Mimran Group, Inc. v. Kathy Silverstein and KAS

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Mimran Group, Inc. v. Kathy Silverstein and KAS

Case No. D2004-0566

1. The Parties

The Complainant is Mimran Group, Inc, Toronto, Ontario, of Canada, represented by Ian Lurie, United States of America.

The Respondent is Kathy Silverstein and KAS, located at West Palm Beach, Florida,

United States of America and, Montreal, Quebec, Canada.

2. The Domain Names and Registrars

The disputed domain name <alfredsungbridesmaid.com> is registered with

Tucows. The disputed domain name <alfredsungbridesmaids.com> is registered

with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 29, 2004. On July 30, 2004, the Center transmitted by email to Tucows and Network Solutions, LLC a request for registrar verification in connection with the domain named at issue. On July 30, 2004, Tucows 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. On August 2, 2004, Network Solutions, LLC 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, the Complainant filed an amendment to the Complaint on August 2, 2004. 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 August 4, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was August 24, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 25, 2004.

The Center appointed Daniel Peña as the sole panelist

in this matter on August 31, 2004. 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

The Complainant owns the registrations for the trademark “ALFRED SUNG” in many countries around the world. The Complainant’s rights in several of the “ALFRED SUNG” trademarks “” pre-date the Respondent’s registration of the disputed domain name.

The Complainant’s registered trademarks include, amongst many others, the following

Registration Number

Registration Date

Expires

on

Jurisdiction

416,257

September 3 1993

September 3 2008

Canada

493,878

May 1, 1998

May 1, 2013

Canada

00593285

July 24, 1997

July 24, 2007

European Community

349,487

January 24, 1997

Indonesia

3272328

March 12, 1997

March 12, 2007

Japan

347777

October 1, 1996

October 1,2006

Republic of Korea

579,962

June 29, 1998

May 6, 2008

Mexico

T94/07512H

August 29, 1994

August 29, 2004

Singapore

648,508

September 1, 1995

July 15, 2004

Taiwan, province of China

648,507

September 1, 1995

July 15, 2004

Taiwan, province of China

672,160

March 1, 1995

February 28, 2005

Taiwan, province of China

646,167

July 16, 1994

June 15, 2004

Taiwan, province of China

A1,493,172

March 5, 1992

March 5, 2009

UK

1,364,576

October 8, 1985

October 8, 2005

USA

2,192,791

September 29, 1998

September 29, 2008

USA

2,208,387

December 8, 1998

December 8, 2008

USA

The Complainant manufactures and distributes fashions

and accessories with Alfred Sung trademark.

5. Parties’ Contentions

A. Complainant

Complainant holds ALFRED SUNG trademarks in 10 different jurisdictions, including the United States, Canada, the European Community, Mexico and Japan, for products including women’s apparel, men’s apparel, fragrances, bridal wear and accessories and bath goods. Respondent holds no trademark or other rights to the Alfred Sung name.

Respondent continues to hold both of these domains, but does not have permission from the Complainant to own or use them. One domain is pointed to a temporary site, but remains held and controlled by Respondent. The other is not pointed at any Alfred Sung site. In addition, Respondent was originally permitted to use <alfredsungbridesmaid.com> as part of a license agreement. That agreement has ended, and Respondent is obligated to return control of that domain to Alfred Sung.

B. Respondent

The Respondent did not reply to the Complainant’s

contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Given that the domain names <alfredsungbridesmaid.com> and <alfredsungbridesmaids.com> are not identical to the ALFRED SUNG trademark registered and used in several countries by the Complainant, the Panel must examine if both domain names are confusingly similar.

The inclusion of the expressions “bridesmaid” and “bridesmaids” as the final part of the domain names does not make a sufficient difference between the domain name and the Complainant’s trademarks. On the contrary, and considering the activities of the Complainant Alfred Sung, this Panel believes that the expressions included may confuse the public about the business origin, the quality of products or services, the title-holder of the domain name and, above all, the actual owner of the disputed domain name.

B. Rights or Legitimate Interests

Respondent has not presented any evidence with respect to his legitimate interest to keep the ownership of the domain names. The fact of not replying to the Complaint within the term established by the Center and of not presenting any relevant evidence or response leads the Panel to consider that Respondent has no legitimate interests or rights to register and use the contested domain names. (Policy, 4(c)(i))

On the contrary, Complainant has stated and proved that it holds intellectual property rights that have been affected by the existence of the Respondent’s domain names. Such rights lead the Panel to believe that Respondent has no legitimate interests or intellectual property rights in the contested domain names thus complying with the second requirement of the Policy. (Policy, 4(c))

C. Registered and Used in Bad Faith

In accordance with the Rules for Uniform Domain Name Dispute Resolution Policy, the Panel shall examine whether bad faith existed at the time of registration and whether the use of the disputed domain name is also a bad faith use.

With regard to the domain name registration, the Panel considers that bad faith existed since the Respondent registered the domain names with knowledge of Complainant’s rights in the marks and mainly in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name (Policy, 4(b)(ii)). The fact that the Respondent registered the domain name <alfredsungbridesmaid.com> with the permission of the Complainant does not prevent a finding of bad faith. In this case, the combination of the Respondent’s continued use after the license agreement was terminated, the registration of the second domain name in bad faith, and the lack of a legitimate use for the domain names leads the panel to infer that the original registration of the domain name <alfredsungbridesmaid.com> was in bad faith.

Concerning the use of the disputed domain names, the Panel considers that the

passive holding of a domain name <alfredsungbridesmaid> can be seen as

use in bad faith, in particular when there is no obvious legitimate use of the

domain name. The fact that the domain name <alfredsungbridesmaids> has

been linked with a website related to Alfred Sung products is also considered

as an evidence of registration and use 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 names <alfredsungbridesmaid.com> and <alfredsungbridesmaids.com> be transferred to the Complainant.

Daniel Peña

Sole Panelist

Dated: September 10, 2004

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• Mimran Group, Inc. v. LaPorte Holdings — D2005-1016 · alfredsungbridal.com · Transfer · 22 Dec 2005