HBI Branded Apparel Enterprises, LLC and Hanesbrands, Inc. v. Stephanie Fuerst / Melanie SCHREIBER
Claim Number: FA2301002026650
Complainant is HBI Branded Apparel Enterprises, LLC and Hanesbrands, Inc. (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Stephanie Fuerst / Melanie SCHREIBER (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <champion-chile.com> and <championchilecl.com>, registered with NETIM SARL; Gransy, s.r.o..
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.
The Honorable Neil Anthony Brown KC as Panelist.
Complainant submitted a Complaint to Forum electronically on January 6, 2023; Forum received payment on January 6, 2023.
On January 9, 2023, NETIM SARL; Gransy, s.r.o. confirmed by e-mail to Forum that the <champion-chile.com> and <championchilecl.com> domain names are registered with NETIM SARL; Gransy, s.r.o. and that Respondent is the current registrant of the names. NETIM SARL; Gransy, s.r.o. has verified that Respondent is bound by the NETIM SARL; Gransy, s.r.o. 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 January 17, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 6, 2023 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-chile.com, postmaster@championchilecl.com. Also on January 17, 2023, 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 February 13, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC 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 ISSUES:
a) 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. 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.”
Complainant contends that the Disputed Domain Names are under common control because Respondents have the same or similar registrant information, website content, service provider, and both use Complainant’s mark. The Panel agrees.
Accordingly, the Panel finds that the disputed domain names are commonly owned/controlled by a single Respondent who is using multiple aliases. Accordingly, in this decision the Respondents will be collectively referred to as “Respondent.”
b) MULTIPLE COMPLAINANTS
In the instant proceedings, there are two 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. Complainant notes that 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. But see AmeriSource Corp. v. Park, FA 99134 (Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
As the Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, it will treat them all as a single entity in this proceeding and the proceeding may go forward on that basis. Accordingly, in this decision the Complainants will be collectively referred to as “Complainant.”
A. Complainant
Complainant made the following contentions.
Complainant,
HBI Branded Apparel Enterprises, LLC and Hanesbrands, Inc., is in the apparel
business. Complainant asserts rights in the CHAMPION mark based upon
registration with the United States Patent and Trademark Office (“USPTO”) (e.g.,
Reg. No. 5,096,680, registered December 6, 2016). See Compl. Ex. E.
Respondent’s <champion-chile.com> and <championchilecl.com> domain
names (hereinafter referred to as the “Disputed Domain Names” are confusingly
similar to Complainant’s CHAMPION trademark
because they include the mark in its entirety and adds a hyphen, the geographic
words “Chile” and “CL” (country code for Chile) and the generic top-level
domain name (“gTLD”) “.com”.
Respondent does not have rights or legitimate interests
in the Disputed Domain Names. Respondent is not licensed or authorized to use
Complainant’s CHAMPION
mark and is not commonly known by the
disputed domain names. Respondent also does not use the disputed domain names
for any bona fide offering of goods or services or legitimate
noncommercial or fair use. Rather, Respondent attempts passing off as
Complainant in furtherance of a phishing scheme. The Disputed Domain Names
resolve to inactive websites.
Respondent registered and uses the Disputed Domain Names
in bad faith.
Respondent creates a likelihood of confusion with Complainant for commercial
gain. Respondent
engages in inactive holding. Respondent had constructive and/or actual
knowledge of Complainant’s rights in the CHAMPION mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the apparel business.
2. Complainant has established its rights in the CHAMPION mark based upon registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,096,680, registered December 6, 2016)
3. Respondent registered the <champion-chile.com> and <championchilecl.com> domain names on March 15, 2022 and November 25, 2022, respectively.
4. Respondent has caused the
disputed domain names to be used in an attempt to pass itself off as
Complainant in furtherance of a phishing scheme and the disputed domain names
resolve to inactive websites.
