Atelier Luxury Group, LLC v. ahmad Akram, sports ghar
Claim Number: FA2206002000902
Complainant is Atelier Luxury Group, LLC (“Complainant”), represented by Hannah Cannom of Walker Stevens Cannom LLP, California, USA. Respondent is ahmad Akram, sports ghar (“Respondent”), Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <amiriclothing.net>, registered with 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 Panelist in this proceeding.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 17, 2022; the Forum received payment on June 17, 2022.
On June 17, 2022, NameCheap, Inc. confirmed by e-mail to the Forum that the <amiriclothing.net> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 June 20, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 11, 2022 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@amiriclothing.net. Also on June 20, 2022, 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 July 12, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant submits that it sells tens of millions of dollars of merchandise featuring the AMIRI mark every year in the United States in its retail stores, and at select luxury department stores and high-end fashion boutiques across the world. Signature pieces featuring the AMIRI mark, including the famous AMIRI MX1 denim jeans, retail for $1,150 or more.
Complainant alleges that the disputed domain name is confusingly similar to the AMIRI mark in which it has rights, because it is an is an exact use of the mark with the inclusion of the word “clothing.”
Complainant next alleges that Respondent has no rights or legitimate interests in the disputed domain name because Respondent registered the disputed domain name on May 7, 2022, long after Complainant registered and began using the AMIRI mark.
Complainant states that AMIRI is the last name of Complainant’s founder and creative director and so the term has no meaning other than to identify Complainant as a source of certain products and services.
Complainant asserts that Respondent is not a licensee of Complainant nor is Respondent otherwise authorized to use Complainant’s AMIRI mark for any purpose.
Upon information and belief, Respondent is not commonly known as “amiriclothing” and thus, Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).
Referring to a screen capture of the website to which the disputed domain name resolves which is exhibited in an annex to the Complaint, Complainant submits that it shows that the disputed domain name currently resolves to a page purporting to be a legitimate store selling products under the AMIRI mark, that provides links to purchasable clothing. Complainant argues that it is Respondent’s intent to trade off the reputation of Complainant’s mark and to confuse consumers into believing that they are purchasing products under the AMIRI brand. Complainant submits that such conduct serves the purpose of generating revenues, e.g., from purchases made on the site.
For these reasons, Complainant submits it is very probable that an Internet user would be misled into thinking that the web page is related to, or even operated by Complainant. Complainant states that panels established under the Policy have consistently held that such use is not 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). See, Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (finding that the respondent’s commercial use of a confusingly similar domain name suggests that the respondent lacks rights or a legitimate interest in the disputed domain name).
Complainant next alleges that the disputed domain name was registered and is being used in bad faith, arguing that upon information and belief, Respondent registered and is using the disputed domain name primarily to profit from and exploit Complainant’s AMIRI mark.
Complainant argues that the AMIRI designation is unique and arbitrary such that it is unlikely that Respondent devised the term <amiriclothing.net> on its own and this factor alone weighs in favor of finding bad faith against Respondent. See Neuberger Berman, Inc., v. Jacobsen, No. D2000-0323 (WIPO June 12, 2000) (weighing the uniqueness of the trademark, and the likelihood of Respondent coming up with the domain name independently, in finding bad faith).
Complainant submits that upon information and belief, Respondent is using the disputed domain name to misdirect internet users to its own websites to sell counterfeit product which constitutes bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Forum Nov. 21, 2002) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract internet users to its commercial website).
Complainant adds that upon information and belief, Respondent is using the disputed domain name in connection with a revenue-generating scheme pursuant to which Respondent sells counterfeit products to consumers who believe that they are purchasing discounted genuine product.
Furthermore Complainant contends that upon information and belief, Respondent knowingly registered the disputed domain name to sell counterfeit products that bear the AMIRI mark and to capitalize on consumer recognition of the AMIRI mark and its association with the categories of goods/services.
