DECISION

 

Fringe + Co., LLC v. 俊 杨

Claim Number: FA2309002064016

PARTIES

Complainant is Fringe + Co., LLC ("Complainant"), represented by Stephen M. Kepper of Intellectual Property Consulting, LLC, Louisiana, USA. Respondent is 俊 杨 ("Respondent"), Guangdong, China.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <fringecostore.com>, registered with Name.com, Inc..

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on September 28, 2023; Forum received payment on September 29, 2023.

 

On September 29, 2023, Name.com, Inc. confirmed by e-mail to Forum that the <fringecostore.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, Inc. 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 October 2, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 23, 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@fringecostore.com. Also on October 2, 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 October 24, 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

     Complainant made the following contentions.

1.       Complainant is a United States company incorporated in April 2018 and engaged in the provision of online retail services featuring clothing, apparel, hats, headgear, clothing, accessories and related goods and services.

2.       Complainant has rights in the common law trademark for FRINGE + CO

("the FRINGE + CO trademark").

3.       Complainant is also the owner of the domain name <fringe-co.com> which it uses in its business as an official domain name and for its own website.

4.       Respondent registered the <fringecostore.com> domain name ("the disputed domain name") on July 6, 2022.

5.       In so doing, Respondent has incorporated in the disputed domain name the Complainant's FRINGE + CO trademark and tradename without any authority to do so, has deleted the symbol "+" in the mark and has added the word "store".

6.       Respondent has caused the disputed domain name to resolve to a website purporting to be that of the Complainant, duplicating in many respects the contents of Complainant's official website at www.fringe-co.com in which the Complainant has copyright.

7.       Respondent has held itself out as the Complainant.

8.       The Respondent has by that means infringed the Complainant's FRINGE + + CO trademark.

9.       The disputed domain name is confusingly similar to the Complainant's FRINGE + CO trademark. In particular, the Respondent has added to the FRINGE + CO  trademark the generic word "store" which is insufficient to negate a finding of confusing similarity between the domain name and the trademark  and which exacerbates that confusing similarity.

10.       Respondent has caused the disputed domain name to be used to sell goods identical to those of the Complainant.

11.       Respondent has no rights or legitimate interests in the domain name because Respondent is not authorized or licensed to sell Complainant's products or products that are identical to those of the Complainant. The Respondent is also not authorized or licensed to use the Complainant's trademark, is not commonly known by the domain name, is not using it to make a bona fide offering of goods or services and is not making a legitimate noncommercial or fair use of the disputed domain name.

12.       Respondent has registered and is using the domain name in bad faith as it has registered the domain name as a front to trade off the goodwill of the Complainant's business and defraud the Complainant's customers by deceiving them into believing that if they bought goods through the Respondent's website they would be buying goods identical to those of the Complainant.

13.       In doing so, the Respondent has copied advertisements and products from the Complainant's website. 

14.       Accordingly, the Complainant has established the elements required to be proved under the Policy and the disputed domain name should therefore be transferred to the Complainant.

 

B. Respondent

     Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1.       Complainant is a United States company that was incorporated in April 2018 and which is engaged in the provision of online retail services featuring clothing, apparel, hats, headgear, clothing, accessories and related goods and services.

2.       Complainant has rights in the common law trademark for FRINGE + CO ("the FRINGE + CO trademark") that were established as and from the year 2018.

3.       Respondent registered the <fringecostore.com> domain name ("the disputed domain name") on July 6, 2022.

4.       The disputed domain name is confusingly similar to the Complainant's FRINGE + CO trademark.

5.       The Respondent has no rights or legitimate interests in the disputed domain name.

6.       The Respondent has registered and used the disputed domain name in bad faith.

7.       The Complainant has established the elements required to be proved under the Policy and the disputed domain name should therefore be transferred to the Complainant.

 

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.

 

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").

 

Identical and/or Confusingly Similar

The first question that arises is whether the Complainant has rights in a

trademark or service mark on which it may rely in this proceeding. That is so because Policy ¶ 4 (a)(i) provides that the Complainant must show that the dispute domain name is "identical or confusingly similar to a trademark or service mark in which the complainant has rights."

 

It will be noticed that the Policy requires proof of a trademark and that it does not draw a distinction between a registered trademark on the one hand and an unregistered or common law trademark on the other. The Complainant does not claim that it has a registered trademark, but rather that it has an unregistered or common law trademark. The Panel notes that the Complainant applied for a registered trademark for FRINGE + CO with the United States Patent and Trademark Office (" USPTO") on September 13, 2023, claiming that it made a first use of the mark on November 11, 2018.

 

It is therefore an issue whether the Complainant "has" a trademark, which as the Panel understand it, is interpreted to mean that it had a trademark on the date when the Complainant was filed, namely on September 29, 2023.

