Guru Denim LLC v. Muhammad Irfan
Claim Number: FA2303002035664
Complainant is Guru Denim LLC (“Complainant”), represented by Michelle Emeterio of SNELL & WILMER L.L.P, California, USA. Respondent is Muhammad Irfan (“Respondent”), Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <truereligionclothing.net>, registered with Hostinger, UAB.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to Forum electronically on March 13, 2023; Forum received payment on March 13, 2023.
On March 14, 2023, Hostinger, UAB confirmed by e-mail to Forum that the <truereligionclothing.net> domain name is registered with Hostinger, UAB and that Respondent is the current registrant of the name. Hostinger, UAB has verified that Respondent is bound by the Hostinger, UAB 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 March 14, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 3, 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@truereligionclothing.net. Also on March 14, 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 April 8, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant, Guru Denim LLC, is a retailer, most notably for clothing.
Complainant has rights in the TRUE RELIGION mark through numerous trademark registrations, including with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <truereligionclothing.net> domain name is confusingly similar to the TRUE RELIGION mark as it includes the entire mark and merely adds a generic term and generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <truereligionclothing.net> domain name since Respondent is not licensed or authorized to use Complainant’s TRUE RELIGION mark and is not commonly known by the at-issue domain name. Additionally, Respondent does not use the at-issue domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent previously diverted internet traffic to a website that impersonated Complainant and purported to offer Complainant’s products. Further, Respondent was conducting a phishing scheme. Currently, Respondent fails to actively use the at-issue domain name.
Respondent registered and uses the <truereligionclothing.net> domain name in bad faith by seeking to confuse consumers as to the source or affiliation of the domain name and resolving site. The domain name currently resolves to an inactive site. In addition, the TRUE RELIGION mark is well-known and distinct; there is no plausible or possible legitimate use to be made of the disputed domain name. Complainant sent Respondent a cease and desist letter to which Respondent did not respond. Finally, Respondent had actual knowledge of Complainant’s rights in the TRUE RELIGION mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in TRUE RELIGION.
Respondent registered the at-issue domain name after Complainant acquired rights in TRUE RELIGION.
Complainant’s has not authorized Respondent to use Complainant’s trademark.
Respondent used the at-issue domain name to enable a pass itself off as Complainant, sell Complainant’s products, and facilitate a phishing scheme and currently holds the domain name passively.
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 at-issue domain name is identical to a trademark in which Complainant has rights.
Complainant shows that it registered the TRUE RELIGION mark with multiple government agencies worldwide including the USPTO. Complainant’s registration for TRUE RELIGION with at least one recognized trademark registrar is conclusive evidence of its rights in a mark under Policy ¶ 4(a)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA 1625332 (Forum July 17, 2015) (finding, “Registration of a mark with a governmental authority (or, in this case, multiple governmental authorities) is sufficient to establish rights in the mark for purposes of Policy ¶4(a)(i)”).
Respondent’s <truereligionclothing.net> domain name contains Complainant’s TRUE RELIGION trademark less its space, followed by the suggestive term “clothing,” and with all followed by the “.net” top-level domain name. The differences between Complainant’s TRUE RELIGION trademark and Respondent’s at-issue domain name fail to distinguish the domain name from the mark under Policy ¶ 4(a)(i). Therefore, the Panel finds that Respondent’s <truereligionclothing.net> domain name is confusingly similar to Complainant’s TRUE RELIGION trademark. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognisable 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, Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the <truereligionclothing.net> domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name. See Navistar International Corporation v. N Rahmany, FA 1620789 (Forum Jun. 8, 2015) (finding that the respondent was not commonly known by the at-issue domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark into any domain name).
The WHOIS information for the at-issue domain name identifies the registrant of <truereligionclothing.net> as “Muhammad Irfan” and the record before the Panel contains no evidence that otherwise tends to show that Respondent is commonly known by the <truereligionclothing.net> domain name. The Panel therefore concludes that Respondent is not commonly known by the at-issue domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent previously used the at-issue domain name to address a website dressed to appear as if sponsored by Complainant in an effort to divert customers away from Complainant and to Respondent’s website. The website displayed Complainant’s trademark and used Complainant’s copyrighted photographs, patterns, designs, and text as part of Respondent ruse. There, Respondent offered Complainant’s products for sale and used the website to harvest personal information as part of a phishing scheme. Respondent’s use of the <truereligionclothing.net> in this manner constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a non-commercial or fair use under Policy ¶ 4(c)(iii). See Dell Inc. v. Devesh Tyagi, FA 1785301 (Forum June 2, 2018) (“Respondent replicates Complainant’s website and displays Complainant’s products. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (iii).”); 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).
Currently, browsing to the at-issue domain name returns an error message stating that a website cannot be reached. Respondent thus holds the at-issue domain name passively which is also neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Nutri/System IPHC, Inc. v. Usama Ayub, FA1725806 (Forum June 5, 2017) (holding that “Respondent does not use the <nutrisystemturbo.us> domain for a bona fide offering of goods or services because the domain name resolves to a website that currently is designated as ‘under construction.’”).
Given the forgoing, Complainant satisfies its initial burden and demonstrates Respondent’s lack of rights and lack of legitimate interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below without being exhaustive, there is evidence from which the Panel may conclude that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
As discussed above regarding rights and legitimate interests, Respondent has used the at-issue domain name to address a website mimicking Complainant’s genuine website design and content so as to pose as Complainant, sell Complainant’s products, and facilitate fraud. Respondent’s use of the domain name was disruptive to Complainant’s business and inappropriately capitalized on the confusion Respondent created between the at-issue domain name and Complainant’s mark. Respondent’s prior use of <truereligionclothing.net> thereby demonstrates Respondent’s bad faith per Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”); see also, Morgan Stanley v. Bruce Pu, FA 1764120 (Forum Feb. 2, 2018) (“[T]he screenshot of the resolving webpage allows users to input their name and email address, which Complainant claims Respondent uses that to fraudulently phish for information. Thus, the Panel agrees that Respondent phishes for information and finds that Respondent does so in bad faith under Policy ¶ 4(a)(iii).”).
Next, Respondent currently holds its confusingly similar <truereligionclothing.net> domain name passively. Respondent’s failure to actively used the at-issue domain name is evidence of bad faith under 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.”).
Moreover, Respondent had actual knowledge of Complainant’s rights in the TRUE RELIGION mark when Respondent registered <truereligionclothing.net> as a domain name. Respondent’s actual knowledge is evident from the notoriety of Complainant’s TRUE RELIGION trademark and from Respondent’s prior use of the domain name to poses as Complainant by addressing a website that mimics Complainant’s genuine website. Respondent’s registration and use of the confusingly similar domain name with knowledge of Complainant’s trademark rights in TRUE RELIGION further demonstrates Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii). See 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 had actual knowledge of Complainant's mark when registering the disputed domain name); 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <truereligionclothing.net> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: April 10, 2023
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