Referring to screen captures of garments which are exhibited in the Complaint, comparing Complainant’s genuine products and similar products offered for sale on the website to which the disputed domain name resolves, Complainant submits that the clothing offered by Respondent is counterfeit and stylized to look like the genuine products marketed by Complainant on the AMIRI brand which constituted bad faith use under the Policy.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a manufacturer and supplier of ready to wear clothing which it markets under the AMIRI mark for which it owns a portfolio of United States of America trademark and service mark registrations. Complainant has produced copies of a number of trademark registration certificates the earliest of which is United States registered trademark AMIRI, registration number 5,017,318, registered on the Principal Register on August 9, 2016, for goods in international class 25.
The disputed domain name <amiriclothing.net> was registered on May 7, 2022 and resolves to a website that offers garments bearing Complainant’s brand for sale. Complainant alleges that the garments are counterfeit.
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the request by the Forum for verification of the registration details of the disputed domain name.
The Registrar has confirmed that Respondent is the registrant of the disputed domain name.
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 provided uncontested evidence to prove that on the balance of probabilities it has rights in the AMIRI mark, established by its ownership of its portfolio of trademark mark registrations described above and extensive use of the AMIRI mark in its ready to wear clothing business.
The disputed domain name <amiriclothing.net> consists of Complainant’s mark in its entirety, in combination with the descriptive element “clothing” and the generic Top Level Domain (“gTLD”) extension <.com>.
Complainant’s AMIRI mark is the dominant and only distinctive element in the disputed domain name. The added element “clothing”, being descriptive, does not preclude a finding that the disputed domain name is confusingly similar to the AMIRI mark.
The gTLD extension <.net> would be considered by Internet users as a necessary technical requirement for a domain name and therefore does not prevent a finding of confusing similarity between the disputed domain name and Complainant’s mark.
This Panel finds therefore that the disputed domain name <amiriclothing.net> is confusingly similar to the AMIRI mark in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights legitimate interests in the disputed domain name arguing that
· Respondent registered the disputed domain name on May 7, 2022, long after Complainant registered and began using the AMIRI mark;
· AMIRI is the last name of Complainant’s founder and creative director and so the term has no meaning outside its use as a means to identify Complainant as a source of certain products and services;
· Respondent is not a licensee of Complainant nor is Respondent otherwise authorized to use Complainant’s AMIRI mark for any purpose;
· upon information and belief, Respondent is not commonly known as “amiriclothing”
· the screen capture of the website to which the disputed domain name resolves which is annexed to the Complaint shows that the disputed domain name currently resolves to a page purporting to be a legitimate store selling products under the AMIRI mark but is in fact the products that Respondent purports to offer for sale are counterfeit goods;
· it is very probable that an internet user would be misled into thinking that the web site to which the disputed domain resolved is related to or even operated by Complainant.
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.
Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Complainant states that AMIRI is the family name of Complainant’s founder and so it follows that it is not in itself unique. However because the disputed domain name is constructed as a combination of the AMIRI mark and the word “clothing”, given that Complainant has an established reputation and goodwill in its ready-to-wear clothing business, on the balance of probabilities the disputed domain name <amiriclothing.net> was chosen and registered to create the impression of an association with Complainant’s AMIRI mark.
This Panel finds therefore that on the balance of probabilities this combination of elements in the disputed domain name was chosen and registered to target and take predatory advantage of Complainant’s reputation and goodwill in the AMIRI mark.
The uncontested evidence is that the disputed domain name resolves to a website that is offering for sale garments bearing the AMIRI mark.
Complainant alleges that these garments are counterfeit. In the absence of any denial by Respondent, and given that Respondent has no rights in the disputed domain name or any relationship with Complainant, this Panel accepts Complainant’s submission that they are not its genuine goods and that Respondent is not only using the disputed domain name to attract and divert Internet traffic to Respondent’s website, but upon arrival at the website to which the disputed domain name resolves, the Internet visitor is further misled by being offered counterfeit goods as genuine products.
Such intentional use of the disputed domain name in an attempt to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site and the goods purported to be offered by Respondent on his web site constitutes use of the disputed domain name in bad faith for the purposes of the Policy.
As this Panel has found that the disputed domain names were registered and are being used in bad faith, Complainant has succeeded in the third element of the test in 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 <amiriclothing.net> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: July 14, 2022
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