national arbitration forum

 

DECISION

 

lululemon athletica canada inc. v. michael muraglia / Thomas / Thomas Jones

Claim Number: FA1307001508956

PARTIES

Complainant is lululemon athletica canada inc. (“Complainant”), represented by David M. Kramer of DLA Piper LLP, Washington, D.C., United States.  Respondent is michael muraglia / Thomas / Thomas Jones (“Respondent”), New Jersey, United States.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <lululemonaustralia.com> and <aulululemon.com>, registered with ENOM, INC.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Sandra J. Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 9, 2013; the National Arbitration Forum received payment on July 10, 2013.

 

On July 11, 2013, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <lululemonaustralia.com> and <aulululemon.com> domain names are registered with ENOM, INC. and that Respondent is the current registrant of the names.  ENOM, INC. has verified that Respondent is bound by the ENOM, 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 July 23, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 12, 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@lululemonaustralia.com, postmaster@aulululemon.com.  Also on July 23, 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 August 26, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <lululemonaustralia.com> and <aulululemon.com> domain names are confusingly similar to Complainant’s LULULEMON mark.

 

2.    Respondent does not have any rights or legitimate interests in the <lululemonaustralia.com> and <aulululemon.com> domain names.

 

3.    Respondent registered and uses the <lululemonaustralia.com> and <aulululemon.com> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

PRELIMINARY ISSUE: MULTIPLE RESPONDENTS

 

Complainant has alleged that the entities that control the disputed domain names are effectively the same person and/or entity, operating under several aliases.  Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”  Complainant argues that common control over both of the disputed domain names is evidenced by the fact that their resolving websites are substantially identical in content, and both resolving websites refer Internet visitors to a common homepage.  Complainant provides a supporting screenshot of the website resolving from the <aulululemon.com> domain name but not the <lululemonaustralia.com> domain name).  Complainant further alleges that, as of July 9, 2013, each of the disputed domain names had identical WHOIS records, were registered using the same provider, and were held at the same registrar.  The Panel notes CSA Int’l (a.k.a. Canadian Standards Assoc.) v. Shannon, D2000-0071 (WIPO March 24, 2000) where the panel held that consolidation was appropriate where both disputed domain names were used to display similar content and where the same individual was listed as the administrative contact for each of the disputed domain names.  The Panel similarly finds that consolidation is appropriate here, as Complainant has sufficiently established that the disputed domain names are controlled by the same entity, and the Respondents will be referred to as “Respondent” throughout this decision.

 

FACTUAL FINDINGS

Complainant owns rights in various trademark registrations with the United States Patent and Trademark Office (“USPTO”), including the LULULEMON ATHLETICA mark (e.g., Reg. No. 2,607,811, Registered August 13, 2002) and the LULULEMON mark (e.g. Reg. No. 3,990,179 registered January 4, 2011). Complainant owns rights in trademark registrations with additional authorities around the world, including registrations of the LULULEMON mark (e.g., Reg. No. 896,137, registered July 8, 2002) with the Australian Department of Innovation, Industry, Science, Research and Tertiary Education (“DIISRTE”).

 

Respondent registered the <aulululemon.com> domain name on June 8, 2013 and the <lululemonaustralia.com> domain name on February 19, 2013, and they both resolve to websites making unauthorized sales of Complainant’s goods or counterfeit versions of Complainant’s goods. 

 

DISCUSSION

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.”).

 

 

 

Identical and/or Confusingly Similar

 

The Panel finds that Complainant has sufficiently established rights in its LULULEMON mark for the purposes of Policy ¶ 4(a)(i) through its trademark registrations with the USPTO and with DIISRTE.  Previous panels have held that a complainant establishes rights in a mark under Policy ¶ 4(a)(i) through evidence of numerous registrations of its mark throughout the world.  See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i).

 

Respondent’s <aulululemon.com> and <lululemonaustralia.com> domain names fully incorporate Complainant’s LULULEMON mark, merely adding the gTLD “.com” and the geographical term “Australia,” or the abbreviation for Australia, “au.”  Prior panels have found the addition of the gTLD “.com” is irrelevant for the purposes of Policy ¶ 4(a)(i).  See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).  Previous panels have also concluded that the addition of a geographic term to a complainant’s mark is not sufficient to distinguish the domain name from the mark for the purposes of Policy ¶ 4(a)(i).  See Skype Ltd. & Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”).  Thus, the Panel finds that the <aulululemon.com> and <lululemonaustralia.com> domain names are confusingly similar to Complainant’s LULULEMON mark.

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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.”).

 

Complainant asserts that Respondent is not commonly known by its <aulululemon.com> or <lululemonaustralia.com> domain names pursuant to Policy ¶ 4(c)(ii).  The WHOIS information identifies the registrants of the disputed domain names as “Thomas/Thomas Jones” and “michael muraglia,” not similar to the domain names.  Complainant asserts that it has no business relationship with Respondent, and Respondent is not permitted to use its LULULEMON mark.  In Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006), the panel concluded that the respondent was not commonly known by the disputed domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name.  In IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006), a previous panel also held that the respondent failed to establish rights and legitimate interests in the disputed domain name where the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name.  Thus, the Panel finds that Respondent is not commonly known by the <aulululemon.com> or <lululemonaustralia.com> domain names pursuant to Policy ¶ 4(c)(ii).

