HBI Branded Apparel Enterprises, LLC and Hanesbrands, Inc. v. Client Care / Web Commerce Communications Limited
Claim Number: FA2209002011742
Complainant is HBI Branded Apparel Enterprises, LLC and Hanesbrands, Inc. (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California. Respondent is Client Care / Web Commerce Communications Limited (“Respondent”), DE.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names listed in the Complaint are <champion-argentina.com>, <champion-chile.com>, <champion-colombia.com>, and <championenchile.com>, registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED; Key-Systems GmbH.
For the reasons given below, the Panel finds that the only relevant domain names for this case are <champion-argentina.com>, <champion-colombia.com>, and <championenchile.com>.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Richard Hill as Panelist.
Complainant submitted a Complaint to Forum electronically on September 13, 2022; Forum received payment on September 13, 2022.
On September 14, 2022, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED; Key-Systems GmbH confirmed by e-mail to Forum that the <champion-argentina.com>, ,<champion-chile.com>, ,<champion-colombia.com>, ,<championenchile.com> domain names are registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED; Key-Systems GmbH and that Respondent is the current registrant of the names. ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED; Key-Systems GmbH has verified that Respondent is bound by the ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED; Key-Systems GmbH 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 September 20, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 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@champion-argentina.com, postmaster@champion-chile.com, postmaster@champion-colombia.com, postmaster@championenchile.com. Also on September 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, Forum transmitted to the parties a Notification of Respondent Default.
On October 20, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Richard Hill as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. In support of this allegation it states:
a) The registrants of 3 of the 4 disputed domain names (<champion-argentina.com>, <champion-colombia.com>, and <championenchile.com>) share the same address, email address, and telephone number.
b) Although the <champion-chile.com> shows as having a different registrant than the other three domain names, it was registered on the same day as the <champion-colombia.com> and <champion-argentina.com> domain names, and also shares the same IP address as <championenchile.com>.
c) The registrants of 3 of the 4 disputed domain names share the same name.
d) All the domains resolve to the same type of content.
e) Upon information and belief, the <champion-chile.com> domain was previously used to redirect to the <championenchile.com> domain.
f) The disputed domain names use the same service provider.
g) Three of the 4 disputed domain names currently use the same registrar.
h) At the time Complainant filed its original Complaint, the other disputed domain name (<champion-chile.com>) used the same registrar as the other 3 domain names.
i) The disputed domain names use the entirety of the CHAMPION mark with only the addition of descriptive, generic or geographic terms, punctuation, and a gTLD.
Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
The Panel finds that allegations (a), (b), (c), (f), (g), (h), and (i) above do not necessarily indicate that the <champion-chile.com> domain name is controlled by the same entity as the other three disputed domain names. Allegation (d) is not supported by evidence, since Complainant provides no evidence regarding use of the <champion-chile.com> domain name. Complainant provides no evidence to support allegation (e).
While the Panel finds that Complainant has provided sufficient evidence to show that three of the four disputed domain names are under common control, it finds that Complainant has not presented sufficient evidence to find that the <champion-chile.com> domain name is controlled by the same entity as the other three disputed domain names.
Under the Forum’s Supplemental Rule 4(c), the Panel must determine which domain names are commonly owned and elect which Respondent to proceed against, as a UDRP decision can proceed against only one Respondent. The Panel is then required to dismiss the Complaint in relation to the domain names not commonly owned by the chosen Respondent.
Accordingly, the Panel will rule on the <champion-argentina.com>, <champion-colombia.com>, and <championenchile.com> domain names, and it will dismiss, without prejudice, the complaint regarding the <champion-chile.com> domain name. See Brian Renner v. Contactprivacy.com, FA1007001335211 (Forum Aug. 26, 2010); see also Amazon Technologies, Inc. v. M M / shanwang chen / feifei lin / HUA ZHANG / L H / Eddie Nash / Heather Brooker, FA2111001973471 (Forum Dec 17, 2021).
Preliminary Issue: Multiple Complainants
Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
There are two Complainants in this matter: HBI Branded Apparel Enterprises, LLC and Hanesbrands, Inc.. Complainants argue that HBI Branded Apparel Enterprises, LLC is a subsidiary of Hanesbrands, Inc. The trademark registrations for the CHAMPION Marks are held by subsidiary HBI Branded Apparel Enterprises, LLC, and the portfolio of CHAMPION domain names is managed by Hanesbrands, Inc..
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark.
The Panel finds that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, and thus it will treat them as a single entity in this proceeding.
A. Complainant
Complainant states that it is a well-known manufacturer and marketer of leading everyday basic apparel brands in the Americas, Australasia, Europe and Asia. Complainant has a long history of innovation and brand recognition. Complainant is the world’s largest marketer of basic apparel such as T-shirts, socks, sweatshirts, fleece and other active wear under some of the world’s most well-known apparel brands, such as Hanes, Champion, DKNY, Maidenform, Playtex, and Wonderbra. Under the CHAMPION brand, Complainant has offered such apparel since 1919. In January 2019, Complainant celebrated its 100th anniversary by honoring a century of “teamwork” with the launch of its centennial anniversary campaign – “100 Years for the Team”. Unlike most apparel companies, Complainant primarily operates its own manufacturing facilities. Its products are marketed to consumers through mass merchants, mid-tier retailers and department stores, specialty stores, and e-commerce sites. Complainant also operates its own consumer-facing outlet stores, retail stores, and e-commerce sites. For the year ending January 1, 2022, Complainant generated revenues of $6.8 billion and operating profit of $798 million. Total worldwide employment as of January 1, 2022 was approximately 59,000 employees. Complainant asserts rights in the CHAMPION mark based upon its registration in the United States in 1985. The mark is regsitered elsewhere around the world and it is well known.
