Guru Denim, Inc. v. Gerbera Media, LLC
Claim Number: FA0603000652830
PARTIES
Complainant is Guru Denim, Inc. (“Complainant”), 1525 Rio Vista Ave., Los Angeles, CA 90023. Respondent is Gerbera Media, LLC (“Respondent”), 304 Newbury Street, Suite 300, Boston, MA 02115.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <truereligionjeans.com>,
registered with Domainsforme.Ca.
PANEL
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.
Jacques A. Léger, Q.C. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum
electronically on March 1, 2006; the National Arbitration Forum received a hard
copy of the Complaint on March 8, 2006.
On March 2, 2006, Domainsforme.Ca confirmed by e-mail to the National
Arbitration Forum that the <truereligionjeans.com>
domain name is registered with Domainsforme.Ca and that the Respondent is the
current registrant of the name. Domainsforme.Ca
has verified that Respondent is bound by the Domainsforme.Ca registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution
Policy (the “Policy”).
On March 13, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of April 3, 2006 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent via e-mail, post and fax, to all entities and
persons listed on Respondent’s registration as technical, administrative and
billing contacts, and to postmaster@truereligionjeans.com by e-mail.
A Response was received on April 6, 2006, and was preliminary
determined by the National Arbitration Forum to be deficient because it was
received after the deadline and was not sent in hard copy (see however
preliminary discussion hereinafter).
On April 11, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Jacques A. Léger, Q.C. as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant asserts that the domain name in dispute, <truereligionjeans.com>, is its trademark name, almost verbatim, and
that it is as if someone registered the <fordcars.com> domain name for
Ford or the <mcdonaldsburgers.com> domain name for McDonalds.
It further contends that Respondent is squatting on its trademark by
redirecting the traffic along to affiliate websites and selling the
Complainant’s brand via links on its webpage, that visitors going to the said
website are looking for the Complainant’s brand, and that customers are lost
daily in this manner.
It also argues that the Respondent has no rights or legitimate
interests in the domain name, and that Respondent is not affiliated with the
Complainant in any way.
Finally, Complainant alleges that Respondent is not a distributor nor
an affiliate, and has no relationship with Complainant’s mark, and that the
sole purpose for the domain name is to profit from the Complainant’s mark by
redirecting the incoming traffic to other websites.
B. Respondent
Respondent contends that Complainant owns the TRUE RELIGION BRAND JEANS
mark and not the TRUE RELIGION JEANS mark.
In response to Complainant’s examples of Ford and McDonalds, it also
argues that Ford does not own the <fordcars.com> domain name, and that
Ford cars are sold from this website, and that McDonalds does not own the
<mcdonaldsburgers.com> domain name.
Respondent then alleges that it does not profit from any links or traffic
sent to the <truereligionjeans.com> domain name, that the default DNS
provider for Gerbera Media sites is ns1.sedo.com and ns2.sedo.com, and that new
registrations are forwarded to SEDO Inc. hosting pages that generate automatic
links according to words used in the domain name. The Respondent submits that it does not receive compensation from
SEDO for this service, and is investigating why this is the default DNS server
for its registered sites.
It further asserts that the <truereligionjeans.com> domain
name does not make use of Complainant’s trademarks or logos, nor does it claim
to be or to represent the company.
The Respondent affirms that it develops communities around special
interest, and that domain names are only registered with that intent;
furthermore, established trademark law, according to the Respondent, does not
permit a global monopoly on all uses, in all categories, of a character string,
except for strong marks, and the Respondent does not consider TRUE RELIGION as
a strong mark. It then states that the
Complainant has no right in the <www.truereligion.com> domain name, in
operation since 1998.
Finally, Respondent contends that Complainant never contacted him to
state its displeasure with the <truereligionjeans.com> domain name, and
that if it had done so, Respondent would have removed the content until it had
completed the community portal.
Respondent then affirms that it does not profit from SEDO’s relationship
with its Registrar, and that it does not use the logos or trademarks of
Complainant, nor does it claim to be authorized to sell or distribute
Complainant’s products.
The Respondent concludes by stating that it does not control the
default DNS used for domains registered with its Registrar, and did not
register the disputed domain name in bad faith.
FINDINGS
The Complainant is
the owner of registered trademarks (Reg. No. 2,917,187 issued January 11, 2005 and Reg. No. 2,761,793 issued
September 9, 2003) for the TRUE RELIGION BRAND JEANS mark, and the
domain name in dispute, registered in November 2005, is confusingly similar with said trademarks.
