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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lernco, Inc. v. Shi San Dian

Case No. D2009-0850

1. The Parties

The Complainant is Lernco, Inc. of Wilmington, Delaware, United States of America, represented by Colucci & Umans, United States of America.

The Respondent is Shi San Dian of Shanghai, People`s Republic of China.

2. The Domain Name and Registrar

The disputed domain name <nyandcompnay.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 26, 2009. On June 26, 2009, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On June 29, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response, confirming that the 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" or "UDRP"), 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 July 3, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 23, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent`s default on July 24, 2009.

The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on July 30, 2009. 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.

On July 30, 2009, the Panel received notification from the Center stating that the name, but not the address, of the registrant of the disputed domain name had changed since the proceedings commenced.

4. Factual Background

The factual background has been compiled from information contained in the Complaint.

The Complainant owns the trademark NEW YORK & COMPANY. The Complainant licenses the trademark to New York & Company, Inc., which owns over 500 retail stores in the United States of America and is in the business of clothing, accoutrements, accessories, personal care products and other lines.

The Complainant is the owner of trademarks registered at the United States Patent and Trademark Office (USPTO) including:

No. 2,507,567 for the mark NEW YORK & COMPANY, registered November 13, 2001, international class 35;

No. 2,629,986 for the mark NEW YORK & COMPANY, registered October 8, 2002, international classes 18, 25 and 36;

No. 3,026,644 for the mark NEW YORK & COMPANY, registered December 13, 2005, international classes 9, 14, 18, 20, 25 and 26;

No. 3,446,405 for the mark NEW YORK & COMPANY, registered June 10, 2008, international class 3;

No. 3,382,726 for the mark NY&C, registered February 12, 2008, international classes 18 and 25;

No. 2,714,767 for the mark NEW YORK JEANS, registered May 13, 2003, international class 25;

No. 3,386,327 for the mark NY&C PLATINUM and design, registered February 19, 2008, international class 25;

No. 2,573,780 for the mark NY JEANS NEW YORK & COMPANY, registered May 28, 2002, international class 25.

The Complainant also owns domain names including <newyorkandcompany.com> and <nyandcompany.com>.

No facts are available about the Respondent except for the details provided in the registration document.

The disputed domain name <nyandcompnay.com> appears to have been registered on May 4, 2008.

5. Parties` Contentions

A. Complainant

The Complainant asserts ownership of and rights in the trademarks listed in section 4 above and submits documentary evidence in support.

The Complainant says that the disputed domain name <nyandcompnay.com> is confusingly similar to its trademarks for NEW YORK & COMPANY. The disputed domain name <nyandcompnay.com> is in fact a mis-spelling of the trademark.

The Complainant further contends that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent does not have and has never had any connection with the Complainant, does not deal in the Complainant`s products and is not a licensee of the Complainant.

The Complainant submits that there is no evidence of the Respondent`s use of, or demonstrable preparations to use the disputed domain name or a corresponding name in connection with a bona fide offering of goods or services. The corresponding website has no independent content but provides links to commercial websites.

The Complainant further contends that the disputed domain name was registered and is being used in bad faith. The disputed domain name incorporates the legal equivalent of the Complainant`s well-known trademark, with no apparent good faith reason but trades on the goodwill of the Complainant. It is contended that the Respondent is deemed to have constructive notice of the Complainant`s trademarks and cannot claim to have been unaware of the Complainant`s rights.

In a letter sent by email to the Respondent dated June 12, 2009 the Complainant demanded that the Respondent cease and desist from using the disputed domain name and transfer it to the Complainant. The Respondent replied on the same date with an offer to sell the disputed domain name for USD 999, with conditions.

The Complainant requests by way of remedy that the disputed domain name be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy states that the Respondent is required:

"…to submit to a mandatory administrative proceeding in the event that a third party (a ‘complainant`) asserts to the applicable Provider, in compliance with the Rules of Procedure, that

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

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

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

The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.

On July 30, 2009, it was brought to the attention of the Panel by the Center that, at an advanced stage of this proceeding, a change was recorded in the name, but not the address, of the registrant of record. The Center is required by paragraph 2 of the Rules to employ reasonably available means calculated to achieve actual notice of the Complaint to the Respondent, which is the registrant of record when the Complaint is lodged. The Panel is satisfied that the Center has fulfilled its obligations to attempt to provide the Respondent with notice of the Complaint as required by paragraph 2 of the Rules. In an email to the Center dated June 29, 2009, the registrar, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com, said: "A Registrar Lock has been applied to nyandcompnay.com and will continue to be maintained, until PublicDomainRegistry.com receives explicit instructions otherwise". The Panel is concerned that the name of the registrant in the WhoIs record had been changed, before conclusion of this proceeding.

