New RSC, LLC DBA rue21 v. Mike Chattan / Arvixe, LLC
Claim Number: FA2204001991345
Complainant is New RSC, LLC DBA rue21 (“Complainant”), represented by Jamie E. Sternberg of Saunders & Silverstein LLP, Massachusetts, USA. Respondent is Mike Chattan / Arvixe, LLC (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rueplus.com>, registered with eNom, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honorable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 6, 2022; the Forum received payment on April 6, 2022.
On April 7, 2022, eNom, LLC confirmed by e-mail to the Forum that the <rueplus.com> domain name is registered with eNom, LLC and that Respondent is the current registrant of the name. eNom, LLC has verified that Respondent is bound by the eNom, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 8, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 28, 2022 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@rueplus.com. Also on April 8, 2022, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 4, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honorable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant operates in the clothing, fragrance, and accessories industry. Complainant has rights in the RUE+ mark through its registration with the USPTO (Reg.4,753,085, registered Apr. 10, 2014), together with a series of other related trademarks (“the RUE21 marks”). See Compl. Ex. E. Respondent’s <rueplus.com> domain name is identical or confusingly similar to Complainant’s RUE+ mark as it incorporates the mark and adds the descriptive word “plus”, along with the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <rueplus.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its RUE+ mark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use. Given Complainant’s long-standing established rights in the Rue21 marks, it is likely that Respondent uses the disputed mark solely to mislead Internet users with an impression of association with Complainant.
Respondent registered and uses the <rueplus.com> domain name in bad faith. The well-known nature of the RUE21 marks incorporated in the disputed domain name indicate Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in those marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that operates in the clothing, fragrance, and accessories industries.
2. Complainant has established its rights in the RUE+ mark through its registration of the mark with the USPTO (Reg.4,753,085, registered April 10, 2014).
3. Complainant has also established common law trademark rights in a series of related trademarks and those rights were established at least from 1996.
4. Respondent registered the disputed domain name on December 1, 2012.
5. Respondent uses the domain name solely to mislead Internet users with an impression of association with Complainant.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Although it is not necessary for Complainant to go further to show its standing to bring the proceeding, it should be noted here and for the later consideration of the issue of bad faith registration of the domain name that the evidence also shows that Complainant has for many years registered trademarks for RUE +, RUE PLUS, RUE21 PLUS and RUE 21, the last mentioned having been registered in 1996 with a first use 1980. The Panel notes those other trademarks here and that they are part of the evidence because the domain name was registered in 2012 and thus before the trademark relied on for RUE+ was registered. However, it is clear that Complainant had acquired common law trademark rights in expressions such as those mentioned above from as early as 1980 and before the domain name was registered by Respondent.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s RUE+ mark. Complainant argues that Respondent’s <rueplus.com> domain name is confusingly similar to Complainant’s RUE+ mark. Under Policy ¶ 4(a)(i), adding a descriptive word while maintaining the dominant portion of the mark along with the “.com” gTLD is generally insufficient to distinguish a disputed domain name from the mark. See Empowered Medical Solutions, Inc. d/b/a QRS-Direct and QRS Magnovit AG v. NULL NULL / QUANTRON RESONANCE SYSTEMS / JIM ANDERSON / HTR / unknown HTR / HTR, FA 1784937 (Forum June 8, 2018) (“Adding or removing descriptive terms or a gTLD is insufficient to differentiate a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i).”). Additionally, incorporating a phonetically identical version of a mark may also render it identical to the mark it incorporates as it does in the present case. See Zillow, Inc. v. Domain Admin / Whois Privacy Corp., FA 1596560 (Forum Feb. 2, 2015) (holding, “The terms remain phonetically identical and the alteration is trivial and does nothing to dispel the obvious the correspondence between the trademark and the domain name.”). The disputed domain name incorporates Complainant’s RUE+ mark and adds the descriptive word “plus”, along with the “.com” gTLD. Therefore, as the Panel agrees, it finds Respondent’s domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Intel Corp. v. Macare, FA 660685 (Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”).
(a) Respondent has chosen to take Complainant’s RUE+ mark and to use it in its domain name adding only the generic word “plus” to the mark;
(b) Respondent registered the domain name on December 1, 2012;
(c) Respondent uses the disputed mark solely to mislead Internet users with an impression of association with Complainant;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent is not commonly known by the <rueplus.com>, nor has Complainant authorized or licensed Respondent to use its Rue+ mark in the disputed domain name. Past panels have found that without evidence to support an assertion that a respondent is commonly known by a domain name, the assertion must be rejected. However, when a Respondent fails to submit additional evidence, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See al Buff Exteriors, LLC v. gregg buffington, FA 1691787 (Forum Oct. 17, 2016) (holding that, when a respondent fails to submit additional evidence, the relevant WHOIS record may determine the name by which respondent is commonly known). The WHOIS record identifies Respondent as “Mike Chattan”. See Registrar Verification Email. Therefore, as the Panel agrees, it finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent is not using the <rueplus.com> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to divert Internet users to Respondent’s website by misleading Internet users with an impression of association with Complainant is generally not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Complainant has provided screenshots of the disputed domain name’s website, which does not resolve to an active webpage, but instead generates an error message. See Compl. Ex. J. Complainant argues that Respondent is attempting to divert internet users to the disputed domain name by registering an identical or confusingly similar domain name to the mark. Therefore, as the Panel agrees, it finds Respondent is not using the disputed domain name for a bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii);
(g) Complainant argues that Respondent is not using the <rueplus.com> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use by inactively holding the disputed domain name. Under Policy ¶¶ 4(c)(i) and (iii), inactively holding a disputed domain name’s resolving website is generally not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Dell Inc. v. link growth / Digital Marketing, FA 1785283 (Forum June 7, 2018) (“Respondent’s domain names currently display template websites lacking any substantive content. The Panel finds that Respondent has does not have rights or legitimate interests with respect of the domain name per Policy ¶¶ 4(c)(i) or (iii).”). Complainant provides screenshots of the disputed domain name’s resolving website, which features no content but an error message. See Compl. Ex. J. Therefore, as the Panel agrees, it finds Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <rueplus.com> domain name in bad faith by inactively holding the disputed domain name’s resolving website. Inactively holding a disputed domain name is generally considered evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Caravan Club v. Mrgsale, FA 95314 (Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith). The Panel recalls Complainant’s screenshots of the disputed domain name’s resolving website, which features no content. See Compl. Ex. J. Therefore, as the Panel agrees, it finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
On these issues, it should also be specifically noted that Complainant acquired its trademark rights well before Respondent registered the disputed domain name and that as a consequence Respondent must have known that it was transgressing on the trademarks when it registered the domain name and was thus acting in bad faith.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <rueplus.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown QC
Panelist
Dated: May 10, 2022
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