DECISION

 

HBI Branded Apparel Enterprises, LLC and Hanesbrands, Inc. v. Client Care / Web Commerce Communications Limited

Claim Number: FA2311002070279

 

PARTIES

Complainant is HBI Branded Apparel Enterprises, LLC and Hanesbrands, Inc. ("Complainant"), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Client Care / Web Commerce Communications Limited ("Respondent"), Malaysia.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <championbogota.com>, <championcanadawebsite.com>, <championcanadawebsites.com>, <championclchile.com>, <championcolombiaoutlet.com>, <championportugal.com>, <championschile.com> and <championturkiyetr.com>, registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED.

 

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.

 

 Hon. Karl v. Fink (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on November 8, 2023; Forum received payment on November 8, 2023.

 

On November 9, 2023, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED confirmed by e-mail to Forum that the <championbogota.com>, <championcanadawebsite.com>, <championcanadawebsites.com>, <championclchile.com>, <championcolombiaoutlet.com>, <championportugal.com>, <championschile.com> and <championturkiyetr.com> 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 November 14, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 4, 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@championbogota.com, postmaster@championcanadawebsite.com, postmaster@championcanadawebsites.com, postmaster@championclchile.com, postmaster@championcolombiaoutlet.com, postmaster@championportugal.com, postmaster@championschile.com, and postmaster@championturkiyetr.com. Also on November 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 December 5, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Hon. Karl V. Fink (Ret.) 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 names be transferred from Respondent to Complainant.

 

PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS

UDRP Rule 3(a) and Forum's Supplemental Rule 1(e) govern situations involving multiple complainants. UDRP Rule 3(a) states, "Any person or entity may initiate an administrative proceeding by submitting a complaint."  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."

 

The Complainants in this matter are HBI Branded Apparel Enterprises, LLC and Hanesbrands, Inc. Complainant requests that the multiple complainants be treated as a single entity. Respondent did not file a response and has not objected to this request.

 

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 BFD, Inc. and Barefoot Dreams, Inc. v. kanggeng sheng, FA 1997581 (Forum July 6, 2022) ("There are two Complainants in this matter: BFD, Inc. and Barefoot Dreams, Inc. BFD, Inc. is the owner of the primary mark BFD that is the subject of this complaint, and has exclusively licensed Barefoot Dreams, Inc. to make and sell products under the BFD mark, which it does…. The Panel finds that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, and thus it will treat them as a single entity in this proceeding."); see also ITT Inc. and ITT Manufacturing Enterprises, LLC v. Thomas Romero, FA 1961339 (Forum Sept. 29, 2021) ("It has been accepted 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 finds that the evidence establishes sufficient nexus or link between the Complainants, and it will treat Complainants as a single entity for this proceeding. They are referred to collectively as Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant is the world's largest marketer of basic apparel such as T-shirts, socks, sweatshirts, fleece, other activewear, and innerwear under some of the world's most well-known apparel brands, such as Hanes, Champion, Maidenform, Playtex, and Wonderbra.

 

Respondent's <<championbogota.com>, <championcanadawebsite.com>, <championcanadawebsites.com>, <championclchile.com>, <championcolombiaoutlet.com>, <championportugal.com>, <championschile.com> and <championturkiyetr.com> domain names are identical or confusingly similar to Complainant's CHAMPION mark. The Disputed Domain Names include the entire CHAMPION Mark, with only the addition of descriptive, generic and/or geographic terms, and the gTLD ".com".

 

Respondent lacks rights or legitimate interests in the <<championbogota.com>, <championcanadawebsite.com>, <championcanadawebsites.com>, <championclchile.com>, <championcolombiaoutlet.com>, <championportugal.com>, <championschile.com> and <championturkiyetr.com> domain names registered decades after Complainant acquired trademark rights in the CHAMPION marks. Respondent is not commonly known by the disputed domain names, nor has Respondent been authorized by Complainant to use the CHAMPION mark. Respondent has not used the disputed domain names in connection with a bona fide offering of goods or services.

 

Respondent registered and uses the <<championbogota.com>, <championcanadawebsite.com>, <championcanadawebsites.com>, <championclchile.com>, <championcolombiaoutlet.com>, <championportugal.com>, <championschile.com> and <championturkiyetr.com> domain names in bad faith. Respondent has intentionally attempted to attract internet users to Respondent's websites by creating a likelihood of confusion with Complainant's CHAMPION Mark as to the source, affiliation, or endorsement of Respondent's website.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

For the reasons set forth below, based upon the uncontested allegations and evidence, the Panel finds that Complainant is entitled to the requested relief of transfer of the <championbogota.com>, <championcanadawebsite.com>, <championcanadawebsites.com>, <championclchile.com>, <championcolombiaoutlet.com>, <championportugal.com>, <championschile.com> and <championturkiyetr.com> domain names.

 

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

Complainant argues that its registration of the CHAMPION mark with the USPTO (e.g. Reg. 5096680 registered December 6, 2016) establishes Complainant's rights to the mark, as "the registration of a mark with a legitimate governmental authority is sufficient under the Policy to allow a rebuttable presumption of rights in the mark." See Target Brands, Inc. v. JK Internet Services, FA 349108 (Forum Dec. 14, 2004). The Panel finds that Complaint has rights in the mark under Policy ¶ 4(a)(i).

