DG Premium Brands LLC v. Adebiyi Baiyewu
Claim Number: FA1807001797252
Complainant is DG Premium Brands LLC (“Complainant”), represented by Paul Gelb of Drinker Biddle & Reath LLP, California, USA. Respondent is Adebiyi Baiyewu (“Respondent”), Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <7forallmankindshopoutlet.com>, 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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 18, 2018; the Forum received payment on July 18, 2018.
On July 18, 2018, Godaddy.Com, Llc confirmed by e-mail to the Forum that the <7forallmankindshopoutlet.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 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@7forallmankindshopoutlet.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 8, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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
1. Respondent’s <7forallmankindshopoutlet.com> domain name is confusingly similar to Complainant’s 7 FOR ALL MANKIND mark.
2. Respondent does not have any rights or legitimate interests in the <7forallmankindshopoutlet.com> domain name.
3. Respondent registered and uses the <7forallmankindshopoutlet.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, DG Premium Brands LLC, uses the 7 FOR ALL MANKIND mark to sell and distribute clothing. Complainant holds a registration for the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,890,644, registered Oct. 5, 2004).
Respondent registered the <7forallmankindshopoutlet.com> domain name on December 27, 2017, and uses it to pass off as Complainant and sell counterfeit versions of Complainant’s products.
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 Panel finds that Complainant has rights in the 7 FOR ALL MANKIND mark under Policy ¶ 4(a)(i) based upon its registration of the mark with the USPTO. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). Complainant provides a copy of its registration of the 7 FOR ALL MANKIND mark with the USPTO (e.g., Reg. No. 2,890,644, registered Oct. 5, 2004).
Respondent’s <7forallmankindshopoutlet.com> domain name incorporates Complainant’s mark and merely adds the generic terms “shop” and “outlet” along with the “.com” gTLD. The addition of a generic term and a gTLD to a mark is not sufficient to distinguish a domain name from a mark under Policy ¶ 4(a)(i). See 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).). Accordingly, the Panel finds that Respondent’s <7forallmankindshopoutlet.com> domain name is confusingly similar to Complainant’s 7 FOR ALL MANKIND mark.
The Panel finds that complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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”).
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name, and is not commonly known by the domain name. Complainant has not licensed or otherwise authorized Respondent to use its 7 FOR ALL MANKIND mark. The WHOIS information of record for the <7forallmankindshopoutlet.com> domain name lists “Adebiyi Baiyewu” as the registrant. Therefore, the Panel finds that Respondent is not commonly known by the <7forallmankindshopoutlet.com> domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name); see also State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)).
Complainant asserts that Respondent uses the <7forallmankindshopoutlet.com> domain name to pass off as Complainant and sell counterfeit versions of Complainant’s products. Use of a domain name to pass off as a complainant and sell counterfeit goods is not a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See 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.”). Complainant provides screenshots of the <7forallmankindshopoutlet.com> website, which indicate that the site features Complainant’s mark, a picture of Complainant’s retail store, and purports to offer Complainant’s clothing products for sale. The Panel therefore finds that the 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 under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds that complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <7forallmankindshopoutlet.com> domain name in bad faith to disrupt Complainant’s business by selling counterfeit goods. Use of a domain name to disrupt a complainant’s business by selling counterfeit goods and services is evidence of bad faith under Policy ¶ 4(b)(iii). See Ontel Products Corporation v. waweru njoroge, FA1762229 (Forum December 22, 2017) (“Respondent’s primary offering seem to be counterfeits of Complainant’s toy car products. Respondent’s use of the <magictrackscars.com> domain name is thus disruptive to Complainant’s business per Policy ¶ 4(b)(iii)”). Complainant provides screenshots of the webpages associated with the disputed domain name that show Respondent promoting the sale of counterfeit goods. Respondent even anticipates customer complainants regarding the legitimacy of the products in an FAQ section on its webpage that blames the differences between the goods and product photos on the camera angle and photo quality. The Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iii).
The Panel finds that Respondent uses the disputed domain name to pass off as Complainant and sell counterfeit products for commercial gain, which is also bad faith under Policy ¶ 4 (b)(iv). See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website).
Complainant alleges that Respondent had actual knowledge of Complainant’s rights in the mark prior to registration of the <7forallmankindshopoutlet.com> domain name. The Panel agrees, based on Respondent’s attempt to pass off as Complainant, and finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to registration and thus registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”).
The Panel finds that complainant has satisfied Policy ¶ 4(a)(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 <7forallmankindshopoutlet.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: August 9, 2018
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