Effectus Clothing LLC v. Sam Abed
Claim Number: FA1804001781155
Complainant is Effectus Clothing LLC (“Complainant”), represented by Eric Misterovich of Revision Legal, Michigan, USA. Respondent is Sam Abed (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <effectusclothing.com>, registered with Internet Domain Service BS Corp.
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.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the Forum electronically on April 11, 2018; the Forum received payment on April 11, 2018.
On April 12, 2018, Internet Domain Service BS Corp confirmed by e-mail to the Forum that the <effectusclothing.com> domain name is registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the name. Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service BS Corp 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 April 12, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of May 2, 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@effectusclothing.com. Also on April 12, 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 May 8, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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 is in the business of wholesale and retail sales of clothing such as graphic t-shirts, hats, sweatshirts, and hooded sweatshirts. Complainant’s goods are sold through brick and mortar outlets such as DTLR, City Gear, Hibbet Sports and through online sales including its eBay store. Complainant has rights in the EFFECTUS mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 5,281,336, registered Sep. 5, 2017). Complainant also has common law rights in the EFFECTUS CLOTHING mark dating back to 2013, based upon its extensive advertising, continuous use, and national media recognition, with annual revenues exceeding $1,100,000.00. Respondent’s <effectusclothing.com> domain name (the “Domain Name”) is identical to Complainant’s EFFECTUS CLOTHING mark, and is confusingly similar to Complainant’s EFFECTUS mark as it contains the EFFECTUS mark in its entirety and adds the generic word “clothing.”
Respondent has no rights or legitimate interests in the Domain Name. He is not licensed by Complainant to use the Domain Name, and he is not commonly known by the Domain Name. Also, Respondent does not use the Domain Name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use because he does not make any active use of the Domain Name’s resolving webpage. Further, Complainant previously owned the Domain Name until Respondent fraudulently hijacked it from Complainant.
Respondent registered and uses the Domain Name in bad faith. He does not make any active use of the resolving webpage. Further, before Respondent hijacked the Domain Name from Complainant, Complainant was earning up to $80,000.00 annually in online sales. Respondent’s capture of the Domain Name interferes with and disrupts Complainant’s business by denying Complainant the opportunity to earn revenues from online sales through the Domain Name. Finally, Respondent registered the domain name using false contact information and this is evidence of bad faith registration and use.
B. Respondent
Respondent did not submit a Response in this proceeding.
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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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 Panel makes the findings and determinations set forth below with respect to the Domain Names.
Complainant registered its EFFECTUS mark with the USPTO (Registration No. 5,281,336) on September 5, 2017. See, Compl. Annex F. This registration is sufficient to demonstrate its rights in that mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”).
Complainant also established its common law rights in the EFFECTUS CLOTHING mark. Policy ¶ 4(a)(i) does not require a complainant to hold a registered trademark if it can demonstrate common law rights in the mark. Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning. Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”). Complainant has used the EFFECTUS CLOTHING mark since 2013 in its extensive advertising, its continuous use, and national media recognition, earning annual revenues in excess of $1,100,000.00. See, Complaint Annexes C and G. This evidence is sufficient to support a finding of secondary meaning in the EFFECTUS CLOTHING mark. Complainant holds common law rights in that mark for the purposes of Policy ¶ 4(a)(i).
Respondent’s <effectusclothing.com> Domain Name is identical to Complainant’s EFFECTUS CLOTHING mark, and is confusingly similar to Complainant’s EFFECTUS mark as it contains the EFFECTUS mark in its entirety, only adding the generic word “clothing.” The Domain Name also adds the generic top-level domain (“gTLD”) “.com.” These changes are not sufficient to distinguish the Domain Name from Complainant’s marks for the purposes of Policy ¶4(a)(i). Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that 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, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.)
Based upon the forgoing, the Panel finds that the Domain Names are confusingly similar to the EFFECTUS and EFFECTUS CLOTHING marks, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent or commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names because (i) Complainant has not licensed or authorized Respondent to use its mark for any purpose whatever, (ii) Respondent is not commonly known by the Domain Name, and (iii) Respondent is not using the Domain Name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or other fair use because it resolves to an error page and is thus not being actively used. These allegations are supported by competent evidence. According to the WHOIS information submitted as Complaint Annex J, the Domain Name is registered to “Sam Abed,” which name bears no resemblance to the Domain Name. This is competent evidence that Respondent is not commonly known by the Domain Name. Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). Further, Complainant states that it has never authorized the Respondent to use either its EFFECTUS or EFFECTUS CLOTHING mark. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel.
