PAIGE, LLC v. 林 罗
Claim Number: FA2211002020603
Complainant is PAIGE, LLC (“Complainant”), represented by Jon Ustundag of Jeffer Mangels Butler & Mitchell LLP, California, USA. Respondent is 林 罗 (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <paigeus.com>, registered with Name.com, 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 Forum electronically on November 16, 2022; Forum received payment on November 16, 2022.
On Nov 17, 2022, Name.com, Inc. confirmed by e-mail to Forum that the <paigeus.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, 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 November 18, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 8, 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@paigeus.com. Also on November 18, 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 December 15, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the PAIGE trademark established by its ownership of its portfolio of trademark registrations described below for which copies of the registration certificates have been submitted as evidence in an annex to the Complaint.
Complainant further claims that it has established trademark rights in the PAIGE mark by its extensive use of the mark in its retail clothing and accessories business, including online on its website.
Complainant submits that the disputed domain name is confusingly similar to Complainant’s PAIGE mark, as it consists of the mark in its entirety, combined with the geographic designation “U.S.” and the generic top level domain name extension <.com>.
Complainant argues that where a disputed domain name incorporates a complainant’s mark in its entirety, “[t]here can be no question” that the domain name is confusingly similar to the incorporated mark for purposes of the Policy. Oki Data Americas, Inc. v. ASD, Inc., WIPO CASE No. D2001-0903 (WIPO Nov. 6, 2001) (“As numerous prior panels have held, the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks”).
Complainant adds that the addition of the letters “us”, being a geographical identifier designating the United States, is insufficient to distinguish the disputed domain name from Complainant’s federally registered mark, because, inter alia, PAIGE remains the dominant feature of the disputed domain name. See Toyota France and Toyota Motor Corporation v. Computer-Brain, WIPO Case D2002-0002 (Toyota-occasions.com is confusingly similar to TOYOTA trademark).
Complainant next alleges that Respondent has no rights or legitimate interests in the disputed domain name arguing that there is no evidence that Respondent is, or has even been, commonly known by the disputed domain name.
Complainant asserts that Respondent has no association with either Complainant or any of its PAIGE marks, that Respondent is not an authorized retailer of PAIGE-branded goods and, to Complainant’s knowledge, Respondent is not offering any genuine or authorized PAIGE-branded goods.
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 appears from the exhibited screen capture that Respondent is using the disputed domain name for a fake website purporting to offer genuine PAIGE branded goods at a steep discount (the goods listed on Respondent’s website are significantly lower than the MSRP for genuine PAIGE branded goods), for the purpose of luring consumers into sending money and disclosing personal and financial information based on the false expectation that the consumers will, in return, receive high-quality PAIGE branded products at discounted prices.
Complainant adds that among other things, Respondent’s website uses Complainant’s stylized PAIGE mark and a layout similar to Complainant’s genuine website.
Complainant further submits that Respondent’s website discloses no phone number or email address, and provides a fake address in Missoula, Montana, as its supposed address, adding that Respondent is not an authorized retailer of PAIGE branded goods and, based on the advertised discounts, it is reasonable to conclude that, in the event that the Respondent does ship any products, that they are either improperly obtained or counterfeit.
Complainant adds that the site to which the disputed domain name resolves, does not accurately disclose that Respondent has no relationship with, and is not an authorized retailer of Complainant’s PAIGE branded goods.
Arguing that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain or to misleadingly divert consumers, but as noted above, Respondent is using the disputed domain name to misleadingly divert consumers who are looking to purchase authentic PAIGE branded apparel and accessories from Complainant, and furthermore it may be inferred from the checkout options and acceptable payment methods listed on the website to which the disputed domain name resolves show that Respondent is accepting payment from consumers, and is thus using the disputed domain name for commercial gain.
Complainant next alleges that the disputed domain name was registered and is being used in bad faith, arguing that its PAIGE brand is well known for manufacturing and selling high-end, high-quality denim, apparel, accessories, and related items and for over a decade, Complainant has used its federally-registered PAIGE mark in connection with the advertising and sale of its jeans, shorts, skirts, and shirts.
In contrast, as described above, Respondent is purporting to use the disputed domain name and Respondent’s website to which is resolves without authorization, for the purpose of luring consumers into sending money and disclosing personal and financial information based on the false expectation that the consumers will, in return, receive high-quality PAIGE branded products at discounted prices.
In conclusion Complainant submits that Respondent has intentionally registered, and is intentionally using, the disputed domain name in an attempt to attract, for commercial gain, Internet users to the featured website, by creating a likelihood of confusion with Complainant’s PAIGE marks, including its federally-registered PAIGE mark, and such use is intended to confuse, and has in fact confused consumers as to the source, sponsorship, affiliation, or endorsement of Respondent’s website and the goods offered thereon.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is an online retailer of garments and accessories and carries on business using the PAIGE trademark for which it owns a portfolio of registrations including the following:
· United States registered trademark, PAIGE registration number, 3308211, registered on the Principal Register on October 9, 2007 for goods in International Class 18;
· United States registered trademark, PAIGE registration number 4046193 registered on the Principal Register on October 25, 2011 for goods in International Class 25;
· United States registered trademark, PAIGE registration number, 4128766 registered on the Principal Register on April 17, 2012 for goods in International Class 25:
· United States registered trademark, PAIGE registration number, 4237703 registered on the Principal Register on November 6, 2012 for goods in International Class 25;
· United States registered trademark, PAIGE registration number, 5523189 f registered on the Principal Register on in International Class 18 and belts of leather, suede, imitation leather, and non-leather fabrics in International Class 25, issued on July 24, 2018;
· United States registered trademark, PAIGE registration number, 5682917 for PAIGE registered on the Principal Register on February 26, 2019 for goods in International Classes 4 and 25;
· United States registered trademark, PAIGE registration number, 5798838 registered on the Principal Register on July 9, 2019 for goods in International Class 35;
· United States registered trademark, PAIGE registration number,. 6053489 registered on the Principal Register on March 12, 2020 for goods in International Class 25; and
· United States registered trademark, PAIGE registration number 6694369 registered on the Principal Register on April 5, 2022 for goods in International Class 9.
