Gilt Groupe, LP v. RegC / Amanda Powell / Gilt Society Ltd
Claim Number: FA1912001874638
Complainant is Gilt Groupe LP (“Complainant”), represented by Theodore R. Remaklus of Wood, Herron & Evans, LLP, Ohio, United States. Respondent is RegC / Amanda Powell / Gilt Society Ltd (“Respondent”), Washington, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <giltoutlet.com> (“Domain Name”), registered with 1&1 IONOS SE.
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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 11, 2019; the Forum received payment on December 11, 2019.
On December 12, 2019, 1&1 IONOS SE confirmed by e-mail to the Forum that the <giltoutlet.com> domain name is registered with 1&1 IONOS SE and that Respondent is the current registrant of the name. 1&1 IONOS SE has verified that Respondent is bound by the 1&1 IONOS SE 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 December 17, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 10, 2020 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@giltoutlet.com. Also on December 17, 2019, 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 formal response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On January 15, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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, Gilt, is an online retailer selling designer brands of apparel and other beauty products. Complainant has rights in the GILT mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,073,370 registered on Dec. 20, 2011). Respondent’s <giltoutlet.com> domain name is identical or confusingly similar to Complainant’s mark as it includes the GILT mark in its entirety, adding the generic term “outlet” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <giltoutlet.com> domain name. Respondent is not commonly known by the Domain Name and Respondent is not a licensee or authorized to use the Complainant’s mark. Additionally, Respondent fails to use the Domain Name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s Domain Name resolves to a webpage intending to confuse consumers of Complainant’s affiliation with Shopify, a site for Internet users to create their own online store.
Respondent registered and uses the <giltoutlet.com> domain name in bad faith. Specifically, Respondent’s Domain Name confuses Internet users into the belief Respondent is affiliated with Complainant. Further, Respondent had actual knowledge of Complainant’s rights in the GILT mark prior to its registration of the Domain Name.
B. Respondent
Respondent submitted a request on 7 January 2020 seeking an extension of time to prepare their Response. As it has now been over 1 week since the deadline to provide a Response and no late-filed Response has been received, the Panel shall decide the case on the basis that Respondent has failed to submit a formal Response in this proceeding.
Complainant holds trademark rights for the GILT mark. The Domain Name is confusingly similar to Complainant’s GILT mark. Complainant has established that Respondent lacks rights or legitimate interests in the Domain Name and that Respondent registered and has used the Domain Name in bad faith.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has rights in the GILT mark through its registration with the USPTO (e.g Reg. No. 4,073,370 registered on Dec. 20, 2011). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
The Panel finds that the <giltoutlet.com> domain name is confusing similar to Complainant’s GILT mark as it fully incorporates the GILT mark and adds the descriptive term “outlet” and the “.com” gTLD. These changes are insufficient to distinguish the Domain Name from the GILT 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)); see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because the domain name syntax requires TLDs.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the GILT mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See 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)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “RegC / Amanda Powell / Gilt Society Ltd” as registrant of record. In the absence of any evidence that the Gilt Society Ltd is an actual organization, and coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).
The Domain Name resolves to a page (“Respondent’s Website”) maintained by the e-commerce site Shopify that appears to indicate that the Respondent is in the process of setting up some form of online store. Given that the Complainant is a retail enterprise which under the GILT mark sells a wide variety of goods and services from its website at <www.gilt.com>, it is unlikely that any use of the Domain Name to operate an online store of any sort would be a bona fide offering of goods and services. In any event Respondent provides no details of the purported store or any suggestion to suggest that the Domain Name would be used for anything other than an online store in competition with Complainant. The use of a domain name confusingly similar to Complainant’s mark to redirect to a competing website does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use of the name under Policy ¶¶ 4(c)(i) or (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds on the balance of probabilities that, at the time Respondent registered the Domain Name, February 3, 2019, Respondent had actual knowledge of Complainant’s GILT mark. Complainant has traded under the GILT mark for 25 years and from <www.gilt.com> for 12 years. It is implausible that a party could register a domain name consisting of the GILT Mark and the word “outlet” with the intent to set up a retail store absent an awareness of the Complainant and GILT Mark. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
In the absence of evidence from the Respondent and given the clear intent of Respondent (as evidenced by the Respondent’s Website) to operate an online shopping portal from the Domain Name the Panel finds that Respondent registered and uses the Domain Name in bad faith as Respondent has been preparing the Domain Name to redirect Internet users to a retail website operated by Respondent with the intention of competing with Complainant. Using a disputed domain name to divert Internet users to a respondent’s competing website can show bad faith registration and use per Policy ¶ 4(b)(iii). See ZIH Corp. v. ou yang lin q, FA1761403 (Forum Dec. 29, 2017) (finding bad faith where the respondent used the infringing domain name to disrupt the complainant’s business by diverting Internet users from the complainant’s website to the respondent’s website where it offered competing printer products). Accordingly, the Panel finds that Respondent registered and uses the Domain Name in bad faith pursuant to Policy ¶ 4(b)(iii).
The Panel finds 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 <giltoutlet.com> domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: January 17, 2020
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