Seven for All Mankind International SAGL v. Client Care / Web Commerce Communications Limited
Claim Number: FA2305002043330
Complainant is Seven for All Mankind International SAGL (“Complainant”), represented by Matthew S. Anderson of Munck Wilson Mandala, LLP, Texas, USA. Respondent is Client Care / Web Commerce Communications Limited (“Respondent”), Malaysia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <7forallmankindcanada.com>, <7forallmankindcanadas.com>, and <7forallmankindnz.com> (the “disputed domain names”), registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to Forum electronically on May 5, 2023; Forum received payment on May 5, 2023.
On May 5, 2023, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED confirmed by e-mail to Forum that the disputed domain names are registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED and that Respondent is the current registrant of the names. ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED has verified that Respondent is bound by the ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED 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 May 9, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 30, 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@7forallmankindcanada.com, postmaster@7forallmankindcanadas.com, postmaster@7forallmankindnz.com. Also on May 9, 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 June 2, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Lynda M. Braun 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 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. 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, and the Panel concurs, that the disputed domain names were registered by a single person and/or entity given that the registrar information for each domain names is identical. In addition, the two websites to which the disputed domain names resolve are identical except for the changed domain name for each, and a change in the referenced currency. This includes an identical error referring to “Non-SHEIN Products” found on the respective “Return Policy” pages.
The Panel concludes that the Disputed Domain Names in this proceeding are owned by the same Respondent who has registered multiple domain names as part of an ongoing scheme. Since the Panel accepts that the evidence in the Complaint is sufficient to establish a nexus or link among the Complainants, the Panel treats the Complainants as a single entity in this proceeding. Thus, throughout this decision, the Complainants will hereinafter be collectively referred to as “Complainant.”
A. Complainant
Complainant is a manufacturer, marketing, and sales company of private label apparel products. Complainant has rights in the 7 FOR ALL MANKIND trademark through its registration with multiple trademark offices worldwide, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,890,644, registered on October 5, 2004) (hereinafter collectively referred to as the “7 FOR ALL MANKIND Mark”).
Complainant contends that the disputed domain names, are identical or confusingly similar to Complainant’s 7 FOR ALL MANKIND trademark as they incorporate the mark while adding the geographic terms “canada”, “canadas”, “nz”, followed by the “.com” generic Top-Level Domain (“gTLD”).
Complainant also claims that Respondent lacks rights and legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names, nor has Complainant authorized or licensed Respondent to use its 7 FOR ALL MANKIND Mark in the disputed domain names. Further, Complainant contends that Respondent does not use the disputed domain names for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use, but instead passes off as Complainant.
Finally, Complainant argues that Respondent registered and is using the disputed domain names in bad faith because, Complainant claims that . Respondent disrupts Complainant’s business while attracting users for commercial gain and creates confusion while passing off. Moreover, Complainant states that Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the 7 FOR ALL MANKIND Mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that Complainant has registered trademark rights in the 7 FOR ALL MANKIND Mark as described above. The Panel also finds that the disputed domain names are confusingly similar to Complainant’s 7 FOR ALL MANKIND Mark, that Respondent has no rights or legitimate interests in respect of the disputed domain names, and that the disputed domain names were registered and are being used in bad faith.
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 disputed domain name should be cancelled or transferred:
(1) the disputed 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 disputed domain name; and
(3) the disputed 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 asserts rights in the 7 FOR ALL MANKIND Mark through its registration with multiple trademark offices worldwide including the USPTO (e.g., Reg. No. 2,890,644, registered on October 5, 2004). Registration of a mark with multiple trademark offices worldwide is generally sufficient in demonstrating rights in the mark under Policy paragraph 4(a)(i). See Fossil Group, Inc. v. wuruima wu, FA 1544486 (Forum Mar. 21, 2014) (holding, “Complainant’s registration of the FOSSIL mark with trademark agencies worldwide, including the USPTO and SAIC, establishes Complainant’s rights in the FOSSIL mark pursuant to Policy ¶ 4(a)(i).”). Since Complainant has registered its mark with multiple trademark organizations including the USPTO, the Panel finds that Complainant has rights in the mark under Policy paragraph 4(a)(i).
