Pacific Sunwear of California, LLC v. WhoisGuard, Inc. et al.
Claim Number: FA2007001903467
Complainant: Pacific Sunwear of California, LLC of Anaheim, California, United States of America.
Complainant Representative: Sheridan Ross P.C. of Denver, Colorado, United States of America.
Respondent: WhoisGuard Protected / WhoisGuard, Inc. of Panama Panama, PA.
Respondent Representative: None.
REGISTRIES and REGISTRARS
Registries: DotStore Inc.
Registrars: NameCheap, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Examiner in this proceeding.
James Bridgeman, as Examiner.
Complainant submitted: July 8, 2020
Commencement: July 10, 2020
Default Date: July 27, 2020
Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules") .
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended. This means that the Complainant must present adequate evidence to substantiate its trademark rights in the domain name (e.g., evidence of a trademark registration and evidence that the domain name was registered and is being used in bad faith in violation of the URS).
Findings of Fact
Complainant is the owner of United States registered trademark and service mark PACSUN, registration number 4,119, 420, registered on the Principal Register on March 27 2012 for the following goods and services.
"Eyewear; Sunglasses" in Class 9, "Clothing, namely, shirts, t-shirts, woven shirts, flannel shirts, knit tops, tank tops, dresses, skirts, sweatshirts, sweat pants, pants, jeans, leggings, shorts, jackets, sweaters, pajamas, under garments, swim suits, swim wear, scarves, shawls, belts, gloves, mittens, socks; footwear, namely, casual footwear, athletic footwear, shoes, sandals, slippers, boots, beach footwear; headgear, namely, hats, caps, visors, beanies and head bands" in Class 25, and "Retail store and online retail store services in the fields of clothing, headwear, footwear, bags, cosmetics, eyewear, watches, jewelry, skateboards and consumer electronics" in Class 35.
The disputed domain name has been used to offer goods and services competitive to those offered by Complainant and lists the mailing address and telephone number of Complainant’s PacSun retail store location in Palm Desert, California to create the false impression that Respondent's website is affiliated with Complainant.
Discussion
Complainant has adduced clear and convincing evidence of its ownership of the PACSUN trademark in the form of a copy of the registration certificate of the above-described United States trademark registration which names Complainant as the owner. The generic Top Level Domain extension <.store> may be ignored for the purpose of comparison. The disputed domain name is identical to Complainant’s mark. Therefore, this Examiner finds that the disputed domain name is identical to the PACSUN mark in which Respondent has rights.
Complainant has made out an uncontested prima facie case that Respondent has no rights or legitimate interest in the disputed domain name alleging that Complainant has not consented to, licensed or otherwise authorized Respondent’s use of the PACSUN mark in the Domain or otherwise. Additionally, the WHOIS record for <pacsun.store> shows that the Respondent registered the disputed domain name under the name “WhoisGuard, Inc.”, which demonstrates that Respondent is not commonly known by the name “PACSUN” or <pacsun.store>.
Respondent’s use of the disputed domain name incorporating the entirety of Complainant’s PACSUN mark to (i) offer goods and services competitive to those offered by Complainant, namely, clothing and on-line retail store services featuring clothing, and (ii) attempt to pass itself off as Complainant or create a false affiliation with Complainant by listing on its website the telephone number and mailing address of Complainant’s PACSUN retail store location in Palm Desert, California is not a bona fide offering of goods or services and it is not a legitimate noncommercial or fair use. In such circumstances Respondent bears the burden of proof of establishing rights or legitimate interests in the disputed domain name and has failed to do so. This Examiner finds therefore that Complainant has made out by clear and convincing evidence that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has adduced clear and convincing uncontested evidence in the form of a screenshot of the website to which the disputed domain name resolves, that the disputed domain name has been used to offer goods and services competitive to those offered by Complainant and lists the mailing address and telephone number of Complainant’s PacSun retail store location in Palm Desert, California to create the false impression that Respondent's website is affiliated with Complainant.
It is clear that Respondent is using the disputed domain name to create a commercial advantage by deliberately using Complainant’s marks to trade off the goodwill and fame of Complainant’s PACSUN marks.
It follows that as a result, Complainant's business is disrupted, and its business and brand are diminished. As such, it can be presumed that Respondent intentionally registered the disputed domain name to engage and redirect internet traffic for commercial gain.
This Examiner determines therefore that Respondent has intentionally attempted to attract for commercial gain, internet users to Respondent’s website by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of Respondent’s website by using Complainant’s PACSUN mark thereby disrupting and diminishing Complainant’s business.
On the evidence adduced this Examiner determines that the disputed was registered and is being used in bad faith.
After reviewing the Complainant’s submissions, the Examiner determines that
the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain names be SUSPENDED for the duration of the registration.
<pacsun.store>.
James Bridgeman SC
Examiner
Dated: July 27, 2020
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