 

To prove an unregistered or common law trademark, the Complainant will have to show that consumers associate the mark with the goods or services offered by the Complainant for sale. It is also generally recognized that whether such a conclusion can be reached in any given case will depend on whether the public actually see the mark as identifying those goods or services with the Complainant, for how long a period of time that situation can be said to have existed and whether it has been reached by such means as advertising or public recognition of the mark and of the Complainant's rights in it.

 

In the present case, the Complainant submits that its trademark is "FRINGE + CO". The Complainant then says that such a conclusion should be reached in the present case because of evidence that, in effect, falls into three categories.

 

The first category is said to be "advertising and brand awareness" on social media including Instagram, Facebook, Tik Tok and Klaviyo….". In that regard, the Complainant's authorized representative has certified that this information, like the other information provided in the Complaint, is "complete and accurate".

 

The second category of evidence is said to be set out in Annex A to the Complaint and to contain "a sample" of promotional articles attached in that Annex, including "Food + Wine and New York Magazine's 'The Strategist.'" Annex A certainly contains an issue of The Strategist dated June 7, 2023 which includes descriptions of a wide range of clothing and accessories from sunglasses to jewelry and cosmetics supplied by a wide range of producers. One of those items is described as "Fringe + Co The Rebel Rainbow Tinsel Fringe Jacket" and the Complainant is thus mentioned by name as being the provider of that item.

 

The extract from Food + Wine likewise reports on a wide range of items and their providers, one of which is the Complainant. The text of the extract states that:

 

"Fringe +Co. Former Senior Editor Margaret Eby turned me on to this oh-so -New Orleanian shop that specializes in sequins, velvet, iridescence, and absolutely zero chill. This Black and Gold Sequined Long Caftan is pictured in the top photo. fringe-co.com". The garment in question is illustrated with the caption "fringe + co Black and Gold Sequin Long Caftan."

 

The third category of evidence is Annex B to the Complaint taken from the Complainant's own website at <fringe-co.com>. This contains photographs of some twelve collections of clothing and details of the Complainant company that provides them, namely "fringe + co".

 

The Panel has examined all of this material in detail and has concluded that it establishes several facts. They are that:

 

(a)       the Complainant was incorporated in "April 2018", and that its name is the same as the name that is claimed to be its trademark;

(b)       it is clearly in business and produces goods and services that are sold to the public under that name;

(c)       it has registered and uses in its business a brand name to identify its goods and services which is the same as the claimed trademark;

(d)       it has registered a domain name, <fringe-co.com>, which is also the same as the mark and which it uses as its principal means of communicating with the public to promote its goods and services;

(e)       as a result of this use of the mark to communicate with the public, the public must have come to associate the same with the Complainant;

(f)       although the mark is made up from two generic words "fringe" and "co", their use by the Complainant has given them a secondary meaning when used together that identify the Complainant  and also associate it with the range of goods and services provided by the Complainant under the name FRINGE + CO.

 

It is clear therefore that FRINGE + CO is the mark of the Complainant's goods and services and that accordingly it "has" a trademark in which it has rights within the meaning of Policy ¶ 4(a)(i). It has therefore established that it has standing to bring the Complaint.

 

In that regard the Complainant has submitted and the Panel finds on the evidence that the Complainant acquired the trademark at least as and from November 2018 and that it has continued to own and use the trademark since that time.

 

The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant's FRINGE + CO trademark. The Complainant argues that the disputed domain name is confusingly similar to its FRINGE + CO  trademark because it consists of the mark itself,  the symbol "+" has been deleted and the word "store" and the gTLD ".com" have been added. The Panel agrees with the Complainant's submission in that regard because, under Policy ¶ 4(a)(i), the addition of a generic, descriptive or commonly used expression word to a trademark, such as the word "store", does not negate a confusing similarity which is otherwise present between the domain name thus created and the relevant trademark, as it is in the present case. Indeed, the addition of the word "store" implies that the domain name is referring to the trademark and its official and legitimate use for a store. Also, adding the generic Top Level Domain cannot negate the confusing similarity that is otherwise present between a domain name and a trademark, as it is in the present case. Taken as a whole, the domain name means and would be interpreted by internet users to mean that it is invoking the Complainant's FRINGE + CO mark and its use by the Complainant or by another party with the approval of the Complainant and that it is being used to invoke the Complainant's store.  In the present case, it is therefore clear that the domain name is similar to the trademark and confusingly so.

 

The Panel therefore finds that the Respondent's domain name is confusingly similar to Complainant's FRINGE + CO mark under Policy ¶ 4(a)(i).

 

The Complainant has thus made out the first of the three elements that it must establish.

