Citizens of Humanity, LLC v. Lewis Delgado
Claim Number: FA1709001748695
Complainant is Citizens of Humanity, LLC (“Complainant”), represented by Emily Bresler of Law Offices of Gary Freedman, California, USA. Respondent is Lewis Delgado (“Respondent”), Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <citizensofhumanity-jeans.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 12, 2017; the Forum received payment on September 12, 2017.
On Sep 14, 2017, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <citizensofhumanity-jeans.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 September 14, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 4, 2017 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@citizensofhumanity-jeans.com. Also on September 14, 2017, 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 October 5, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant, Citizens of Humanity, LLC, designs, manufactures and sells various items of apparel, including jeans. In connection with this business, Complainant uses its CITIZENS OF HUMANITY mark to market and sell its apparel. Complainant has rights in the CITIZENS OF HUMANITY mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,940,943, registered Apr. 12, 2005).
2. Respondent has no rights or legitimate interests in the <citizensofhumanity-jeans.com>[1] domain name. Respondent is not commonly known by the domain name, nor is it an authorized seller or distributor of Complainant’s goods.
3. The domain name is not being used to provide a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Rather, the domain name resolves to a website where Respondent attempts to pass off as Complainant, and sell counterfeit apparel.
4. Respondent has registered and uses the <citizensofhumanity-jeans.com> domain name in bad faith. Respondent registered the domain name for the purpose of trading on Complainant’s marks and goodwill to confuse Internet users and gain commercially by selling counterfeit items.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the CITIZENS OF HUMANITY mark. Respondent’s domain name is confusingly similar to Complainant’s CITIZENS OF HUMANITY mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <citizensofhumanity-jeans.com> domain name and that Respondent registered and uses the domain name in bad faith.
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 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 (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 has rights in the CITIZENS OF HUMANITY mark based upon registration of the mark with the USPTO (e.g. Reg. No. 2,940,943, registered Apr. 12, 2005). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). The Panel holds that Complainant’s registration of the CITIZENS OF HUMANITY mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
The <citizensofhumanity-jeans.com> domain name contains the CITIZENS OF HUMANITY mark in its entirety, less the spacing, and merely adds a hyphen, the descriptive term “jeans,” and the generic top-level domain (“gTLD”) “.com.” Such changes are not sufficient to distinguish a domain name from a mark for the purposes of Policy ¶ 4(a)(i). See Health Republic Insurance Company v. Gustavo Winchester, FA 1622089 (Forum July 7, 2015) (“Therefore, omitted spacing and adding a TLD must be ignored when performing a Policy ¶4(a)(i) analysis.”); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); Gillette Co. v. RFK Assocs., FA 492867 (Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). The Panel finds the resultant domain name to be confusingly similar to the CITIZENS OF HUMANITY mark per Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <citizensofhumanity-jeans.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the <citizensofhumanity-jeans.com> domain name, as Respondent is not commonly known by the domain name, nor has Complainant authorized Respondent to use the CITIZENS OF HUMANITY mark in any way. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by a domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS information of record identifies Respondent as “Luis Delgado.” Additionally, the lack of evidence in the record to indicate Respondent had been authorized to register the <citizensofhumanity-jeans.com> domain name using the Complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in the domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <citizensofhumanity-jeans.com> domain name.
Complainant further argues Respondent’s lack of rights or legitimate interests in the <citizensofhumanity-jeans.com> domain name is demonstrated by the failure to use the name for a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, the domain name resolves to a website where Respondent passes off as Complainant and sells counterfeit products. Such use of a domain name does not demonstrate rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Watts Water Technologies Inc. v. wo ci fa men zhi zao (kun shan) you xian gong si, FA 1740269 (Forum Aug. 11, 2017) (“Respondent has used the domain name to resolve to a website that mimics the color scheme associated with Complainant’s WATTS brand and displays counterfeit versions of Complainant’s products for purchase in an attempt to pass itself off as Complainant… [therefore], the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.”). Complainant includes screenshots of the resolving website showing Respondent’s use of the actual names of Complainant’s apparel to attempt to sell presumably counterfeit products. The Panel finds Respondent lacks rights and legitimate interests in the <citizensofhumanity-jeans.com> domain name per Policy ¶¶ 4(c)(i) and (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent registered and uses the <citizensofhumanity-jeans.com> domain name for the purpose of trading on the goodwill of Complainant’s mark by creating consumer confusion for the purposes of selling counterfeit goods. The Panel agrees. Creating consumer confusion and profiting by the sale of counterfeit goods can demonstrate a respondent’s bad faith per Policy ¶ 4(b)(iii) and (iv). See H-D U.S.A., LLC v. Linchunming / linchunming, FA1411001589214 (Forum Dec. 22, 2014) (“Respondent uses the domain name to promote counterfeit goods like those offered by Complainant. Doing so disrupts Complainant’s business and demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iii).”); see also Affliction, Inc. v. Chinasupply, FA 1223521 (Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain by creating confusion as to the complainant’s connection with the website by selling counterfeit products). The Panel finds Respondent registered and uses the <citizensofhumanity-jeans.com> domain name in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
The Panel finds Complainant has satisfied 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 <citizensofhumanity-jeans.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: October 10, 2017
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