Complainant and Respondent are not affiliated
in any way. Respondent registers domain
names, in addition to the one in dispute, in order to create communities of
interests, and thus is not known by said names, and this is pointing away from
legitimate rights or interests in the domain name in dispute.
The use of the domain name by the Respondent
leads, for reasons stated below, with respect to evidence adduced and all
surrounding circumstances, to an indication of bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the Complainant must prove
cumulatively 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights; and
(2)
the 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.
Preliminary Discussion on the Untimely Response
Using its discretion, the Panel decided nevertheless to consider the
Response, even though it has been considered to be deficient by the National
Arbitration Forum, as it was submitted one day after the deadline set by ICANN
Rule 5(a), thus on April 6, 2006, and not followed up by a hard copy form.
The Panel not only considered said Response, but found it useful in its
determination of the dispute. As set forth in Bd. of Governors of the Univ.
of Alberta v. Katz, D2000-0378 (WIPO June 22, 2000) and Telstra Corp. v.
Chu, D2000-0423 (WIPO June 21, 2000), the Panel does not have to consider a
late Response, and it is up to its sole discretion to consider it; in line with
this, the Panel chose to use its discretion and take into consideration said
Response, notwithstanding its lateness.
Complainant has argued that the domain name in dispute, registered in
November 2005, is its trademark name, “almost verbatim”, and that it has
established exclusive rights in the TRUE RELIGION BRAND JEANS marks by the fact
of registering them with the United States Patent and Trademark Office (“USPTO”)
(Reg. No. 2,917,187 issued January 11, 2005 and Reg. No. 2,761,793 issued
September 9, 2003).
As the decisions Vivendi Universal
Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003), Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) and U.S.
Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9,
2003) state, registration establishes rights in the trademark. The last decision, U.S. Office of Pers.
Mgmt. v. MS Tech. Inc., even goes further by affirming that “an ICANN panel
is not empowered to nor should it disturb that determination”, when the USPTO
has determined a mark registrable and has issued the according registration.
The Panel agrees with these decisions; the
issuance of a registration certificate by the empowered U.S. federal authority
on trademarks matters is a scheme to regulate trade and commerce in relation
trademarks, and unless registration is shown invalid, it gives its owner the
exclusive right to the use of said trademarks in respect of those wares or
services for which it is registered.
On that basis, Complainant has satisfied its burden on the first
element.
The Respondent has argued that the
Complainant owns the trademark for TRUE RELIGION BRAND JEANS and not TRUE RELIGION
JEANS. The Panel finds that the mere
omission of the word “brand” does not affect the distinctive feature of the
trademark in question, and thus does not sufficiently distinguish Respondent’s
domain name from Complainant’s mark. As in a recent decision, Am.
Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005), where the <americaneaglestores.com>
domain name was found to be confusingly similar to the AMERICAN EAGLE OUFITTERS
mark, the Panel considers the domain
name confusingly similar to the mark, but elaborates further, as this last
mentioned decision found the name and mark similar even though each comported a
different word added to the AMERICAN EAGLE mark, and the present case shows
only the omission of a single word, thus reinforcing the confusion.
As for Respondent’s argument regarding Ford
and McDonalds, it is found irrelevant to the matter in dispute.
Consequently, the Panel finds in favor of
Complainant on the first element.
As to the second element, 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.
Complainant alleges that Respondent is “squatting” on its trademark, and has no legitimate interest in the domain name, as Complainant has not authorized or licensed Respondent to register or use a domain name incorporating Complainant’s TRUE RELIGION BRAND JEANS mark or any variation.
A previous decision, Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001), found no rights or legitimate interests in a domain name because the Respondent was not commonly known by the said disputed domain name or using the domain name in connection with a legitimate or fair use.
Respondent mentions in its Response that “Gerbera Media develops communities around special interest. Domains are only registered with this intent.” Thus, from Respondent’s own admission, it is not commonly known by the <truereligionjeans.com> domain name, but registered the domain to develop a “community around a special interest”. This statement also implicitly implies that Gerbera Media registers various domain names, focusing on diverse interests. Following that state of mind, it is impossible for the Panel to find Respondent commonly known by the domain name, and thus finds Respondent having no rights or legitimate interests in the <truereligionjeans.com> domain name, in the sense of ICANN Policy ¶ 4(a)(i).
