Complainant is PAIGE, LLC (“Complainant”), represented by Rod S. Berman of JEFFER MANGELS BUTLER & MITCHELL LLP, California, USA. Respondent is Xiaohong Hu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <paigeoutlet.com>, registered with Name.com, Inc..
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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 4, 2022; the Forum received payment on August 4, 2022.
On August 8, 2022, Name.com, Inc. confirmed by e-mail to the Forum that the <paigeoutlet.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, Inc. 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 August 9, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 29, 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@paigeoutlet.com. Also on August 9, 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 September 1, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC as Panelist.
On September 2, 2022, pursuant to ursuant to Rule 12 of ICANN’s Uniform Domain Name Dispute Resolution Policy (“the Rules”), the Panel requested the Complainant to provide additional information relating to the ownership of the trademark registrations upon which it relied and allowed the Respondent 2 days to respond to any such information provided. Complainant timely furnished said additional information on September 2, 2022 and as no timely submissions were received from Respondent, the Panel proceeded to make this Decision.
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 claims rights in the PAIGE mark established by its ownership of a portfolio of registrations including the United States registrations identified below for which it has adduced evidence of ownership.
Complainant submits that the disputed domain name <paigeoutlet.com> is confusingly similar to the PAIGE trademark in which Complainant has rights because it contains the PAIGE mark in its entirety and Complainant’s mark is the dominant element in the disputed domain name. Citing Arthur Guinness Son & Co. (Dublin) v. Healy/BOSTH, WIPO Case No. D2001-0026 (finding confusing similarity where the domain name in dispute contains the identical mark of complainant combined with a generic word).
Complainant further argues that the addition of the element “outlet” which is a secondary generic term is insufficient to distinguish the disputed domain name from the PAIGE trademark.
Complainant next alleges that Respondent has no rights or legitimate interests in the disputed domain name, arguing that Respondent is not commonly known by the disputed domain name, nor is he, nor has he ever been, licensed or otherwise authorized to use the disputed domain name or any of Complainant’s trademarks and as evidenced by a declaration of the Chief Financial Officer of Complainant, which is annexed to the Complaint, Respondent has no association with either Complainant or its PAIGE mark.
Complainant further alleges that Respondent has neither used nor prepared to use the disputed domain name in connection with a bona fide offering of goods or services (policy 4(c)(i)).
Firstly, Complainant asserts that it has received communication from a customer that, despite being charged payment, Respondent has not shipped any of the goods it offers for sale on Respondent’s website associated with the disputed domain name (hereinafter, “Respondent’s Website”). The customer had completed a purchase and Respondent had collected personal information of the customer and accepted payment for the purchase but did not ship any goods to the customer. Thus, Complainant submits Respondent was not actually offering the goods or services at issue, and Respondent’s offerings are not bona fide for this reason alone.
Secondly, Complainant contends that even if Respondent did ship goods, the goods shipped by Respondent are likely counterfeit goods of significantly lower quality than Complainant’s high-end PAIGE-branded goods. The goods sold on Respondent's Website are highly discounted from the manufacturer's suggested retail price ("MSRP"). Respondent's Website purports to sell goods with discounts that can go up to 70% off the MSRP. As such, if the goods were authentic, Respondent would be selling the goods at a loss or insufficient profit margins to stay in business, which suggests the goods being sold, if any, are counterfeits.
Furthermore, referring to a screen capture of the products page on Respondent’s Website, which has been annexed to the Complaint, Complainant submits that a quick glance demonstrates that Respondent is also purporting to offer clothing made by “Joseph.” JOSEPH is a competing brand to Complainant’s PAIGE brand. Thus,the Panel should find that this purported offering of goods of Complainant’s competitors, does not constitute a bona fide offering.
Thirdly, Complainant argues that Respondent’s Website makes no mention whatsoever of any relationship between Respondent and Complainant. In fact, there is none. Instead, Respondent’s Website merely makes liberal and unauthorized use of Complainant’s PAIGE mark in connection with Respondent’s counterfeit products, without any disclaimer. In Houghton Mifflin Co. v. Weatherman, Inc., WIPO Case No. D2001-0211, the panel held that there was no bona fide offering where a website's use of complainant's logo, and lack of any disclaimer, suggested that website was the official Curious George website.