The Panel also finds that the disputed domain names are identical or confusingly similar to Complainant’s 7 FOR ALL MANKIND Mark. Under Policy ¶ 4(a)(i), adding a geographic term and the “.com” gTLD is insufficient in differentiating from the mark. 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).”). Here, the disputed domain names incorporate the 7 FOR ALL MANKIND Mark while adding the geographic terms “canada”, “canadas”, “nz”, followed by the “.com” gTLD. Thus, the Panel concludes that Respondent’s disputed domain names are identical or confusingly similar to Complainant’s 7 FOR ALL MANKIND Mark under Policy ¶ 4(a)(i).
Accordingly, the Panel finds that Policy paragraph 4(a)(i) has been established by Complainant.
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain names. Under the Policy, Complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain names. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain names. See 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”). In this case, Respondent did not carry its burden to come forward with evidence of its rights or legitimate interests in the disputed domain name as it did not respond to the Complaint, but given the facts of this case, the Panel finds that Respondent would have been hard-pressed to furnish availing arguments had it chosen to respond:
Panels have declined to find a bona fide offering of goods or services or a legitimate noncommercial or fair use of disputed domain names when a respondent diverts traffic to a site that imitates and competes with the complainant . See Netflix, Inc. v. Irpan Panjul / 3corp.inc, FA 1741976 (Forum Aug. 22, 2017). Panels have repeatedly found that competing services using confusing disputed domain names violate Policy paragraph 4(c)(ii). See HDR Global Trading Limited v. Sam Ben, FA1910001866208 (Forum Nov. 5, 2019) (finding respondent’s use of complainant’s BITMEX mark for competing cryptocurrency services did not constitute a bona fide offering of goods or services).
Finally, Respondent is not using the disputed domain names for any bona fide offering of goods or services, nor any noncommercial or fair use since under Policy paragraphs 4(c)(i) and (iii), passing off as a complainant is not a bona fide offering of goods or services, nor any noncommercial or fair use. See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business).
Accordingly, the Panel finds that Policy paragraph 4(a)(ii) has been established by Complainant.
The Panel concludes that Respondent registered and is using the disputed domain names in bad faith.
First, Respondent’s registration and use of the disputed domain names to pass itself off as Complainant constitutes bad faith. Respondent’s use of the disputed domain names as a websites to purportedly offer competing services to those of Complainant to pass off as Complainant also demonstrates bad faith registration and use. UDRP cases have consistently held that passing off as a complainant while attracting users, creates confusion as to the source of the disputed domain names and is evidence of bad faith registration and use under Policy paragraph 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.”)
Moreover, Respondent’s unlawful actions indicate that Respondent uses domain names that prominently feature the 7 FOR ALL MANKIND Mark to misrepresent itself as Complainant. Respondent attempts to profit from the unauthorized use of the trademarks on its own websites and lure traffic from Complainant’s website. Accordingly, the Respondent’s unauthorized use of 7 FOR ALL MANKIND Mark, and its attempt to pass itself off as Complainant demonstrates Respondent’s bad faith.
Second, the fame of the 7 FOR ALL MANKIND Mark, which was used and registered by Complainant in advance of Respondent’s registration of the disputed domain names, renders it wholly implausible that Respondent created the disputed domain names independently. Moreover, where a disputed domain name is so obviously connected with a well-known name, product or service, its use by someone with no connection to the name, product or service indicates bad faith. Therefore, the Panel concludes that Respondent had actual knowledge of Complainant’s rights in the 7 FOR ALL MANKIND Mark, and this constitutes bad faith under Policy paragraph 4(a)(iii). It therefore strains credulity to believe that Respondent had not known of the Complainant or its 7 FOR ALL MANKIND Mark when registering the disputed domain names. Thus, as here, prior knowledge of a complainant’s trademark before registering a domain name is sufficient to find bad faith under Policy paragraph 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (finding actual knowledge due to the domain name chosen and the use made of it).
Accordingly, the Panel finds that Policy paragraph 4(a)(iii) has been established by Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <7forallmankindcanada.com>, <7forallmankindcanadas.com>, and <7forallmankindnz.com> disputed domain names be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: June 8, 2023
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