Autumn Cashmere, Inc. v. Margert Sweitzer
Claim Number: FA1710001752311
Complainant is Autumn Cashmere, Inc. (“Complainant”), represented by George Schooff of Bejin Bieneman PLC, Michigan, USA. Respondent is Margert Sweitzer (“Respondent”), Alabama, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <autumncashmeresale.com>, registered with Web Werks India Pvt. Ltd d/b/a ZenRegistry.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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 5, 2017; the Forum received payment on October 5, 2017.
On October 9, 2017, Web Werks India Pvt. Ltd d/b/a ZenRegistry.com confirmed by e-mail to the Forum that the <autumncashmeresale.com> domain name is registered with Web Werks India Pvt. Ltd d/b/a ZenRegistry.com and that Respondent is the current registrant of the name. Web Werks India Pvt. Ltd d/b/a ZenRegistry.com has verified that Respondent is bound by the Web Werks India Pvt. Ltd d/b/a ZenRegistry.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 October 11, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 31, 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@autumncashmeresale.com. Also on October 11, 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 November 3, 2017, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant is a retailer of cashmere clothing for adults and children. Complainant uses the AUTUMN CASHMERE mark in conjunction with its business practices. Complainant registered the AUTUMN CASHMERE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,150,535, registered Apr. 14, 1998). See Compl. Annex 2. Respondent’s <autumncashmeresale.com> is confusingly similar to Complainant’s AUTUMN CASHMERE mark because it incorporates the mark in its entirety, adding the generic term “sale” and the “.com” generic top level domain (“gTLD”).
ii) Respondent does not have rights or legitimate interests in <autumncashmeresale.com>. Respondent is not commonly known by the disputed domain name. Complainant has not authorized or licensed Respondent to use the AUTUMN CASHMERE mark in any regard, nor is Respondent affiliated with Complainant. Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <autumncashmeresale.com> resolves to a website offering goods identical to Complainant’s under Complainant’s mark. See Compl. Annexes 7–9.
iii) Respondent registered and is using the <autumncashmeresale.com> in bad faith. The disputed domain name attracts Internet users to Respondent’s website for commercial gain. Respondent attempts to pass itself off as Complainant by selling goods identical to Complainant’s under its mark. Respondent registered <autumncashmeresale.com> with actual knowledge of Complainant and its rights to the AUTUMN CASHMERE mark.
B. Respondent
Respondent did not submit a Response. The Panel notes that Respondent registered <autumncashmeresale.com> on May 8, 2017.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed 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 is a retailer of cashmere clothing for adults and children. Complainant uses the AUTUMN CASHMERE mark in conjunction with its business practices. Complainant claims it registered the AUTUMN CASHMERE mark with USPTO (Reg. No. 2,150,535, registered Apr. 14, 1998). See Compl. Annex 2. The general consensus among panels is that registrations with USPTO are sufficient to show rights in a mark. Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Therefore, the Panel determines that Complainant’s registration with USPTO is sufficient to show rights in the AUTUMN CASHMERE mark.
Complainant asserts that Respondent’s <autumncashmeresale.com> is confusingly similar to Complainant’s AUTUMN CASHMERE mark because it incorporates the mark in its entirety, adding the generic term “sale” and the “.com” gTLD. A confusing similarity exists where a disputed domain name contains complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016). As such, the Panel concludes that Respondent’s <autumncashmeresale.com> is confusingly similar to Complainant’s AUTUMN CASHMERE mark.
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 (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 (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 does not have rights or legitimate interests in <autumncashmeresale.com>. To support its assertion, Complainant illustrates that Respondent is not commonly known by the disputed domain name. WHOIS information associated with this case identifies Respondent as “Margert Sweitzer.” The respondent is not commonly known by the disputed domain name where there is no evidence in the record, including the WHOIS information, suggesting that the respondent is commonly known by that name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006). Therefore, “[g]iven the WHOIS contact information for the disputed domain [name],” the Panel may “infer that Respondent . . . is not commonly known by the [disputed domain name] in any derivation.” Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Forum Nov. 17, 2003).
Complainant avers it has not authorized or licensed Respondent to use the AUTUMN CASHMERE mark in any regard, nor is Respondent affiliated with Complainant. Complainant contends that Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. In support of its contention, Complainant demonstrates that Respondent’s <autumncashmeresale.com> resolves to a website offering goods identical to Complainant’s under Complainant’s mark. See Compl. Annexes 7–9. No bona fide offering of goods or legitimate noncommercial or fair use exists where respondent uses the resolving website to sell products branded with complainant’s mark, and were either counterfeit products or legitimate products of complainant being resold without authorization. See Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015). As such, the Panel finds that Respondent does not have rights or legitimate interests in <autumncashmeresale.com> pursuant to Policy ¶¶ 4(c)(i) and (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. 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 has no rights or legitimate interests in the disputed domain names.
Complainant maintains that Respondent registered and is using the <autumncashmeresale.com> in bad faith. Complainant asserts that the disputed domain name attracts Internet users to Respondent’s website for commercial gain. Moreover, Complainant contends that Respondent attempts to pass itself off as Complainant by selling goods identical to Complainant’s under its mark. The disputed domain name is registered and used in bad faith where the respondent hosts a website that “duplicate[s c]omplainant’s mark and logo, giving every appearance of being associated or affiliated with [c]omplainant’s business.” Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003). Therefore, the Panel determines that “Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and . . . bad faith per Policy ¶ 4(b)(iv).” Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015).
Complainant argues that Respondent registered <autumncashmeresale.com> with actual knowledge of Complainant and its rights to the AUTUMN CASHMERE mark. “[A]lthough the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith,” panels have found “actual knowledge through the name used for the domain and the use made of it.” Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014). In light of the fame, notoriety, and long-standing use of Complainant's AUTUMN CASHMERE mark, it is inconceivable that Respondent could have registered the disputed domain names without actual knowledge of Complainant's rights in the mark. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”). Therefore, where the circumstances indicate that Respondent had actual knowledge of Complainant's mark when it registered <autumncashmeresale.com>, the Panel finds bad faith. Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum Apr. 10, 2006).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <autumncashmeresale.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: November 13, 2017
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page