration Number 1605696 registered July 10, 1990, for the trademark EMILY WEST in relation to the products of “children’s clothing, namely, girl’s dresses, tops, pants and skirts sold separately and in sets”, first used in commerce on September 20, 1989.

Complainant’s EMILY WEST line is displayed on Complainant’s website “www.kahnlucas.com”.

Respondent registered the disputed domain name on March 23, 2007, which resolves a parking page.

5. Parties’ Contentions

A. Complainant

Complainant claims that the registered domain name of Respondent is obviously identical to Complainant’s registered EMILY WEST trademark and prevents Complainant from marketing its EMILY WEST line through “www.emilywest.com”.

It is highly likely that customers and potential customers of Complainant will be confused into believing that Complainant’s trademark EMILY WEST products are unavailable if they seek to find such goods at Respondent’s dormant website.

Complainant further submits that Respondent has no right or legitimate interest in the domain name strictly reproducing a registered trademark of Complainant used for more than eighteen years. Respondent has never used the domain name in issue to offer any goods or services to the public, or for any other legitimate purpose.

Complainant asserts that Respondent registered the disputed domain name primarily for the purpose of renting or otherwise transferring this domain to Complainant or a competitor of Complainant. Respondent has a history of cybersquatting as found in numerous decisions Complainant refers to.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy directs Complainant to prove each of the following:

(i) that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

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

(iii) that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy Complainant must establish rights in a trademark and secondly prove that the domain name in dispute is confusingly similar to the trademark in which Complainant has rights.

With respect to the first element the Panel is satisfied that Complainant holds rights in the trademark EMILY WEST.

The disputed domain name is undoubtedly identical to Complainant’s trademark except from the top-level domain suffix “.com”.

It is well accepted that a top-level domain, is to be ignored when assessing identity of mark and domain name (see, Latham & Watkins LLP v. Neovert, WIPO Case No. D2007-1205).

Therefore, the Panel accepts Complainant’s contentions. The disputed domain name is identical to Complainant’s mark. The Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the domain name.

Respondent has failed to file a response to challenge Complainant’s assertions that Respondent is not a licensee or has not been otherwise authorized to use Complainant’s trademark. Respondent also does not appear to be known by the disputed domain name. Further as discussed under the third limb, the Panel does not find that the domain name is being used for a legitimate noncommercial or fair use or that the domain name is used in connection with a bona fide offering of goods or services.

Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, which remained unchallenged by Respondent.

The Panel therefore finds that the second element in paragraph 4(a) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4(a)(iii) of the Policy Complainant must prove that the domain name in dispute has been registered and used in bad faith.

Paragraph 4(b) of the Policy sets out certain circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith. One of these circumstances reads as follows:

“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.”

Having regard to Complainant’s contentions the Panel finds that Respondent most likely was aware of Complainant’s trademark when it registered the disputed domain name. It seems unlikely in the circumstances of this case that Respondent would have chosen this name randomly.

The fact that the disputed domain name is used to direct or divert web users for profit (a pay-per-click scheme), to sites that sell products that compete with Complainant’s products is specific evidence of bad faith under paragraph 4(b)(iv) of the Policy.

Complainant further asserts that Respondent has demonstrated a history of engaging in bad faith registration and use of domain names that violate the rights of others. The Panel finds indeed that Respondent has been involved in no less than twelve other proceedings since the beginning of this year, all of which ordering cancellation or transfer of the domain names in issue (see among others Rude Chalets Limited v. Marketing Total S. A., WIPO Case No. D2007-0220; Carlisle Wide Plank Floors, Inc. v. Marketing Total, S.A., WIPO Case No. D2007-0844).

The Panel is therefore satisfied that Complainant established the third element of the Policy.

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 <emilywest.com> be transferred to Complainant.

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Alexandre Nappey
Sole Panelist

Dated: October 16, 2007