DECISION

 

Heard Design, LLC v. Rick Wittenbraker / Howler Brothers / awdda dwadad / awdaadwd

Claim Number: FA2309002060489

PARTIES

Complainant is Heard Design, LLC ("Complainant"), represented by Alison Davis Frey of Law Office of Alison Frey, PC, Texas, USA. Respondent is Rick Wittenbraker / Howler Brothers / awdda dwadad / awdaadwd ("Respondent"), Texas, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <outletshowlerbros.shop>, <howlerbrosoutlets.shop>, and <howlerbros.xyz>, registered with Namesilo, Llc. (sometimes referred to herein individually or collectively as the "Disputed Domain Name" or the "Disputed Domain Names", as the case may be).

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Kendall C. Reed as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on September 6, 2023; Forum received payment on September 6, 2023.

 

On September 6, 2023, Namesilo, Llc confirmed by e-mail to Forum that the <outletshowlerbros.shop>, <howlerbrosoutlets.shop>, and <howlerbros.xyz> domain names are registered with Namesilo, Llc and that Respondent is the current registrant of the names. Namesilo, Llc has verified that Respondent is bound by the Namesilo, Llc 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 September 12, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 2, 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@outletshowlerbros.shop, postmaster@howlerbrosoutlets.shop, and postmaster@howlerbros.xyz. Also on September 12, 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.

 

A timely Response was received from Heard Design LLC d/b/a Howler Brothers and determined to be complete on September 20, 2023. This Response is addressed in the Preliminary issues section below.

 

On September 20, 2023, pursuant to the Parties' request to have the dispute decided by a single-member Panel, Forum appointed Kendall C. Reed 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.

 

RELIEF SOUGHT

Complainant requests that the Disputed Domain Names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.       Complainant

Heard Design, LLC ("Complainant") is a retail and wholesale clothing manufacturer operating as Howler Brothers/Howler Bros and headquartered in Austin, TX. Since 2009, Complainant has been offering a broad range of apparel under the trademarks HOWLER BROTHERS, HOWLER BROS and other trademarks. Complainant's offering has grown over the years to include accessories and sporting equipment as well.

 

Complainant owns a number of US trademark registrations, including

HOWLER BROS, US registration number 3887944, registration date of December 7, 2010, for: athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms; Fabric belts; hats; leather belts; pants; shorts; wearable garments and clothing, namely, shirts (the "Complainant's Mark"). Complainant also owns several non-US registrations and has filed several trademark applications, all for the same or similar marks.

 

Complainant believes that the Respondent is the same for each of the Disputed Domain Names and that all of the information provided by the Respondent when registering the Disputed Domain Names was fraudulent. Given the fact that the same content appears in the websites to which each of the three Disputed Domain Names resolves (as supported by exhibits attached to the complaint) and the Disputed Domain Names were registered at the same time, they must be controlled by the same person or entity despite the fact that the contact information is different for one of them. In all cases, the sites were located on a Cloudflare server, probably hosted by the same service.

 

Pertaining to <howlerbrosoutlets.shop> and <howlerbros.xyz>, the contact information is:

a. Name: awdda dwadad

    Company: awdaadwd

b. Address: erasr tre, arera. Aeraer Armenia

c. Telephone: +45646

d. Fax: Unknown

e. E-Mail: gausswdr883436@hotmail.com

 

All of this information is nonsensical.

 

 Pertaining to <outletshowlerbros.shop>, the contact information is:

a.Name: Rick Wittenbraker

Company: Howler Brothers

b. Address: 1010 West Lynn St.

Austin, TX 78703

c. Telephone: +15123738233

d.Fax:

e. E-Mail:domains@howlerbros.com

 

With respect to this later Disputed Domain Name, <outletshowlerbros.shop>, Rick Wittenbraker is the Complainant's Chief Marketing Officer, and the noted contact information is correct; however, neither he nor Complainant itself registered this Disputed Domain Name, the noted contact information being fraudulently provided to the registrar in connection with the registration.