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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the CHAMPION mark based upon its registration of the mark with the USPTO (e.g., Reg. No. 5,096,680, registered December 6, 2016) and other trademark agencies. See Compl. Ex. E. Registration of a mark with multiple trademark agencies is a valid showing of rights under Policy ¶ 4(a)(i). See Red Hat, Inc. v. Muhammad Shahzad, FA 1787738 (Forum June 19, 2018) (“Registration of a mark with multiple trademark agencies is sufficient to demonstrate rights to a mark per Policy ¶ 4(a)(i).”). Since Complainant has provided evidence of registration of the CHAMPION mark with the USPTO, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s CHAMPION mark. Complainant argues that the disputed domain names are confusingly similar to Complainant’s CHAMPION trademark. The addition of a hyphen, geographic term, and gTLD do not avoid confusing similarity under Policy ¶ 4(a)(i). See Franklin Covey Co. v. franklincoveykorea, FA 1774660 (Forum Apr. 11, 2018) (finding that the <franklincoveykorea.com> domain name is confusingly similar to the FRANKLIN COVEY mark, as “[t]he addition of a geographic term and a gTLD do not negate confusing similarity between a domain name and a mark per Policy ¶ 4(a)(i).”); 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).”). The disputed domain names include the mark in its entirety and in the case of the <champion-chile.com> domain name add a hyphen, the geographic words “Chile” and “CL” (country code for Chile) and the gTLD “.com”. In the case of the <championchilecl.com> domain name, it adds the geographic words “Chile” and “CL” (country code for Chile) and the gTLD “.com”. Therefore, the Panel finds that the disputed domain names are confusingly similar to Complainant’s CHAMPION mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s CHAMPION mark and to use it in its domain names, adding where indicated above, a hyphen, the geographic words “Chile” and “CL” (country code for Chile) which do not negate the confusing similarity between the domain names and the trademark;
(b)Respondent registered the <champion-chile.com> and <championchilecl.com> domain names on March 15, 2022 and November 25, 2022, respectively;
(c) Respondent has caused the disputed domain names to be used in an attempt to pass itself off as Complainant in furtherance of a phishing scheme and to resolve to inactive websites;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent does not have rights or legitimate interests in the disputed domain names because Respondent is not licensed or authorized to use Complainant’s CHAMPION mark and is not commonly known by the disputed domain names. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Deutsche Lufthansa AG v. Mohamed elkassaby, FA 1801815 (Forum Sep. 17, 2018) (“The WHOIS lists “Mohamed elkassaby” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).”). The WHOIS information for the disputed domain names list the registrant as “Stephanie Fuerst / Melanie SCHREIBER.” See Registrar Verification Email. Therefore, the Panel finds Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii);
(f) Complainant contends Respondent also does not use the disputed domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent attempts to pass itself off as Complainant in furtherance of a phishing scheme. Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii). See Nokia Corp. v. Eagle, FA 1125685 (Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)); see also Enterprise Holdings, Inc. v. I S / Internet Consulting Services Inc., FA 1785242 (Forum June 5, 2018) (“On its face, the use of a domain name that is confusingly similar to the mark of another in order to facilitate a phishing scheme cannot be described as either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii).”). Here, Complainant provides screenshots of the disputed domain names’ former resolving webpages, showing use of Complainant’s mark, offerings of Complainant’s products, and the option to enter personal and financial information. See Compl. Ex. G. Thus, the Panel finds Respondent does not provide a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use under Policy ¶ 4(c)(iii);
(g) Complainant argues that the disputed domain names resolve to inactive websites. Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii). See CrossFirst Bankshares, Inc. v. Yu-Hsien Huang, FA 1785415 (Forum June 6, 2018) (“Complainant demonstrates that Respondent fails to actively use the disputed domain name as it resolves to an inactive website. Therefore, the Panel finds that Respondent fails to actively use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).”). Here, Complainant provides screenshots of the disputed domain names’ resolving webpages showing a “This site can’t be reached” error message. See Compl. Ex. G. Therefore, the Panel finds Respondent does not provide a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a formal Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant argues Respondent creates a likelihood of confusion with Complainant for commercial gain. While an intent to confuse consumers is not required for a finding of trademark infringement, intent to deceive is strong evidence of a likelihood of confusion under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain). Here, the Panel notes that Complainant provides screenshots of the disputed domain names’ former resolving webpages, showing use of Complainant’s mark and logo, and offerings of its products. See Compl. Ex. G. Thus, the Panel finds Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(iv).
Secondly, Complainant submits that Respondent engages in inactive holding of the disputed domain names. Failure to use a domain name actively is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (“Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.”). Here, the Panel notes again that Complainant provides screenshots of the disputed domain names’ resolving webpages showing a “This site can’t be reached” error message. See Compl. Ex. G. Therefore, the Panel finds that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(iv).
Thirdly, Complainant contends that Respondent had constructive and/or actual knowledge of Complainant’s rights in the CHAMPION mark because of Respondent’s use of Complainant’s logo. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name"). Here, the Panel again notes that Complainant provides screenshots of the disputed domain names’ former resolving webpages, showing use of Complainant’s mark and logo, and offerings of its products. See Compl. Ex. G. As the Panel agrees, it determines that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(a)(iii).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <champion-chile.com> and <championchilecl.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC
Panelist
Dated: February 15, 2023
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