 

Rights or Legitimate Interests

It is now well established that the 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) and that, if the prima facie case is made out, the burden then shifts to the Respondent to show that it does have such 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)).

 

The Panel finds on the evidence that Complainant has made out a prima facie case that arises from the following considerations:

 

(a) Respondent has chosen to take Complainant's FRINGE + CO  trademark and to use it in its domain name, adding only the word "store" , deleting the symbol "+" which cannot be included in a domain name and adding the gTLD ".com", none of which negates the confusing similarity between the domain name and the mark, generating the clear impression that it is referring to and invoking the FRINGE + CO trademark for its own purposes and that it is authorized to do so.

(b) Respondent registered the disputed domain name on July 6, 2022, which it had no right to do and no legitimate interest in doing so.

(c) The evidence shows that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. Indeed, the opposite is the case, as the evidence shows that the Respondent is using the domain name to resolve to a website where it pretends to be the Complainant and purports to sell the Complainant's branded goods by name. This is shown clearly by the evidentiary material prepared by the Complainant and annexed to the Complaint which shows brazen plagiarism by the Respondent of the Complainant's promotion of its own products, with direct copying of material over which the Complainant clearly has copyright. See, in that regard, Complainant's Annexes C, D, E, F and G to the Complaint which show conclusively that the Respondent is using the domain name to promote goods identical to those of the Complainant and that it is doing so by copying the Complainant's text and by using the Complainant's own models to promote the goods.

(d) The evidence shows that the Respondent is using the domain name for a website designed to hold itself out falsely and to pass itself off as the Complainant and to promote the Complainant's goods and services as its own and for commercial purposes. Such conduct cannot be bona fide in any way.

(e) The evidence shows that there is no relationship between the Complainant and the Respondent and that the Complainant has not authorized the Respondent to register the domain name or to use the FRINGE + CO trademark in any way.

(f) Nor can the Respondent's use of the domain name be said to be non-commercial in any sense as it is clearly intended to be used by the Respondent to make money, which is commercial in every way.

(g) Among other conclusions, the evidence also shows that the Respondent is not commonly known by the disputed domain name nor has Complainant authorized or licensed Respondent to use its mark in the disputed domain name or in any other way.

(h) The evidence shows that the Respondent has created and used the domain name for unlawful purposes to defraud potential customers.

(i) Respondent has engaged in the foregoing conduct without the consent or approval of Complainant.

(j) The Respondent had an opportunity to show circumstances to the contrary of the above conclusions if they were justified but it has not done so.

 

All of these matters go to make out the prima facie case against Respondent.

As Respondent has not filed a 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 name.

 

Complainant has thus made out the second of the three elements that it must establish.

 

Registration and Use in Bad Faith

It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and that it has 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 general grounds of bad faith as well as the specific grounds articulated in the Policy.

 

Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.

 

First, the circumstances in the present case all show that the Respondent has been engaged in both the improper registration and use of the disputed domain name in bad faith.

 

Secondly, the Complainant submitted and the Panel finds on the evidence that the Complainant has established that it has owned the FRINGE + CO trademark as and from at least November 2018, well before the Respondent registered the disputed domain name.

 

Thirdly, the Complainant has submitted very persuasive evidence showing screenshots from the website operated by the Respondent at the Disputed Domain Name, showing that it is being used to sell goods identical to those of the Complainant and which are shown on the Complainant's own official website promoting its products. The clear intention of this material put up on the Respondent's website was to give the false impression that this website is the website of the Complainant or that it is there with the approval of the Complainant and that the Respondent is entitled to promote the Complainant's trademarked goods for sale. The Complainant is therefore correct in submitting that the Respondent's website is a front to trade off the Complainant's goodwill and to defraud the Complainant's potential customers. Its effect must be to deceive potential customers and the community in general which it has done.

 

Fourthly, the foregoing evidence and the whole modus operandi of the Respondent also proves the specific grounds relied on by the Complainant and the Panel so finds. Thus, the Complainant has proved that the Respondent has engaged in conduct designed to disrupt the Complainant's business operations within the meaning of Policy ¶ 4(b)(iii) and that the Respondent created by its conduct a likelihood of confusion with the FRINGE + CO trademark as to the contents of its website within the meaning of Policy ¶ 4(b) (iv).

 

Fifthly, in addition to the specific provisions of the Policy and having regard to the totality of the evidence, the Panel finds that, in view of the Respondent's registration of the disputed domain name using the FRINGE + CO trademark and in view of the conduct that the Respondent has engaged in when using the domain name, the Respondent registered and used it in bad faith within the generally accepted meaning of that expression.

 

Complainant has thus made out the third of the three elements that it must establish.

 

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 <fringecostore.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

The Honorable Neil Anthony Brown KC

Panelist

Dated: October 26, 2023