 

The Disputed Domain Names are confusingly similar to Complainant's Marks because they contain the entirety of Complainant's Mark, as with <howlerbros.xyz>, and in combination with the generic word "outlets," as with <howlerbrosoutlets.shop> and <outletshowlerbros.shop>. The respective generic gTLDs do not create a meaningful distinction.

 

Respondent has no rights or legitimate interests in the Disputed Domain Names because Respondent is not known by the Disputed Domain Names and Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Names. Rather, Respondents are using the Disputed Domain Names to directly compete with Complainant and/or to nefariously collect customer's information.

 

Further,  Respondent has been texting Howler's clientele with links to one of the Disputed Domain Names.

 

Customers who attempt to make purchases at the fraudulent websites never receive confirmation emails and do not receive the products they have ordered. Complainant has received over 300 communications from customers reporting that they fell victim to the scam. Copies of some of these communications are attached as exhibits to the Complaint.

 

Respondent's registration and use of the Disputed Domain Names are in bad faith because Respondent is intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's Marks as to the source, sponsorship, affiliation, or endorsement of Respondent's websites and/or the links displayed on Respondent's websites.

 

Respondent's incorporation of Complainant's Mark into the Disputed Domain Names in connection with Respondent's copying of complaint's website and offering Complainant's goods for sale demonstrates that Respondent has targeted Complainant and Complainant's Mark. 

 

B. Respondent

 

No response was received with respect to Disputed Domain Names <howlerbros.xyz> and <howlerbrosoutlets.shop>.

 

A response was received with respect to the Disputed Domain Name <outletshowlerbros.shop>. In this response, the Respondent (who is also Complainant herein) asserts that it did not register this Disputed Domain Name, but rather this Disputed Domain Name was registered by some unknown third party fraudulently using Complainant's name and the truthful contact information for one of Complainant's employees, Rick Wittenbraker. This Respondent asks that this Disputed Domain Name be transferred back to the Complainant. This Response is further discussed below in the Preliminary Issues section below.

 

FINDINGS

The Panel makes the following findings of fact:

1.       The Complainant owns the US trademark registration for trademark HOWLER BROS, registration number 3887944, and the registration date was December 7, 2010.

2.       The websites to which the Disputed Domain Names resolve have the same look and feel as Complainant's website, employ and display Complainant's Mark and other trademarks owned by Complainant, and offer for sale goods that are identical to the goods sold by Complainant.

3.       Complainant has received many complaints from customers who claim to have ordered Complainant's products on and through the Disputed Domain Names but have not received any products.

4.       The websites to which the Disputed Domain Names resolve include fillable spaces for customers to provide credit card and shipping information.

5.       The Disputed Domain Name <howlerbros.xyz> was registered on August 28, 2023, the Disputed Domain Name  <outletshowlerbros.shop> was registered on August 30, 2023, and the Disputed Domain Name  <howlerbrosoutlets.shop> was registered on September 1, 2023.

6.       Each of the Disputed Domain Names were registered with Namesilo, Llc.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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.

 

Preliminary Issue:

Multiple Disputed Domain Names and Multiple Respondents

 

Rule 3(c) allows a complaint to include more than one domain name, provided the domain names are registered to the same domain-name holder.

 

The Complaint in the present matter appears, on the surface, to violate Rule 3(c) because it includes three Disputed Domain Names held by two separate entities, the first being "awdaadwd" and the second being Complainant itself.

 

This apparent difficulty is resolved by the Panel's finding that there are not two Respondents, but only one, the actual identity of which is not known.

 

The Panel is persuaded of this by the identicality of the websites to which the Disputed Domain Names direct and by the common conduct of the owner of these websites as described by the customers who have complained to the Complainant.

 

The websites to which the Disputed Domain Names direct are identical to each other without being identical to Complainant's website. It is implausible in the extreme that this could be true unless a single actor is involved.

