Guru Denim LLC d/b/a True Religion Brand Jeans v. Bruno Migliozzi
Claim Number: FA1807001796493
Complainant is Guru Denim LLC d/b/a True Religion Brand Jeans (“Complainant”), represented by Diana S. Bae of Arent Fox LLP, District of Columbia, USA. Respondent is Bruno Migliozzi (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <truejeansdeals.com>, registered with 1API GmbH.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 12, 2018; the Forum received payment on July 12, 2018.
On July 16, 2018, 1API GmbH confirmed by e-mail to the Forum that the <truejeansdeals.com> domain name is registered with 1API GmbH and that Respondent is the current registrant of the name. 1API GmbH has verified that Respondent is bound by the 1API GmbH 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 18, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 7, 2018 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@truejeansdeals.com. Also on July 18, 2018, 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 August 9, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions.
Complainant, Guru Denim LLC d/b/a True religion Brand Jeans, has been involved in high-quality garments and retail services for nearly sixteen (16) years. Complainant has rights in the TRUE RELIGION (Reg. No. 3,162,614 registered Oct. 24, 2006) and TRUE RELIGION BRAND JEANS (Reg. No. 3,120,797 registered Jul. 25, 2006) marks based upon its registration of the marks with the United States Patent and Trademark Office (“USPTO”). See Amend. Compl. Annex A. Respondent’s <truejeansdeals.com> domain name is confusingly similar to Complainant’s mark because Respondent incorporates the dominant portions of the TRUE RELIGION mark, the first and last terms in the TRUE RELIGION BRAND JEANS mark, and adds the generic term “deals” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <truejeansdeals.com> domain name. Respondent is not authorized to use Complainant’s <truejeansdeals.com> mark and is not commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Instead, Respondent attempts to pass off as Complainant by redirecting internet users to a website that impersonates Complainant.
Respondent registered and uses the <truejeansdeals.com> domain name in bad faith. Respondent has engaged in a pattern of bad faith registration as it has been a respondent in past UDRP cases. Respondent also attempts to attract, for commercial gain, users the disputed domain name where Respondent passes off as Complainant in order to sell counterfeit goods. Furthermore, Respondent had actual and constructive knowledge of Complainant’s rights in the TRUE RELIGION and TRUE RELIGION BRAND JEANS prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that has been involved in the manufacture of high-quality garments and retail services for nearly sixteen (16) years.
2. Complainant has established its trademark rights in the TRUE RELIGION (Reg. No. 3,162,614, registered Oct. 24, 2006) and TRUE RELIGION BRAND JEANS (Reg. No. 3,120,797, registered Jul. 25, 2006) marks based upon its registration of the marks with the United States Patent and Trademark Office (“USPTO”).
3. Respondent registered the <truejeansdeals.com> domain name on June 7, 2017.
4. Respondent has used the domain name to attempt to pass itself off as Complainant by redirecting internet users to a website that impersonates Complainant and selling counterfeit goods.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the TRUE RELIGION BRAND JEANS marks based upon its registration of the marks with the USPTO. Registration of a mark with the USPTO is sufficient to establish Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Here, Complainant provides a copy of its mark’s registration with the USPTO for the TRUE RELIGION BRAND JEANS mark (Reg. No. 3,120,797 registered Jul. 25, 2006). Therefore, the Panel finds that the Complainant has rights in the TRUE RELIGION BRAND JEANS mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s TRUE RELIGION BRAND JEANS mark. Complainant argues that respondent’s <truejeansdeals.com> domain name is confusingly similar to Complainant’s marks because it omits two words from the TRUE RELIGION BRAND JEANS mark, adds a generic term, and uses a gTLD. Omitting terms from a complainant’s mark, while adding the generic word “deals” and a gTLD is not enough to distinguish a disputed domain name from the mark. See VNY Model Management, Inc. v. Lisa Katz / Domain Protection LLC, FA 1625115 (Forum Aug. 17, 2015) (finding that Respondent’s <vnymodels.com> domain name is confusingly similar to the VNY MODEL MANAGEMENT mark under Policy ¶ 4(a)(i).); see also Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). Here, Respondent omits the words “religion” and “brand” from Complainant’s TRUE RELIGION BRAND JEANS mark, and adds the generic term “deals” and the “.com” gTLD. Accordingly, the Panel concludes that Respondent’s <truejeansdeals.com> domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s TRUE RELIGION BRAND JEANS mark and used it in its domain name, omitting the words “religion” and “brand” , and adding the generic word “deals”;
(b) Respondent registered the disputed domain name on June 7, 2017;