 

Complainant further asserts that Respondent’s use of the disputed domain names is not 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), because Respondent is using the disputed domain names to “misdirect and defraud customers” through unauthorized sales of Complainant’s goods or counterfeit versions of Complainant’s goods.  Previous panels have found that a respondent’s use of a domain name is not protected under Policy ¶¶ 4(c)(i) or 4(c)(iii) where the disputed domain name is used to sell a complainant’s goods without the complainant’s authorization.  See Hewlett-Packard Co. v. Burgar, FA 93564 (Nat. Arb. Forum Apr. 10, 2000) (finding that the respondent has no rights or legitimate interests in the <hewlettpackard.com> domain name, because the respondent is not a licensed dealer of Hewlett-Packard products and has not demonstrated any right except to declare that he is affiliated with a licensed re-seller of the complainant’s products); see also Keihin Corp. v. Youli Ltd., FA 1106190 (Nat. Arb. Forum Dec. 18, 2007) (finding no rights and legitimate interests when the respondent sold counterfeit versions of the complainant’s products in competition with the complainant’s business).  Here, Complainant has offered evidence that Respondent offers goods that purport to be Complainant’s lululemon goods. The Panel finds that Respondent is using the disputed domain names to sell counterfeit versions of Complainant’s goods and finds that Respondent’s use is not protected under Policy ¶¶ 4(c)(i) or 4(c)(iii) in accordance with Keihin Corp., supra.

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Respondent’s registration and use of the <aulululemon.com> and <lululemonaustralia.com> domain names disrupt Complainant’s business, by offering goods that purport to be Complainant’s lululemon goods without authorization.  Complainant alleges that Respondent offers either Complainant’s or counterfeit goods, both of which constitute bad faith.  Previous panels have concluded that the use of a domain name to offer a complainant’s goods without complainant’s authorization constitutes bad faith disruption pursuant to Policy ¶ 4(b)(iii).  See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”).  Previous panels have also determined that the use of a domain name to offer counterfeit versions of a complainant’s products also constitutes bad faith disruption under Policy ¶ 4(b)(iii).  Thus, the Panel finds that Respondent has demonstrated bad faith pursuant to Policy ¶ 4(b)(iii).

 

Respondent’s registration and use of the disputed domain names also constitutes attraction for commercial gain, bad faith under Policy ¶ 4(b)(iv). Respondent presumably receives a commercial benefit for each unauthorized sale of goods purporting to be lululemon goods.  In Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001), a previous panel found evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant. Similarly, in Affliction, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008), a previous panel found evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent by created confusion as to the complainant’s connection with the website by selling counterfeit products.  Thus, the Panel finds that Respondent is using the disputed domain names in bad faith under Policy ¶ 4(b)(iv).

 

Complainant alleges that Respondent’s registration of the <aulululemon.com> and <lululemonaustralia.com> domain names constitutes opportunistic bad faith because the domains incorporate Complainant’s well-known LULULEMON mark.  The Panel notes Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the ICQ mark is so obviously connected with the complainant and its products that the use of the domain names by the respondent, who has no connection with the complainant, suggests opportunistic bad faith).  However, panels have often found opportunistic bad faith to exist based on the timing of a respondent’s domain name registration, such as where a respondent registers the domain name in question to coincide with publicized news about the complainant’s business or another major event.  See Florists’ Transworld Delivery, Inc. v. Domain Strategy, Inc., FA 113974 (Nat. Arb. Forum June 27, 2002) (“Complainant previously held the contested domain name before an inadvertent error allowed the registration to lapse. Respondent apparently took advantage of the presented opportunity and immediately registered the lapsed domain name. Respondent’s opportunistic actions exhibit bad faith under Policy ¶ 4(a)(iii).”).  Thus, the Panel declines to find bad faith registration or use under Policy ¶ 4(a)(iii) on the basis of opportunism.

 

Finally, Complainant asserts that Respondent had actual knowledge of Complainant’s LULULEMON mark, which can be inferred due to the fame of the mark, the registration of two confusingly similar domain names, and the use of both to offer goods that purport to be Complainant’s lululemon goods.  The Panel agrees and finds bad faith registration and use under Policy ¶ 4(a)(iii).  See Radio & Records, Inc. v. Nat’l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (“The Panel also finds that there are reasonable grounds to infer that Respondent had actual notice of Complainant’s rights in the mark as well.  Complainant’s Radio & Records Magazine is a leading business journal covering an industry towards which Respondent’s services are marketed. Therefore, the Panel finds that Respondent registered the <radioandrecordsmagazine.com> domain name despite having constructive and actual notice of Complainant’s rights in the RADIO & RECORDS mark.  Respondent’s registration of the disputed domain name with knowledge of Complainant’s rights is further evidence of bad faith registration and use under Policy ¶ 4(a)(iii).”).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <lululemonaustralia.com> and <aulululemon.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Sandra J. Franklin, Panelist

Dated:  September 3, 2013

 

 

 

 

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