DG Premium Brands LLC v. Geoffrey Benton
Claim Number: FA1805001789111
Complainant is DG Premium Brands LLC (“Complainant”), represented by Paul Gelb of Drinker Biddle & Reath LLP, California, USA. Respondent is Geoffrey Benton (“Respondent”), Utah, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <7forallmankindjeansstore.com> (the “Domain Name”), registered with Godaddy.Com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 29, 2018; the Forum received payment on May 29, 2018.
On May 30, 2018, Godaddy.Com, Llc confirmed by e-mail to the Forum that the <7forallmankindjeansstore.com> domain name is registered with Godaddy.Com, Llc and that Respondent is the current registrant of the name. Godaddy.Com, Llc has verified that Respondent is bound by the Godaddy.Com, Llc 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 May 31, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 20, 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@7forallmankindjeansstore.com. Also on May 31, 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 June 25, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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’s contentions can be summarised as follows:
Complainant through one of its divisions owns the trade mark 7 FOR ALL MANKIND registered in the USA for clothing with first use recorded as 2000.
The Domain Name registered in 2017 incorporates Complainant’s 7 FOR ALL MANKIND trade mark in its entirety adding only the gTLD .com and the generic term ‘jeans store’ which do not distinguish the Domain Name from Complainant’s mark. In fact ‘jeans store’ exacerbates confusion as it refers to Complainant’s business. The Domain Name is confusingly similar to Complainant’s trade mark.
Respondent is not commonly known by the Domain Name and Complainant has not authorised Complainant to register the Domain Name.
The web site attached to the Domain Name uses Complainant’s logo to sell clothing and Respondent fraudulently holds itself out as Complainant for commercial gain selling counterfeit goods using photos of Complainant without authorisation. The use of Complainant’s logo shows Respondent is aware of Complainant and its business.
Respondent is seeking to deceive Internet users that the clothes on its website are those of Complainant causing confusion for commercial gain and disrupting Complainant’s business.
Respondent failed to answer Complainant’s concerns in correspondence.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant through one of its divisions owns the trade mark 7 FOR ALL MANKIND registered in the USA for clothing with first use recorded as 2000.
The Domain Name registered in 2017 has been used to offer clothing not of Complainant’s manufacture using Complainant’s logo and photos from Complainant’s web site without permission.
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.”).
Identical or Confusingly Similar
The Domain Name consists of Complainant's 7 FOR ALL MANKIND mark (which is registered in USA for clothing with first use recorded as 2000), the generic term ‘jeans store’ which is related to Complainant’s business and the gTLD .com.
Previous panels have found confusing similarity when a respondent merely adds generic terms to a Complainant's mark. See PG&E Corp. v Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that the respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underlying mark held by the complainant).
The Panel agrees that the addition of the generic term ‘jeans store’ to Complainant's 7 FOR ALL MANKIND mark does not distinguish the Domain Name from Complainant's registered trade mark pursuant to the Policy. In fact it may add to confusion as Complainant offers jeans products.
The gTLD .com does not serve to distinguish a Domain Name from a Complainant’s mark. See Red Hat Inc v Haecke FA 726010 (Forum July 24, 2006) (concluding that the <redhat.org> domain name is identical to the complainant's RED HAT mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar to Complainant’s 7 FOR ALL MANKIND registered mark.
As such the Panel holds that Paragraph 4 (a) (i) of the Policy has been satisfied.
Rights or Legitimate Interests
Complainant has not authorised the use of its mark. There is no evidence or reason to suggest Respondent is commonly known by the Domain Name.
The web site attached to the Domain Name uses Complainant's 7 FOR ALL MANKIND mark and has copied material from Complainant’s web site and uses Complainant’s logo so that Respondent’s site appears to be an official site of Complainant. It does not make it clear that there is no commercial connection with Complainant. The Panel finds this use is confusing. As such it cannot amount to the bona fide offering of goods and services. (See Am. Intl Group Inc v Benjamin FA 944242 (Forum May 11, 2007) (finding that the respondent's use of a confusingly similar domain name to compete with the complainant's business did not constitute a bona fide use of goods and services.)
As such the Panelist finds that Respondent does not have rights or a legitimate interest in the Domain Name and that Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
In the opinion of the panelist the use made of the Domain Name in relation to Respondent’s site is confusing and disruptive in that visitors to the site might reasonably believe it is connected to or approved by Complainant as it uses material from Complainant’s web site and Complainant’s logo without permission to sell product not of Complainant’s manufacture. The use of Complainant’s logo on Respondent's web site and the fact that material has been copied from Complainant’s web site shows that Respondent is aware of Complainant and its business.
Accordingly, the Panel holds that Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web site likely to disrupt the business of Complainant. See Asbury Auto Group Inc v Tex. Int'l Prop Assocs FA 958542 (Forum May 29, 2007) (finding that the respondent's use of the disputed domain name to compete with the complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of that competition and was therefore evidence of bad faith and use).
As such, the Panelist believes that Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under para 4(b)(iv) and 4(b)(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 <7forallmankindjeansstore.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: June 26, 2018
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