Complainant has established Internet presence maintains a retail website at <paige.com>
The disputed domain name <paigeus.com> is registered on was registered on May 19, 2022 and resolves to a website that purports to offer Complainant’s goods a greatly discounted prices.
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 Forum for details of the registration of the disputed domain name in the course of this proceeding.
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 convincing, uncontested evidence that it has rights in PAIGE trademark established by its ownership of the portfolio of trademark registrations described above and its long-established use of the mark to distinguish its products and services in its retail clothing and accessories business including on its website at <www.paige.com>.
The disputed domain name <paigeus.com> consists of in Complainant’s PAIGE mark followed by the element “us” and the generic Top Level Domain extension <.com>.
Complainant’s PAIGE mark is the initial, dominant, and only distinctive element in the disputed domain name.
The presence of the element “us” in the disputed domain name would on the balance of probabilities, in context, be considered a reference to the geographic identifier acronym for the United States, and therefore descriptive, and does not prevent a finding that the disputed domain name is confusingly similar to Complainant’s PAIGE mark.
In the circumstances of this proceeding, the gTLD <.com> extension would be considered a necessary technical requirement for a domain name registration and need not be considered for the purposes of comparison.
This Panel finds therefore that the disputed domain name is confusingly similar to the PAIGE 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
· there is no evidence that Respondent is, or has even been, commonly known by the disputed domain name;
· Respondent has no association with either Complainant or any of its PAIGE marks;
· Respondent is not an authorized retailer of PAIGE branded goods;
· Respondent is not offering any genuine or authorized PAIGE branded goods;
· the screen capture of the website to which the disputed domain name resolves, which is exhibited in an annex to the Complaint, shows that Respondent is using the disputed domain name to resolve to a fake website purporting to offer genuine PAIGE branded goods at a steep discount for the purpose of luring consumers into sending money and disclosing personal and financial information based on the false expectation that the consumers will, in return, receive high-quality PAIGE branded products at discounted prices;
· Respondent’s website uses Complainant’s stylized PAIGE mark and a layout similar to Complainant’s genuine website;
· Respondent’s website discloses no phone number or email address, and provides a fake address in Missoula, Montana, as its supposed address;
· Respondent is not an authorized retailer of PAIGE branded goods and, based on the advertised discounts, it is reasonable to conclude that, in the event that the Respondent does ship any products, that they are either improperly obtained or counterfeit;
· Respondent’s website does not accurately disclose that Respondent has no relationship with and is not an authorized retailer of Complainant’s PAIGE branded goods;
· Respondent is using the disputed domain name to misleadingly divert consumers who are looking to purchase authentic PAIGE branded apparel and accessories from Complainant and therefore is not making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain or to misleadingly divert consumers;
· furthermore it may be inferred from the checkout options and acceptable payment methods listed on the website to which the disputed domain name resolves, that Respondent is accepting payment from consumers, and is thus using the disputed domain name for commercial gain.
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 has adduced clear and convincing, uncontested evidence that it has trademark rights in the PAIGE mark which long predate the registration and first use of the disputed domain name on May 19, 2022.
PAIGE is a distinctive mark and the evidence shows that it is well known with a strong Internet presence. It is improbable that the disputed domain name that is composed of the distinctive mark in combination with a reference to the United States market, was chosen and registered by coincidence. It is more plausible that the registrant was aware of Complainant, its name, mark and eponymous website address, when the disputed domain name was registered.
This Panel finds therefore that on the balance of probabilities the disputed domain name was chosen and registered in bad faith with Complainant and the PAIGE mark in mind for the purposes of taking predatory advantage of Complainant and its goodwill and reputation.
The uncontested evidence adduced by Complainant shows that the disputed domain name is used as the address of a website which purports of offer Complainant’s goods at highly discounted prices. On the balance of probabilities Respondent is not making any bona fide offering of Complainant’s goods but using the discounted prices to attract consumers with no intention of fulfilling any orders received. The website discloses no phone number or email address, for Respondent and provides a fake business address in Missoula, Montana. Such use of Complainant’s mark to attract, confuse, misdirect and defraud consumers constitutes use in bad faith for the purposes of the Policy.
Additionally, Complainant has convincingly argued that, if in the alternative Respondent is in fact offering any goods on his website as he purports to do, on the balance of probabilities, because they are so extensively discounted, they are either counterfeit or improperly obtained.
Furthermore, Respondent has made no effort to clarify that Respondent, or his website has no association with Complainant, and in fact the design of his website creates the impression that it is maintained by, endorsed by, or associated with Complainant.
Such use of a domain name for the purposes of impersonating Complainant, and confusing and misdirecting unsuspecting Internet users 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 name was registered and is being used in bad faith, Complainant has succeeded in the third element of the test in Policy paragraph 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 <paigeus.com> domain name be TRANSFERRED from Respondent to Complainant.
______________________________________
James Bridgeman SC
Panelist
Dated: December 16, 2022
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