Additionally, the Domain Name resolves to an error page. See, Complaint Annex N. Failure to make active use of a confusingly similar domain name is evidence of lack of a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii). Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii)”). Respondent is not currently using the Domain Name to make a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii).
Additionally, Complainant owned the Domain Name, having registered it on December 7, 2012 and having used it to generate substantial annual revenues from online sales of its goods. See, Complaint Annexes C and H. On or about August 8, 2016, however, Complainant was the victim of an unauthorized hack by Respondent into its iCloud account, and Respondent was able to acquire the Domain Name at that time. See, Complaint Annexes C and J. Complainant never authorized Respondent to list himself as registrant of the Domain Name, or to exercise control over it in any way. See, Complaint Annex C. A respondent who obtains a domain name previously held by a complainant can be found to lack rights and legitimate interests in that domain name. Raise Labs, Inc. v. Hong young jin, FA 1685247 (Forum Sept. 1, 2016) (“[The disputed domain name was] registered by Complainant on or about September 20, 2013. The registration was inadvertently allowed to lapse and was registered by Respondent at a subsequent date… 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.”). In this case, Respondent acquired control over the Domain Name by unauthorized means, by fraudulently converting it to his own use. A Respondent cannot acquire rights or legitimate interests in a Domain Name by hijacking or in effect stealing it from its rightful owner.
Complainant has made its prima facie case. On the evidence presented, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
(i) circumstances 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 which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of your web site or location or of a product of service on your web site or location.
The evidence discussed above in connection with the rights or legitimate interests analysis to the effect that the Domain Name resolves to an error page and is not being actively used is also evidence of bad faith registration and use. As noted several years ago, given the human capacity for mischief in all its forms, the Policy sensibly takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldwcom Exchange, Inc. v. Wei.com, Inc. D-2004-0955. The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and using a domain name for an inactive web site has often been held to be evidence of bad faith under the Policy. Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith), VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”), Wells Fargo & Co. v. WhoisGuard c/o WhoisGuard Protected, FA 1103650 (Forum Dec. 13, 2007) (“The failure to make an active use of the disputed domain name also evidences bad faith registration and use under Policy ¶ 4(a)(iii)”).
Respondent is also seriously disrupting and interfering with Complainant’s business. Before Respondent hijacked the Domain Name, Complainant was using it to market its goods online, and those sales earned in excess of $80,000.00 annually. See, Complaint Annex C. Respondent’s acquisition of the Domain Name has denied Complainant that business opportunity, and has also prevented it from using the Domain Name for its email correspondence. See, Complaint Annex C. This constitutes a material and substantial interference with Complainant’s business, and the Panel finds that this is evidence of bad faith use and registration. See PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)).
Respondent has also furnished false contact information for himself to his registrars. When he first registered the Domain Name he listed his address as 201 North Broadway, in Miami, Florida 33801. See, Complaint Annex J. According to the Google Maps web site there is no 201 North Broadway in Miami, Florida, and the zip code 33801 is for Lakeland Florida, not Miami. See, Complaint Annexes P and Q. Later, Respondent listed his address as 201 North Broadway, in Escondido, California. In fact, however, that address is for the City of Escondido City Hall. See, Complaint Annex R. Furnishing false contact information to a registrar is evidence of bad faint registration. Visit America, Inc. v. visit America, FA 95093 (Forum Aug. 14, 2000), citing Video direct distributors, Inc. v. Video direct, Inc., FA 94724 (Forum June 5, 2000) (finding that respondent acted in bad faith by providing incorrect information to the registrar regarding the owner of the registered name).
Finally, the evidence discussed above with respect to the manner in which Respondent acquired the Domain Name is also evidence of bad faith registration and use. Respondent gained possession of the Domain Name by improper, likely fraudulent means, without authorization from or notice to Complainant, and this in itself demonstrates bad faith registration and use. Worldcom Elxchange, Inc. v. Wei.com Inc, D-2004-0955 (WIPO January 5, 2005) (finding domain hijacking to be within the scope of the Policy and evidence of bad faith).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
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 <effectusclothing.com> Domain Name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
May 10, 2018
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