DECISION

 

ABG Hunter, LLC v. Zhang Qiang

Claim Number: FA2401002081209

PARTIES

Complainant is ABG Hunter, LLC ("Complainant"), represented by Bridgette Fitzpatrick of Authentic Brands Group LLC, New York, USA. Respondent is Zhang Qiang ("Respondent"), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <huntergreece.com>, registered with Paknic (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.

 

Ho-Hyun Nahm, Esq. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 29, 2024; Forum received payment on January 29, 2024.

 

On January 29, 2024, Paknic (Private) Limited confirmed by e-mail to Forum that the <huntergreece.com> domain name is registered with Paknic (Private) Limited and that Respondent is the current registrant of the name. Paknic (Private) Limited has verified that Respondent is bound by the Paknic (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 January 29, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 20, 2024 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@huntergreece.com. Also on January 29, 2024, 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 February 21, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. 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

i) Complainant, is a progressive British heritage brand renowned for its iconic original Wellington boot. The globally recognized Wellington boot was first introduced in 1956. For more than 165 years, Complainant has built on its heritage, expanding its footwear collection to introduce outerwear, bags, and accessories. Complainant has rights in the HUNTER and different variations of the Hunter logo around the world, inter alia, through its registration of the mark HUNTER with the European Union Intellectual Property Office ("EUIPO") (e.g., Reg. No. 0945795 registered November 7, 2007). The disputed domain name is confusingly similar to Complainant's mark because it incorporates the HUNTER mark in its entirety and adds a geographic term and the ".com" generic top-level domain ("gTLD").

 

ii) Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its HUNTER mark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use, but instead passes off as Complainant while offering competing and unauthorized goods for sale.

 

iii) Respondent registered and uses the disputed domain name in bad faith. Respondent disrupts Complainant's business and sells competing and unauthorized goods while attracting users for commercial gain. Furthermore, Respondent was well aware of Complainant's rights in the HUNTER mark at the time of registering the disputed domain name.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

1. The disputed domain name was registered on May 17, 2023.

 

2. Complainant has established rights in the HUNTER mark through its registration of the mark with the EUIPO (e.g., Reg. No. 0945795 registered November 7, 2007).

 

3. The disputed domain name's resolving website mimics Complainant's website and offers competing and unauthorized goods for sale while displaying Complainant's mark, products, and images.

 

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 asserts rights in the HUNTER mark through its registration of the mark with the EUIPO (e.g., Reg. No. 0945795 registered November 7, 2007). Registration of a mark with the EUIPO is generally sufficient in establishing rights in the mark. Since Complainant has provided evidence of trademark registration with the EUIPO, the Panel finds Complainant has established rights in the mark under Policy ¶ 4(a)(i).

 

Complainant argues the disputed domain name <huntergreece.com> is confusingly similar to Complainant's HUNTER mark as it contains the HUNTER mark in its entirety and merely adds a geographic term "Greece" and the ".com" gTLD. The addition of a geographic phrase and a gTLD fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Dell Inc. v. SNAB Corporation, FA 1785051 (Forum May 30, 2018) (finding the inclusion of a geographic term did not distinguish the domain name and increased possible confusion, as "[t]he geographic term "hyderabad" is also suggestive of Complainant as Complainant has corporate offices in Hyderabad, India."); see also 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 contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant's mark per Policy ¶ 4(a)(i).

 

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 at-issue domain names and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests.").

 

Complainant asserts Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its HUNTER mark in the disputed domain name. Under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name. See M. Shanken Commc'ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). Additionally, lack of authorization to use a complainant's mark may indicate that the respondent is not commonly known by the disputed domain name. See PragmaticPlay Limited v. Robert Chris, FA 1932464 (Forum Mar. 23, 2021) ("The WHOIS information of record lists the registrant as "Robert Chris," and no other information of record suggests Respondent is commonly known by the domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy  ¶ 4(c)(ii)."). The WHOIS information identifies Respondent as "Zhang Qiang". Thus, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).

 

Complainant further contends Respondent is not using the disputed domain name for any bona fide offering of goods or services, nor any noncommercial or fair use. Complainant provides a screenshot of the resolving website, which mimics Complainant's website and offers competing and unauthorized goods for sale while displaying Complainant's mark, products, and images. Under Policy ¶¶ 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 hipChain, Inc. v. 谢东东 / 谢东东, FA 1785189 (Forum June 21, 2018) ("The resolving webpages between Complainant's and Respondent's websites are virtually the same. Respondent's use of the disputed domain name does not confer rights and legitimate interests under Policy ¶¶4(c)(i) and (iii)."); see also Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Forum Apr. 12, 2002) ("Respondent's use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant's [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i)."). The Panel therefore finds Respondent is not using the disputed domain name for any bona fide offering of goods or services, nor any noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).

 

The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. 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 has no rights or legitimate interests in the disputed domain name.

 

Registration and Use in Bad Faith

Complainant argues Respondent registered and uses the disputed domain name in bad faith by disrupting Complainant's business and attracting users for commercial gain while offering competing and unauthorized goods for sale. Under Policy ¶¶ 4(b)(iii) and (iv), offering competing and unauthorized goods for sale in disruption of a complainant's business while attracting users for commercial gain is evidence of bad faith registration and use. See HUNTER? IP Holding L.P. and HUNTER?, Inc. v. Linan / linanbangongshi and hu sugor / sugorguoguo, FA 1587466 (Forum Dec. 13, 2014) ("The Panel finds that Respondent's use of the disputed domain names to compete with Complainant by offering counterfeit products and thereby misdirecting Internet users constitutes disruption to Complainant's business which demonstrates bad faith registration and use under Policy ¶ 4(b)(iii)."); see also Affliction, Inc. v. Chinasupply, FA 1223521 (Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain and thus demonstrating bad faith per Policy ¶ 4(b)(iv) by creating confusion as to the complainant's connection with the website by selling counterfeit products). The Panel recalls that the disputed domain name's resolving website mimics Complainant's website and offers competing and unauthorized goods for sale while displaying Complainant's mark, products, and images. Thus, the Panel finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).

 

Furthermore, Complainant argues Respondent was well aware of Complainant's rights in the HUNTER mark at the time of registering the disputed domain name given the fame of Complainant's mark. While constructive notice is not sufficient to support a bad faith finding, actual knowledge may constitute a bad faith registration. The Panel infers, due to the notoriety of Complainant's mark and the manner of use of the disputed domain name that Respondent had knowledge of Complainant's rights in the HUNTER mark at the time of registering the disputed domain name, and finds that Respondent registered the disputed domain in bad faith under Policy ¶ 4(a)(iii).

 

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

 

 

Ho-Hyun Nahm, Esq., Panelist

Dated: February 21, 2024