A. Identical or Confusingly Similar

The Complainant must prove, first that it has rights in a trademark, and second, that the disputed domain name is identical or confusingly similar to the trademark.

The Panel is satisfied that the Complainant is the owner of and has held rights in trademarks in the style of or related to NEW YORK & COMPANY since at least as early as 2001.

The disputed domain name is <nyandcompnay.com>. The gTLD component ".com" is generally disregarded in the determination of identity or confusing similarity in decisions under the Policy. What remains is "nyandcompnay", which is a mis-spelling of and easily read as "nyandcompany", and which if spoken in either form would sound like NY & Company. The word "and" is the closest representation of the ampersand possible in a domain name and for present purposes "and" and "&" are treated as interchangeable.

None of the Complainant`s trademarks is precisely "ny and company". Some of the trademarks contain the full place name, e.g., NEW YORK & COMPANY, others contain the abbreviation for New York, namely NY, but not immediately followed by "and company". One of the trademarks, NY JEANS NEW YORK & COMPANY, contains both NY and & COMPANY, but not in the form NY & COMPANY.

The Complainant has its own domain names including <newyorkandcompany.com> and <nyandcompany.com>, to the latter of which the disputed domain name is virtually identical except for the spelling mistake "compnay". The question to be answered, however, is not whether <nyandcompnay.com> is confusingly similar to <nyandcompany.com>, but whether it is confusingly similar to the Complainant`s trademarks.

On the totality of the evidence, including the universally recognised abbreviation for NEW YORK being NY, the use of the abbreviation NY in some of the Complainant`s trademarks, and the prominence of the expression & COMPANY in the trademarks compared with "and company" in the disputed domain name, the Panel finds the disputed domain name to be an intentional typographical error that is confusingly similar to the Complainant`s trademarks. Confusing similarity is found in the terms of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has made out a prima facie case to the effect that the Respondent does not have rights or legitimate interests in the disputed domain name: for example the Respondent has never had any connection with the Complainant and does not deal in the Complainant`s products. In anticipation of the Respondent relying on any of the provisions of paragraph 4(c) of the Policy, the Complainant submits that there is no evidence of demonstrable preparations for the use of the disputed domain name in connection with a bona fide offering of goods or services, and that the corresponding website has no independent content but provides links to commercial websites.

The Respondent has made no submissions claiming rights or legitimate interests in the disputed domain name in the terms of paragraph 4(c) of the Policy or otherwise, and the Panel cannot find any evidence to suggest that the Respondent may have such rights. Accordingly the Panel finds for the Complainant in the terms of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant is required to prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four circumstances that, without limitation, 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 web site 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 web site or location or of a product or service on your website or location.

On the facts, a cease and desist letter sent by email to the Respondent on June 12, 2009 was replied to by the Respondent on the same day. The reply was strictly to the point that the disputed domain name was for sale, by stating merely "nyandcompany.com $999 firm" with the name of an escrow service and "Buyer pays escrow fees". A clearer and more succinct confirmation that the disputed domain name was for sale for profit would be hard to envisage. The Panel finds the primary intention of the Respondent to have been the sale of the disputed domain name to the Complainant or a competitor of the Complainant for an amount in excess of registration costs, and the Panel finds bad faith registration and use in the terms of paragraph 4(b)(i) of the Policy.

Revealingly, the Respondent`s reply offering the disputed domain name for sale spelt it <nyandcompany.com> (which domain name the Complainant already owns) rather than what the cease and desist letter had asked for, namely the mis-spelt variant <nyandcompnay.com>. The Panel is thus easily persuaded that the Respondent had the Complainant`s name in mind, and that in the terms of paragraph 4(b)(iv) of the Policy, Internet users who made a typographical error in the Complainant`s trademark and were led to the Respondent`s website at the disputed domain name <nyandcompnay.com> would likely be exposed to initial interest confusion as to the endorsement of the website. Bad faith registration and use are found accordingly.

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 <nyandcompnay.com> be transferred to the Complainant.

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Dr. Clive N.A. Trotman
Sole Panelist

Dated: August 13, 2009