Complainant alleges that the disputed domain names are identical or confusingly similar to its CHAMPION mark as they incorporate the mark in its entirety and merely add a hyphen, or the letters “en”; a geographic descriptor (“Argentina”, “Columbia”, or “Chile”); and the “.com” generic top-level domain name (gTLD).
According to Complainant, Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names and Complainant has not authorized or licensed to Respondent any rights in its CHAMPION mark. Respondent does not use the disputed domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the disputed domain names resolved to identical websites that purported to offer counterfeit or unauthorized versions of Complainant’s products.
Further, says Complainant, Respondent registered and used the disputed domain names in bad faith. The identical resolving websites purported to offer counterfeit or unauthorized version of Complainant’s products. Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the CHAMPION mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has registered trademarks for the mark CHAMPION and uses it to market basic apparel. The mark was registered in 1985.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The disputed domain names were registered in 2022.
The resolving websites (which are identical) purported to offer for sale unauthorized or counterfeit versions of Complainant’s products; they displayed Complainant’s mark and logo.
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”).
The disputed domain names incorporate Complainant’s CHAMPION mark in its entirety and merely add a hyphen, or the letters “en”; a geographic descriptor (“Argentina”, “Columbia”, or “Chile”); and the “.com” generic top-level domain name (gTLD). Such changes fail sufficiently to distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); see also Home Depot Product Authority, LLC v. Angelo Kioussis, FA 1784554 (Forum June 4, 2018) (“The domain name contains the mark in its entirety, with only the addition of the generic letters ‘sb’ and the digits ‘2018,’ plus the generic Top Level Domain (“gTLD”) ‘.com.’ These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy.”); see also Dell Inc. v. SNAB Corporation, FA 1785051 (Forum May 30, 2018) (finding the inclusion of a geographic term did not distinguish the domain name and increased possible confusion, as “[t]he geographic term “hyderabad” is also suggestive of Complainant as Complainant has corporate offices in Hyderabad, India.”); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Brooks Sports, Inc. v. chen jiajin, FA 101001930406 (Forum March 30, 2021) (finding that “adding random letters and a gTLD…fails to sufficiently distinguish a disputed domain name). Therefore, the Panel finds that the disputed domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use its mark. Respondent is not commonly known by the disputed domain name: under Policy ¶ 4(c)(ii), WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name. See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Here, the WHOIS information for the disputed domain name lists the registrant as ““Client Care / Web Commerce Communications Limited”. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
The resolving websites (which are identical) purported to offer unauthorized or counterfeit versions of Complainant’s goods. This is not a bona fide offering of goods and services or a legitimate noncommercial or fair use under the Policy. 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.”); see also Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015) (finding no bona fide offering of goods or legitimate noncommercial or fair use existed where Respondent used the resolving website to sell products branded with Complainant’s MERRELL mark, and were either counterfeit products or legitimate products of Complainant being resold without authorization). Thus the Panel finds that Respondent fails to use the disputed domain names to make a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain names.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain names.
Indeed, as already noted, the resolving websites offered for sale unauthorized or counterfeit versions of Complainant’s products. This is indicative of bad faith registration and use per Policy ¶ 4(b)(iv). See Crocs, Inc. v. jing dian, Case No. FA1410001587214 (Forum Dec. 12, 2014) (finding bad faith where the respondent used the disputed domain name to display the complainant’s marks to sell unauthorized goods); see also Swarovski Aktiengesellschaft v. ailong c ailong xiong, Case No. FA1407001571172 (Forum Sept. 5, 2014) (finding bad faith where respondent used the disputed domain name in connection with a website purportedly offering unauthorized goods of Complainant and stating that the respondent’s bad faith was “apparent in that [r]espondent is profiting from the likelihood Internet users will mistakenly believe the goods sold through the domain name’s website are legitimate…”); see also Hunter Fan Co. v. MSS, FA 98067 (Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant); see also Hunter Fan Co. v. MSS, FA 98067 (Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant); see also H-D Michigan, LLC v. Ross, FA 1250712 (Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion and thus demonstrates bad faith per Policy ¶ 4(b)(iv)); see also Affliction, Inc. v. Chinasupply, FA 1223521 (Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain and thus demonstrating bad faith per Policy ¶ 4(b)(iv) by creating confusion as to the complainant’s connection with the website by selling counterfeit products). The Panel therefore finds that Respondent registered and used the disputed domain names in bad faith per Policy ¶ 4(b)(iv).
Further, Respondent registered the disputed domain names with actual knowledge of Complainant’s mark: the resolving websites displayed Complainant’s mark and logo, and photos of Complainant’s products. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain names and that this constitutes bad faith under Policy ¶ 4(a)(iii).
The Panel dismisses, without prejudice, the Complaint against the <champion-chile.com> domain name.
Having established all three elements required under the ICANN Policy for the domain names <champion-argentina.com>, <champion-colombia.com>, and <championenchile.com>, the Panel concludes that relief shall be GRANTED for those domain names.
Accordingly, it is Ordered that the <champion-argentina.com>, <champion-colombia.com>, and <championenchile.com> domain names be TRANSFERRED from Respondent to Complainant and that the <champion-chile.com> domain name REMAIN WITH the registrant.
Richard Hill, Panelist
Dated: October 20, 2022
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