 

Further, the Complaint includes as exhibits a number of complaints made by customers who have engaged with the websites to which the Disputed Domain Names resolve. These customers report that they attempted to purchase product (believing that they were purchasing Complainant's products), but did not receive either a confirming email or the product they thought they ordered. This was true for each of the involved websites.

 

This finding that there is only one Respondent resolves the potential problem of the Complainant being against multiple Respondents. There are not multiple Respondents.

 

This finding also resolves the potential paradoxical situation of one of the "Respondents", being the Complaint, asking in its response that one of the Disputed Domain Names be returned to itself. The Complainant is not a Respondent, and therefore cannot make this request.

 

Identical and/or Confusingly Similar

Policy ¶4(a)(i) provides that Complainant must have rights in a trademark and that the Disputed Domain Names must be identical or confusingly similar to this trademark.

 

With respect to rights in a trademark, it is generally accepted that a trademark registration is proof of such rights. In this matter, Complainant has shown proof that it is the owner of a US trademark registration for the HOWLER BROS trademark.

 

With respect to identicality or confusingly similarity, it is generally accepted that this is established by a simple comparison of the involved trademark and the Disputed Domain Names, excepting minor variations and gTLDs. In this matter, Complainant's Mark is HOWLER BROS, and the Disputed Domain Names are: <outletshowlerbros.shop>, <howlerbrosoutlets.shop>, and <howlerbros.xyz>.

 

The Disputed Domain Name  <howlerbros.xyz> is identical to Complainant's mark, except for the absence of a space and the gTLD "xyz".

 

The Disputed Domain Names <outletshowlerbros.shop> and <howlerbrosoutlets.shop> are similar to Complaint's Mark, except for the absence of spaces, the gTLD ".shop" and the addition of the word "outlets."  It is generally accepted that where the Complainant's Mark remains recognizable, the addition of a generic word does not prevent a finding of confusing similarity. See WIPO Overview 3.0, Section 1.8.

 

As such, Complainant has established the first element of the Policy.

 

Rights or Legitimate Interests

Under Policy paragraph 4(a)(ii), Complainant is required to establish a prima facia case that Respondent does not have rights or legitimate interests in the Disputed Domain Names, and if successful, then it is incumbent on Respondent to rebut this prima facia showing. See Hanna-Barbera Prods., Inc. v. Entm t Commentaries, FA 741828 (Forum Aug. 18, 2006)(holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interest in the disputed domain name under the UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interest in a domain name).

 

In the present matter, Complainant has carried its burden. It has demonstrated that Respondent is not known by the Disputed Domain Names, Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Names, and Respondent's actions have been in bad faith, as noted below.

 

Respondent did not file a response (setting aside the response that was filed by the Respondent who is also the Complainant, which is discussed above). As such, Respondent has not rebutted Complainant's prima facia showing.

 

As such, Complainant has established the second element of the Policy.

 

Registration and Use in Bad Faith

Under Policy ¶ 4(a)(iii) and ¶ 4(b)(iv), bad faith on the part of Respondent exists for purposes of the Policy if the Panel finds that: "by using the domain name [the Disputed Domain Names], you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your [Respondent's] website …by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your [Respondent's] website…"

 

The Panel finds that Respondent has done this. Respondent recently registered and has since used the Disputed Domain Names to resolve to websites which have the same look and feel as Complainant's website, which prominently displays Complainant's Mark and other marks which Complainant owns, and on which Respondent presents products for sale identical to Complainant's products. Further, Respondent is doing these things either for the purpose of collecting customer information, including credit card information, or to directly compete with Complainant by passing off its goods as those of the Complainant, or both.  

 

As such, Complainant has established the third element of the Policy.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <outletshowlerbros.shop>, <howlerbrosoutlets.shop>, and <howlerbros.xyz> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Kendall C. Reed, Panelist

Dated: September 28, 2023