 

The disputed domain names include the entire CHAMPION mark, with only the addition of descriptive, generic and/or geographic terms, and the gTLD ".com". See Guess? IP Holder L.P. and Guess?, Inc. v. Client Care / Web Commerce Comm's Ltd. / Ralph Gerste, FA 2042399 (Forum June 1, 2023) ("The disputed domain names each incorporate Complainant's GUESS mark in its entirety and merely add a geographic ('USA' or 'US' or 'Canada') or generic ('outlet') term and the '.com' generic top-level domain ('gTLD'). The addition of a gTLD and a geographic or generic term fails sufficiently to distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i).").

 

Because the disputed domain names include the entirety of the CHAMPION mark with only the addition of descriptive, generic and/or geographic terms, and the gTLD ".com", the disputed domain names are confusingly similar to Complainant's Mark.

 

Complainant has proved this element.

 

Rights or Legitimate Interests

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), then the burden shifts to Respondent to show it does have 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)); see also 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."). The Panel finds that Complainant has made a prima facie case.

 

The primary factors the Panel considers when evaluating whether a Respondent has rights or legitimate interests in a disputed domain name are: (1) whether the Respondent previously used the domain name in connection with bona fide offering of goods or services; (2) whether the Respondent has been commonly known by the domain name; and (3) whether the Respondent is making a legitimate noncommercial or fair use of the domain name. See Policy ¶ 4(c).  None of these factors are present in this matter.

 

Complainant argues that Respondent cannot demonstrate or establish rights or legitimate interests in the disputed domain names. There is no relationship between Complainant and Respondent giving rise to any license, permission, or other right by which Respondent could own or use any domain name incorporating Complainant's CHAMPION Mark. See, e.g., Dr. Ing. h.c. F. Porsche AG v. Ron Anderson, D2004-0312 (WIPO July 2, 2004) ("neither the Respondent nor Mr. Ozkutuk can claim a legitimate right or interest in the disputed domain name … [because use of it] was at no point licensed or approved by the Complainant").

 

 Complaint also argues that Respondent has never been given permission by Complainant to use Complainant's CHAMPION Mark for any purpose. Nothing in Respondent's Whois information or the record demonstrates that Respondent is commonly known by the disputed domain names. See, e.g., AutoZone Parts, Inc. v. Bin G Glu / G Design, FA 1822466 (Forum Jan. 27, 2019) ("WHOIS information can support a finding that the Respondent is not commonly known by the disputed domain name").

 

Complaint also argues that Respondent uses the disputed domain names to pass itself off as Complainant for commercial gain and Respondent uses the websites at the disputed domain names to impersonate Complainant. Complainant argues that Respondent uses Complainant's CHAMPION Mark and copyrighted images, as part of a fraud and/or phishing scheme, by allowing users to enter personal and financial information and attempt to place orders for CHAMPION products, despite Respondent not being authorized to sell such products. Using a disputed domain name to pass oneself off as another is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Nokia Corporation v. John Eagle, FA 1125685 (Forum Feb. 7, 2008) (finding the Respondent's use of the disputed domain name to pass itself off as the Complainant in order to advertise and sell unauthorized products of the Complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)). The Panel finds that Respondent has no legitimate rights or interests in respect of the disputed domain names.

 

Complainant has proved this element.

 

Registration and Use in Bad Faith

Complainant argues that Respondent has registered and is using the disputed domain names in bad faith for commercial gain and to benefit from the goodwill and reputation associated with Complainant's CHAMPION Mark, claiming that Respondent's bad-faith registration and use of the disputed domain names are established by the fact that the disputed domain names incorporate Complainant's entire CHAMPION mark, with only the addition of generic and/or geographic terms, and the fact that the disputed domain names were registered years after Complainant's CHAMPION mark was registered.

 

Complainant further argues that Respondent's bad-faith registration and use of the disputed domain names is also evidenced by the fact that Respondent has intentionally attempted to attract Internet users to Respondent's websites by creating a likelihood of confusion with Complainant's CHAMPION mark as to the source, affiliation, or endorsement of Respondent's websites. After seeing the CHAMPION mark in the disputed domain names, with the addition of geographic terms or phrases, consumers will initially be confused as to the websites' association with or sponsorship by Complainant, particularly where the content of the website imitates Complainant's website. This is evidence that that Respondent registered and uses the disputed domain names in bad faith.

 

Complainant also argues that Respondent's reproduction and display of Complainant's logo shows that Respondent knew of Complainant and its rights prior to registering and using the disputed domain names. See Fossil Group, Inc. v. wuruima wu, FA 1544486 (Forum Mar. 21, 2014). ("Registering and using a confusingly similar domain with knowledge of Complainant's rights in such domain name indicates bad faith registration and use of the domain name pursuant to Policy ¶ 4(a)(iii)."). The Panel finds that Respondent had actual knowledge of Complainant's rights in the mark and registered and uses the disputed domain names in bad faith.

 

Complainant has proved this element.

 

DECISION

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 <<championbogota.com>, <championcanadawebsite.com>, <championcanadawebsites.com>, <championclchile.com>, <championcolombiaoutlet.com>, <championportugal.com>, <championschile.com> and <championturkiyetr.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Hon. Karl V. Fink (Ret.) Panelist

December 15, 2023