Complainant adds that Respondent makes liberal use of Complainant’s PAIGE mark, without providing any disclaimer about the lack of relationship between Complainant and Respondent and the disputed domain name improperly suggests that the reflected site is the official outlet store website for Complainant’s PAIGE brand.
Complainant furthermore submits that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers. Rather, as noted above, Respondent is using the disputed domain name to misleadingly divert consumers who are looking to purchase authentic PAIGE jeans from Complainant and as alleged above, Respondent is accepting payment from those consumers, and is thus using the disputed domain name for commercial gain.
Complainant next alleges that the disputed domain name has been registered and is being used in bad faith.
Complainant argues that its PAIGE brand is well known for manufacturing and selling premium denim and related clothing and accessories. For over a decade, Complainant has used its federally registered PAIGE mark in connection with the advertising and sale of its jeans, shorts, skirts, and shirts. In contrast, Respondent is using the disputed domain name and the Respondent’s Website to which it resolves to advertise and offer for sale counterfeit PAIGE jeans, shorts, and pants, as well as counterfeit apparel purporting to be made by Complainant’s competitors. Complainant has not authorized such use of its PAIGE mark, nor has it authorized the sale or distribution of any of the apparel offered on the website.
Complainant argues that it follows that Respondent has intentionally registered, and is intentionally using, the disputed domain name in an attempt to attract, for commercial gain, Internet users to Respondent’s Website, by creating a likelihood of confusion with Complainant’s PAIGE mark, including its federally registered PAIGE mark and such use is intended to confuse and has in fact confused consumers as to the source, sponsorship, affiliation, or endorsement of Respondent’s Website and the goods offered thereon.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a manufacturer and distributor of denim and other apparel, which is sold using the PAIGE among others. Complainant claims ownership of a number of registrations for the PAIGE mark including the following to registrations for which it has provided evidence of its ownership:
· United States registered trademark PAIGE, registration number 4,046,193, registered on the Principal Register on October 25, 2011 for goods in international class 25;
· United States registered trademark PAIGE, registration number 4,128,766, registered on the Principal Register on April 17, 2012 for goods in international class 25.
The disputed domain name <paigeoutlet.com> was registered on January 20, 2022 and resolves to a website that purports to offer Complainant’s PAIGE branded apparel and also apparel manufactured by a competitor of Complainant at substantially discounted prices.
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs for the disputed domain name and the information provided by the Registrar confirming that Respondent is the registrant of the disputed domain name.
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”).
Complainant has provided uncontested evidence to prove that on the balance of probabilities it has rights in the PAIGE mark, established by its ownership of its trademark registrations described above.
The disputed domain name <paigeoutlet.com> consists of Complainant’s mark in its entirety, in combination with the elements “outlet” and the generic Top-Level Domain (“gTLD”) extension <.com>.
Complainant’s PAIGE mark is the initial, dominant and only distinctive element in the disputed domain name. The element “outlet” has no distinguishing character.
The gTLD extension <.com> would be considered by Internet users as a necessary technical requirement for a domain name and therefore does not prevent a finding of confusing similarity between the disputed domain name and Complainant’s PAIGE mark.
