RCRV, INC. d/b/a ROCK REVIVAL v. Brad Johnson
Claim Number: FA1301001478768
Complainant is RCRV, INC. d/b/a Rock Revival (“Complainant”), represented by Alan C. Veronick of Arnold & Porter LLP, New York, USA. Respondent is Brad Johnson (“Respondent”), Indiana, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rockrevivaljeanssale.com>, registered with GoDaddy.com, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 4, 2013; the National Arbitration Forum received payment on January 4, 2013.
On January 7, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <rockrevivaljeanssale.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 January 7, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 28, 2013 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@rockrevivaljeanssale.com. Also on January 7, 2013, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 31, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 makes the following assertions:
1. Respondent’s <rockrevivaljeansale.com> domain name, the domain name at issue, is confusingly similar to Complainant’s ROCK REVIVAL mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant manufactures, promotes, sells and distributes high-quality jeanswear and denim products throughout the U.S. under the ROCK REVIVAL brand name. Complainant owns trademark registrations for the ROCK REVIVAL mark with the United States Patent and Trademark Office (“USPTO”): Reg. No. 3,319,860 registered October 23, 2007 and Reg. No. 3,939,054 registered March 29, 2011. Respondent’s resolving website at the <rockrevivaljeanssale.com> domain name contains images, photographs of product and detailed product descriptions that infringe on Complainant’s mark, as well as indicia of security that would appear on a legitimate site. Respondent’s website was obviously deliberately set up to look like an authentic “ROCK REVIVAL” site operated by Complainant in order to deceive consumers. Respondent appears to be scamming consumers into paying for jeans and then shipping no products in return. The disputed domain name is confusingly similar to the ROCK REVIVAL trademark. Respondent’s registration and use of the disputed domain name creates a form of initial interest confusion, which attracts Internet users for Respondent’s own financial gain. Respondent has no connection or affiliation with Complainant and was never known by any name or trade name that incorporates the word “ROCK REVIVAL.” Respondent is not a licensee of Complainant and has not obtained permission, either express or implied, from Complainant to use the ROCK REVIVAL mark. Respondent registered the disputed domain name in bad faith because it had full knowledge of Complainant’s rights in the mark. Complainant’s trademark registrations provide constructive notice of Complainant’s rights in the mark. Respondent’s use of images, product photographs, and detailed product descriptions are intended to make the resolving website look like an authentic “ROCK REVIVAL” site operated by Complainant in order to deceive consumers, which is evidence of bad faith. Respondent’s use of the resolving website and confusingly similar disputed domain name create a form of initial interest confusion, which attracts Internet users to the infringing domain name for Respondent’s financial gain.
Respondent registered the disputed domain name on November 8, 2012.
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant manufactures, promotes, sells and distributes high-quality jeanswear and denim products throughout the U.S. under the ROCK REVIVAL brand name. Complainant owns trademark registrations for the ROCK REVIVAL mark with the USPTO: Reg. No. 3,319,860 registered October 23, 2007 and
Reg. No. 3,939,054 registered March 29, 2011. These USPTO trademark registrations sufficiently demonstrates that Complainant owns rights in the ROCK REVIVAL mark for the purposes of Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
The disputed domain name incorporates Complainant’s ROCK REVIVAL mark in its entirety, while making the following additional changes: removing the space between the terms of the mark, adding the descriptive and generic terms “jeans” and “sale,” and attaching the generic top-level domain (“gTLD”) “.com.” Previous panels have determined that none of these changes sufficiently distinguishes the disputed domain name from the mark. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”); see also Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business). Accordingly, Respondent’s <rockrevivaljeanssale.com> domain name is confusingly similar to Complainant’s ROCK REVIVAL mark according to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Respondent was never known by any name or trade name that incorporated Complainant’s mark and has never sought to obtain any trademark registrations for “rock revival” or any variation thereof. Respondent is not a licensee of Complainant and has not obtained permission, either express or implied, from Complainant to use the ROCK REVIVAL mark. The WHOIS information for the disputed domain name identifies the registrant as “Brad Johnson.” Based on the dissimilarity between the WHOIS information and the disputed domain name, as well as the lack of other evidence supporting any nominal connection between Respondent and the disputed domain name, the Panel concludes that Respondent is not commonly known by the disputed domain name and thus lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Respondent’s resolving website contains images, photographs of Complainant’s products, and detailed product descriptions. In addition, the resolving website contained other indicia of security protection that would appear on a legitimate website and was deliberately set up to look like an authentic ROCK REVIVAL site operated by Complainant in order to deceive consumers. Respondent appears to be scamming consumers into paying for jeans and then shipping no products in return. Apparently, Respondent is simply stealing people’s money in Complainant’s good name, while at the same time collecting personal information and either reselling it or otherwise misusing it. Respondent’s activities at the disputed domain name suggest that Respondent is attempting to pass itself off as Complainant as part of a phishing or commercial scheme. Such a use of the disputed domain name is not consistent with either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website); see also Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
The disputed domain name is confusingly similar to Complainant’s ROCK REVIVAL mark and consumers expect domain names incorporating a company’s name or trademark to lead to a website maintained by or affiliated with the trademark owner. The resolving website displays Complainant’s trademark, images, product photos and detailed product descriptions, along with indicia of security protection, in an effort to defraud consumers and create confusion. Respondent’s use of the disputed domain name creates a form of initial interest confusion that attracts Internet users. It appears that Respondent commercially profits by scamming consumers into paying for jeans but shipping no products in return. Respondent’s use of the disputed domain name to attract consumers to the resolving website by creating confusion with Complainant’s involvement with the website for Respondent’s own commercial gain indicates bad faith registration and use according to Policy ¶ 4(b)(iv). See Fanuc Ltd v. Mach. Control Servs., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products).
Respondent deliberately attempted to create a website that looks like an authentic ROCK REVIVAL site operated by Complainant by displaying Complainant’s trademark, images, product photographs and product descriptions, along with indicia of security protection that would appear on a legitimate website. This is sufficient for the Panel to find that Respondent is attempting to pass itself off as Complainant as part of a commercialized phishing scheme, which is evidence of bad faith registration and use pursuant to Policy 4(a)(iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”).
Complainant contends that, given the fame of the trademark, it is simply inconceivable that Respondent registered the disputed domain name without knowledge of Complainant’s rights. Complainant asserts that a simple Internet search would have revealed Complainant’s extensive use of its trademark and its USPTO trademark registrations provide constructive notice of Complainant’s trademark rights. Some panels have declined to make a finding of bad faith registration based on constructive notice alone. See BMC Software, Inc. v. Dominic Anschutz, FA 1340892 (Nat. Arb. Forum Oct. 6, 2010) (determining that constructive notice will usually not support a finding of bad faith). However, this Panel concludes that Respondent had actual knowledge of Complainant’s trademark and registered the disputed domain name in bad faith under Policy 4(a)(iii). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 2,4 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <rockrevivaljeanssale.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: February 3, 2013
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