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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

St. John Knits, Inc. v. Texas International Property Associates - NA NA

Case No. D2008-1381

1. The Parties

The Complainant is St. John Knits, Inc., Irvine, California, United States of America, represented by Leffert Jay & Polglaze P.A., United States of America.

The Respondent is Texas International Property Associates - NA NA, Dallas, Texas, United States of America, represented by Law Office of Gary Wayne Tucker, United States of America.

2. The Domain Name and Registrar

The disputed domain name <saintjohnknits.com> is registered with Compana LLC d/b/a Budgetnames.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 9, 2008. On September 12, 2008, the Center transmitted by email to Compana LLC d/b/a Budgetnames.com a request for registrar verification in connection with the disputed domain name. On September 15, 2008, Compana LLC d/b/a Budgetnames.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”), 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 September 22, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 12, 2008. The Response was filed with the Center on October 12, 2008.

The Center appointed Ik-Hyun Seo as the sole panelist in this matter on October 22, 2008. 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 is a California corporation engaged in the manufacture and wholesale, retail and Internet sale of high-fashion women’s apparel and accessories. The Complainant has an on-line store found at “www.stjohnknits.com” as well as retail locations throughout the world.

The Respondent appears to be an entity based in Texas.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to the mark in which the Complainant has rights. More specifically, the Complainant asserts that it owns several trademark registrations for ST. JOHN and that the disputed domain name simply spells out the “St.” (i.e. Saint) portion and includes the additional term “knits.”

The Complainant also contends that the Respondent has no rights or legitimate interests in the disputed domain name. More specifically, the Complainant asserts that the Respondent is not commonly known by the domain name in question, and that the Respondent’s use thus far in connection with a domain name parking service cannot constitute a bona fide use.

Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. First, the Complainant notes the long history of prior domain name disputes involving the Respondent in which the Respondent was found to have acted in bad faith. The Complainant further notes that the present use of the disputed domain name, in which the Complainant as well as its competitors are reflected, demonstrates that the Respondent knew of the Complainant and acted in bad faith.

B. Respondent

Although the Respondent submitted a Response, no substantive arguments were presented. Rather, the Respondent offered a “unilateral consent to transfer”, and requested that a decision for transfer be rendered without any findings on the substantive issues.

6. Discussion and Findings

Although the Respondent has made a “unilateral consent to transfer” of the disputed domain name, for reasons that will be explained later, the Panel finds it more appropriate to make at least brief findings on the substantive points, particularly on the element of bad faith.

A. Identical or Confusingly Similar

The Complainant has demonstrated with supporting evidence that it holds several trademark registrations for the mark ST. JOHN, the “St.” portion being an abbreviation for the word “saint”. The disputed domain name is formed simply by spelling out the “St.” portion of the Complainant’s trademark and adding the term “knits”, which in itself is not distinctive and serves little to dispel confusion especially in light of the complainant’s business. For these reasons, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s rights in ST. JOHN.

B. Rights or Legitimate Interests

The Complainant has made the required allegations that the Respondent has no rights or legitimate interests in the disputed domain name. Respondent has elected to present no substantive arguments on this or any other points in its Response, choosing instead to simply consent to transfer. The disputed domain name appears to have been used merely to forward to a domain name parking service, and such use does not constitute a bona fide use. In view of the above, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The evidence of bad faith in this matter is overwhelming to say the least. First, the near identical correspondence between the disputed domain name <saintjohnknits.com> and the Complainant’s website address at “www.stjohnknits.com“ is far beyond what can be explained as coincidence, and strongly suggests a deliberate and bad faith intention to unjustly benefit or profit from the goodwill associated with the Complainant’s trademark and website address.

The most telling and undeniable fact is the long history of domain name disputes in which the Respondent was found to have acted in bad faith. Even as recently as July 7, 2008, a panel found the subject Respondent to have acted in “serious bad faith”, further noting that 40 adverse UDRP decisions had already been rendered against the Respondent. See President and Fellows of Harvard College v. Texas International Property Associates – NA NA, WIPO Case No. D2008-0597 (involving <harvarduniversitypress.com>).

In the Harvard case, the Respondent tried to employ the same tactic of consenting to transfer after the complaint had been filed, seeking to avoid a substantive finding by the panel. While a panelist could issue a decision ordering transfer of the disputed domain name without addressing the substance of the issues in such a situation, and doing so might be quite appropriate under the right circumstances, such is not the case here. In the subject case, the Respondent has consented to transfer merely in an attempt to avoid another negative decision. This Panel concurs with the panel in Harvard and takes the position that such tactics cannot be condoned, and for this reason alone, a substantive decision against the Respondent should be rendered.

Thus, the Panel finds that the disputed 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 <saintjohnknits.com> be transferred to the Complainant.


Ik-Hyun Seo
Sole Panelist

Dated: November 19, 2008

 

Источник информации: https://www.internet-law.ru/intlaw/udrp/2008/d2008-1381.html

 

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