Furthermore, Complainant contends that Respondent is using the <truereligionjeans.com> domain name to redirect Internet potential customers seeking Complainant’s clothing products to competing websites that also sell Complainant’s products and those of Complainant’s competitors, thus causing a loss of goodwill for the Complainant.
The evidence submitted by Complainant, taken from the website accessed with the domain name in dispute, clearly shows a title being “For true religion jeans try these sponsored results”, followed by a list of various links, the first two bearing the subtitle “True Religion Jeans”. The Panel finds this exhibit to be an illustration of unfair use of the domain name pursuant to Policy ¶ 4(c)(iii), and finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). There are no goods or services offered, but a simple redirection to competitors’ websites, as in Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002), where the panel found no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors.
As to Respondent’s argument on Complainant having no rights in the <truereligion.com> domain name, it is irrelevant to the dispute.
In conclusion, on balance, the Panel finds that Complainant has satisfactorily met its burden on the second element, and finds Respondent has no rights or legitimate interests in the domain name in dispute.
Complainant
maintains that Respondent has registered and is using the <truereligionjeans.com>
domain name in bad faith pursuant to Policy ¶ 4(b)(iv), because it is diverting
Internet users seeking Complainant’s clothing products to a website providing
links to Complainant’s direct competitors and resellers of Complainant’s
products, without being a distributor, affiliate or having a relationship with
the mark.
It is most of the time quite difficult, if not impossible, to actually show
bad faith, at the time of registration and use, with concrete evidence.
While bad faith cannot be presumed, once Complainant has presented some
evidence pointing in that direction, it is then incumbent upon Respondent to
either respond or explain why its conduct should not be assimilated to bad
faith. The Panel’s understanding of the Policy is that although the initial
burden to prove Respondent’s bad faith in the registration and the use of the
disputed domain name relies squarely on the shoulders of Complainant, such
obligation is only to make out a prima facie case, and once it has done
so, it is then incumbent upon Respondent to either justify or explain its
business conduct (if not to demonstrate the contrary). Failure to do so will, in some
circumstances, enable the Panel to draw a negative inference.
Respondent alleges that it has no control
over the default DNS provider for Gerbera Media sites (plural noted here), and
that new registrations are forwarded to SEDO Inc. hosting pages that generate
automatic links, according to the words used in the domain name.
In view of this test, the Panel can not
accept the argument put forward by Respondent, as the domain name registration,
according to evidence, is made in the name of Gerbera Media, the administrative
contact is Gerbera Media, and the technical contact is also Gerbera Media. The
plural noted above underlines the fact that Respondent has several sites
running with the same DNS provider, and thus is deemed aware of the automatic
generation of links according to words used in the domain names. Furthermore,
the technical contact being Gerbera Media, Respondent must be well aware of
said automatic generation of links.
Respondent further alleges that Complainant has never contacted Gerbera Media to state its displeasure with the <truereligionjeans.com> domain name, and had it done so, Gerbera would have immediately removed the content “until it had completed its community portal”. The Panel infers two conclusions from this statement:
1) that Respondent admits using the domain name in dispute, without consent of Complainant
2)
that removing the content until completion of a
community portal implies reinserting it later on
In light of these conclusions, the Panel’s finds that, on balance, Complainant has met its
initial burden in regards to the third element, and that Respondent has failed to
adequately rebut it, as the nature of its usage points out to bad faith use.
If this wasn’t enough, the evidence from the website submitted by Complainant shows on
two different occasions, on the same page, that the domain might be for sale. ICANN, at
Policy ¶ 4(b)(i), considers that certain circumstances present are evidence of registration
and use of a domain name in bad faith, of which
[C]ircumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant or to a competitor of that complainant (…).
Respondent also argues that it does not profit from any links or traffic sent to the <truereligionjeans.com> domain name; the very same evidence from the website shows the following sentence:
“For true religion jeans try these sponsored results”
(Panel’s
emphasis)
The term “sponsor”, by definition, implies “a
person or group that provides funds for an
activity” (The Collins English Dictionary, 1987). This definition renders Respondent’s point moot. Consequently, on the third element, the Panel finds in favor of Complainant.
In essence, Panel finds that based on the
totality of circumstances and evidence submitted, Respondent’s registration and
use of the disputed domain name is indicative of bad faith under Policy ¶ 4(a)(iii).
DECISION
Complainant having established all three elements required under the
ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <truereligionjeans.com>
domain name be TRANSFERRED from Respondent to Complainant.
Jacques A. Léger, Q.C.,
Panelist
Dated: April 28, 2006
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