This Panel finds therefore that the disputed domain name <paigeoutlet.com> is confusingly similar to the PAIGE mark in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
The Complainant has made out a prima facie case that the Respondent has no rights legitimate interests in the disputed domain name arguing that
· Respondent is not commonly known by the disputed domain name, nor is he, nor has he ever been, licensed or otherwise authorized to use the disputed domain name or any of Complainant’s trademarks;
· Respondent has no association with either Complainant or its PAIGE mark;
· Respondent has not used or prepared to use the disputed domain name in connection with a bona fide offering of goods or services (policy 4(c)(i));
· even if Respondent did ship goods, the goods shipped by Respondent are likely counterfeit goods of significantly lower quality than Complainant’s high-end PAIGE-branded goods, because the goods sold on Respondent's website are highly discounted from the manufacturer's suggested retail price;
· Respondent's Website purports to sell goods with discounts that can go up to 70% off the manufacturer's suggested retail price and if the goods were authentic, the profit margins would be selling the goods at a loss or insufficient profit margins to stay in business, which suggests the goods being sold, if any, are counterfeits;
· furthermore, even a quick glance at the screen capture of the “Products” page on the website to which the disputed domain name resolves, which has been exhibited in an annex to the Complaint, shows that Respondent is also purporting to offer JOSEPH branded garments which are manufactured by a competitor of Complainant’s PAIGE brand;
· Respondent’s website makes no mention whatsoever that there is no relationship between Respondent and Complainant, but instead makes liberal and unauthorized use of Complainant’s PAIGE mark in connection with Respondent’s counterfeit products, without any disclaimer;
· such unauthorised liberal use of Complainant’s PAIGE mark, without providing any disclaimer about the lack of relationship between Complainant and Respondent, improperly suggests that the reflected site is the official outlet store website for Complainant’s PAIGE brand;
· Respondent is using the disputed domain name to misleadingly divert consumers who are looking to purchase authentic PAIGE jeans from Complainant and as alleged above;
· Respondent is accepting payment from those consumers, and is thus using the disputed domain name for commercial gain;
· therefore, Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers.
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.
Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
The Complainant has asserted that it has used the PAIGE mark on its apparel for over a decade and this is supported by the fact that the earliest United States registered trademark upon which it relies was registered on October 25, 2011.
The disputed domain name <paigeoutlet.com> was registered on January 20, 2022 long after Complainant established its reputation.
The PAIGE mark is distinctive and given the existence of Complainant’s prior rights and reputation, and the fact that so soon after the disputed domain name was registered it has been used to purport to offer Complainant’s PAIGE branded apparel to the public. It is implausible therefore that the registrant chose and registered the disputed domain name without knowledge of Complainant, its rights and its mark.
The disputed domain name is in itself also a combination of the Complainant’s mark, as its dominant feature, and the word “outlet”, which is a word frequently used in relation to retail sales of garments. This further infers that the disputed domain name was registered with Complainant’s mark in mind.
This Panel finds therefore that on the balance of probabilities the disputed domain name was registered in bad faith with Complainant’s PAIGE mark in mind with the intention of taking predatory advantage of Complainant’s reputation and goodwill in the PAIGE mark.
Complainant has asserted that it has been informed that a customer visiting the website to which the disputed domain name resolves was defrauded by Respondent who took payment for an order but failed to deliver. This is however merely a bare assertion and Complainant has not supported this allegation with any evidence. This Panel cannot make any finding in that regard.
Similarly Complainant has alleged that Respondent is offering counterfeit products because the 70% discount on offer is unprofitable. While such discounts may infer that the goods are counterfeit, there is insufficient evidence to allow this Panel to make such a finding either.
Complainant has however nonetheless proven on the balance of probabilities, that the disputed domain name is being used in bad faith. The screen capture of the website to which the disputed domain name resolves which is exhibited in an annex to the Complaint, shows that Respondent is purporting to offer not only Complainant’s PAIGE branded goods but also the goods of a competitor.
Complainant is therefore using Respondent’s PAIGE mark within the disputed domain name and the website address, to attract, confuse, misdirect and divert Internet traffic intended for Complainant to Respondent’ Website.
Such intentional use of the disputed domain name in an attempt to attract, for commercial gain, Internet users to Respondent’s Website on which Respondent is purporting to offer not only apparel which is manufactured by Complainant, but also apparel purportedly produced by a competitor of Complainant, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site and the competing goods, constitutes an abuse of the disputed domain name and Complainant’s goodwill and reputation which constitutes use in bad faith for the purposes of the Policy.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has succeeded in the third element of the test in Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <paigeoutlet.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: September 6, 2022
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