(c) Respondent has used the domain name to attempt to pass itself off as Complainant by redirecting internet users to a website that impersonates Complainant, and selling counterfeit goods;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent lacks rights and legitimate interests in the <truejeansdeals.com> domain name because Respondent is not commonly known by the disputed domain name and is not authorized by Complainant to use the TRUE RELIGION BRAND JEANS mark. Where a response is lacking, WHOIS information may be used to identify a respondent per Policy ¶ 4(c)(ii). 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). Additionally, lack of authorization from a complainant to use its mark may support a finding that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information of record identifies Respondent as “Bruno Migliozzi.” Additionally, no information of the record indicates that Respondent was authorized to use Complainant’s BITTREX mark. Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant submits that the Respondent fails to use the <truejeansdeals.com> domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Specifically, Complainant argues that Respondent uses the disputed domain to pass itself off as Complainant to sell counterfeit goods. Using a disputed domain name to pass off and commercially benefit from the sale of counterfeit goods may not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business); see also 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.”). Here, the <truejeansdeals.com> domain name resolves to a webpage that displays Complainant’s marks and logos. See Amend. Compl. Annex D. Furthermore, the resolving website includes a copyright notice that identifies “True Religion Brand” as the copyright owner and displays copyrighted images owned by Complainant. Id. Accordingly, the Panel concludes that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
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 name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant submits that Respondent registered and uses the <truejeansdeals.com> domain name in bad faith. Specifically, Complainant claims that once the privacy shield for the disputed domain name has been lifted, Respondent’s identity will show that it has engaged in a pattern of bad faith. Complainant argues Respondent has been a party in adverse UDRP cases. A pattern of bad faith may be shown when a respondent has a history of past, adverse UDRP decisions under Policy ¶ 4(b)(ii). See DIRECTV, LLC v. michal restl c/o Dynadot, FA 1788826 (Forum July 5, 2018) (“The record contains evidence of Respondents previous eleven UDRP actions, all of which resulted in the transfer of the domain names, thus establishing bad faith per Policy ¶ 4(b)(ii).”). Complainant claims Respondent’s disputed domain name is nearly identical to the website that corresponds with another UDRP case (Gurum Denim Inc. d/b/a True Religion Brand Jeans v. WEI ZHANG, Forum FA160600167942). See Amend. Compl. Annex F. Therefore, the Panel agrees with Complainant and finds Respondent has engaged in a pattern of bad faith per Policy ¶ 4(b)(ii).
Secondly, Complainant claims that the Respondent registered and uses the <truejeansdeals.com> domain name to pass itself off as Complainant and sell counterfeit goods like those offered by Complainant. Deceiving consumers by using a complainant's well known marks to pass off as Complainant and sell counterfeit goods may demonstrate bad faith under Policy ¶ 4(b) (iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”); see also Snap Inc. v. Deepika Priyadarshinie / entsl, FA 1788600 (Forum June 21, 2018) (determining that the respondent’s offering of counterfeit versions of the complainant’s software creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion and thus demonstrates bad faith per Policy ¶ 4(b)(iv)). Here, Complainant provides screenshots of its website and compares them with screenshots of the website to which the disputed domain name resolves. See Amend. Compl. Annexes C and D. The screenshots show Respondent is using Complainant’s marks and photographs to promote similar products at discounted prices. Id. Accordingly, the Panel concludes that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Thirdly, Complainant argues that Respondent had actual and constructive knowledge of Complainant’s rights in the TRUE RELIGION and TRUE RELIGION BRAND JEANS mark prior to registering the <truejeansdeals.com> domain name. The Panel notes that while constructive notice of a complainant’s mark is insufficient for a finding of bad faith, actual knowledge of a complainant’s mark may be evidence of bad faith under Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum January 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). Complainant claims that due to Respondent’s use of the mark on the website to which the disputed domain name resolves to pass itself off as Complainant in order to sell counterfeit goods, Respondent had actual knowledge of the TRUE RELIGION and TRUE RELIGION BRAND JEANS mark. Consequently, the Panel concludes that Respondent had actual knowledge of Complainant’s rights in the mark prior to registration, thereby supporting a finding of bad faith under Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the TRUE RELIGION BRAND JEANS mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <truejeansdeals.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: August 15, 2018
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