HBI Branded Apparel Enterprises, LLC and Hanesbrands, Inc. v. Web Commerce Communications Limited / Client Care
Claim Number: FA2306002048195
Complainant is HBI Branded Apparel Enterprises, LLC and Hanesbrands, Inc. (“Complainant”), represented by David K. Caplan, California, USA. Respondent is Web Commerce Communications Limited / Client Care (“Respondent”), Malaysia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <champion-mexico.com> and <championfactoryoutlets.com> (the “disputed domain names”), registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED (the “Registrar”).
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 June 8, 2023; Forum received payment on June 8, 2023.
On June 9, 2023, the Registrar confirmed by e-mail to Forum that the <champion-mexico.com> and <championfactoryoutlets.com> disputed domain names are registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED and that Respondent is the current registrant of the names. The Registrar 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 June 9, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 29, 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-mexico.com, postmaster@championfactoryoutlets.com. Also on June 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 July 7, 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 Complainants
In the instant proceedings, there are two Complainants: HBI Branded Apparel Enterprises, LLC and Hanesbrands, Inc. 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.”
In this proceeding, Complainant’s trademarks are held by the subsidiary company, Complainant HBI Branded Apparel Enterprises, LLC, and the portfolio of domain names associated with the trademarks are managed by the parent company, Complainant 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. See Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006) (holding 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).
The Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, and thus, will treat them as a single entity in this proceeding.
Preliminary Issue – Multiple Respondents
In the instant proceeding, Complainant has alleged that the entities which control the disputed domain names are effectively controlled by the same person and/or entity and are 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 there is a sufficient nexus between the Complainants as to the ownership of the disputed domain names. For example, the available registration information is identical and the disputed domain names resolve to the same website content and use the same service provider. Further, the disputed domain names are comprised of the CHAMPION trademark, adding a descriptive, generic, or geographic term, punctuation, and a generic Top-Level Domain (“gTLD”). The Panel agrees that Complainants’ claims are accurate and thus, there is sufficient evidence to demonstrate that the two entities are jointly controlled and may properly be deemed respondents (collectively “Respondent”) in the present case.
A. Complainant
Complainants HBI Branded Apparel Enterprises, LLC and Hanesbrands, Inc.(collectively “Complainant”) are manufacturers and marketers of apparel brands. Complainant has rights in the CHAMPION trademark through its registration of the mark with multiple trademark offices including the United States Patent and Trademark Office (“USPTO”) (e.g., United States Registration No. 5,096,680, registered on December 6, 2016) (hereinafter collectively referred to as the “CHAMPION Mark”).
Complainant claims that the disputed domain names are confusingly similar to Complainant’s CHAMPION Mark since the <championfactoryoutlets.com> disputed domain name incorporates the mark in its entirety and adds the terms “factory” and “outlets”, and the <champion-mexico.com> disputed domain name incorporates the mark in its entirety, connected with a hyphen to the geographic term “mexico”, and both disputed domain names include the “.com” gTLD.
Complainant also contends that Respondent lacks rights and legitimate interests in the disputed domain names as Respondent is not commonly known by the disputed domain names, nor has Complainant authorized or licensed Respondent to use its CHAMPION Mark in the disputed domain names. Further, Complainant claims 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 and engages in a phishing scheme.
Finally, Complainant contends that Respondent registered and is using the disputed domain names in bad faith. Respondent attracts users for commercial gain while creating a likelihood of confusion and passing off as Complainant. Moreover, Complainant claims that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the CHAMPION Mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that Complainant has rights in the CHAMPION Mark based on its trademark registrations with the USPTO. Registration with the USPTO is sufficient to establish rights in a mark pursuant to Policy paragraph 4(a)(i). In addition, the Panel finds that the disputed domain names are confusingly similar to Complainant’s CHAMPION Mark, that Respondent lacks rights or legitimate interests in the disputed domain names, and that Respondent registered and is using the disputed domain names 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 disputed domain names should be cancelled or transferred:
(1) the disputed domain names 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 names; and
(3) the disputed domain names have been registered and are 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 section 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 Panel finds that Complainant has rights in the CHAMPION Mark under Policy paragraph 4(a)(i) based upon its registration with the USPTO (e.g., United States Registration No. 5,096,680, registered on December 6, 2016). Registration with the USPTO is generally sufficient to establish rights in a mark per Policy paragraph (a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy paragraph 4(a)(i)).
The Panel also finds that Respondent’s disputed domain names are confusingly similar to Complainant’s CHAMPION Mark per Policy paragraph 4(a)(i). Registration of a disputed domain name that, as here, incorporates a mark in its entirety, and then adds a hyphen, followed by a descriptive and/or geographic term, and then followed by a gTLD does not distinguish the disputed domain name from the trademark per Policy paragraph 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and Top-Level Domain, the differences between the domain name and its incorporated trademark are insufficient to differentiate one from the other for the purposes of the Policy); see also ADP, LLC. v. Ella Magal, FA 1773958 (Forum Aug. 2, 2017) (“Respondent’s <workforce-now.com> domain name appropriates the dominant portion of Complainant’s ADP WORKFORCE NOW mark and adds a hyphen and the gTLD “.com.” These changes do not sufficiently distinguish the disputed domain name from the ADP WORKFORCE NOW mark.”).
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 names 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:
Specifically, Respondent is not commonly known by the disputed domain names or any names similar to them. Complainant has not authorized, licensed, or otherwise permitted Respondent to use the CHAMPION Mark and Respondent has no relationship, affiliation, connection, endorsement or association with Complainant.
Further, Respondent fails to use the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain names to impersonate Complainant since the disputed domain names resolve to websites that are identical to Complainant’s. Respondent also uses the disputed domain names to pass off as Complainant in connection with a phishing scheme, which is not a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy paragraphs 4(c)(i) or (iii). Under Policy paragraphs 4(c)(i) and (iii), passing off while engaging in a phishing scheme and hosting an inactive webpage is not a bona fide offering of goods or services, nor any noncommercial or fair use. See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”); see also 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).”).
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, the use of a disputed domain name to intentionally attempt to attract Internet users to a respondent’s website or online location by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website or online location is evidence of registration and use in bad faith. Bad faith under Policy paragraph 4(b)(iv) can be found where a respondent uses a confusingly similar domain name to falsely indicate an association with a complainant. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006).
Second, Respondent uses the disputed domain names to impersonate Complainant in connection with an e-mail phishing scheme, which is emblematic of bad faith. Passing off as a complainant in furtherance of fraud may be evidence of bad faith pursuant to Policy paragraph 4(b)(iv).
Third, the fame of the CHAMPION Mark, which was used and registered by Complainant far 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 opportunistic bad faith. Therefore, the Panel concludes that Respondent had actual knowledge of Complainant’s rights in the CHAMPION Mark, and this constitutes bad faith under Policy paragraph 4(a)(iii). It strains credulity to believe that Respondent had not known of the Complainant or its CHAMPION Mark when registering the disputed domain names. Thus, as here, prior knowledge of a complainant’s trademarks before registering a confusingly similar 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 <champion-mexico.com> and <championfactoryoutlets.com> disputed domain names be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: July 16, 2023
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