DECISION

 

Alex Mill Company, LLC v. Registration Private

Claim Number: FA2402002082246

 

PARTIES

Complainant is Alex Mill Company, LLC ("Complainant"), represented by Afschineh Latifi of Tucker & Latifi, LLP, New York, USA. Respondent is Registration Private ("Respondent"), Arizona, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <shopalexmill.us>, registered with NameCheap, Inc.

 

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.

 

Steven M. Levy, Esq. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on February 2, 2024; Forum received payment on February 2, 2024.

 

On February 3, 2024, NameCheap, Inc. confirmed by e-mail to Forum that the <shopalexmill.us> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce's usTLD Dispute Resolution Policy (the "Policy").

 

On February 7, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 27, 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@shopalexmill.us. Also on February 7, 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 28, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Steven M. Levy, 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 to the usTLD Dispute Resolution Policy ("Rules"). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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

Established in 2012, Complainant creates and sells high quality stylish men's and women's clothing, accessories, footwear, and jewelry. It operates its business under the trademark ALEX MILL which is registered in over 30 countries (e.g., United States Patent and Trademark Office (USPTO) Reg. No. 4471786 registered on January 12, 2014). These products and services are promoted and sold online through Complainant's www.alexmill.com website. The disputed <shopalexmill.us> domain name was registered on December 30, 2023 and is confusingly similar to Complainant's mark adding only the generic word "shop" and the ".us" TLD.

 

Respondent has no rights or legitimate interests in the disputed domain name as it is not commonly known thereby and it uses the domain name to host an online store that gives the appearance of being affiliated with Complainant by copying content from Complainant's own site and offering the same products, which are believed to be counterfeit.

 

The disputed domain name was registered and is used in bad faith based on the above-mentioned activity which seeks commercial gain based on confusion with Complainant's mark.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

-       Complainant owns trademark rights to the ALEX MILL mark and the <shopalexmill.us> domain name is confusingly similar to such mark;

-       Respondent does not have rights or legitimate interests in the disputed domain name where it is used to copy Complainant's own website and perhaps sell counterfeit goods and there is no evidence that Respondent has any relevant trademark rights or that it is commonly known by the domain name; and

-       The disputed domain name was registered and is used in bad faith where its website passes itself off as that of 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 or is being used in bad faith.

 

Given the similarity between the Uniform Domain Name Dispute Resolution Policy ("UDRP") and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

 

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 ALEX MILL mark based on registration of the mark with the USPTO. Registration of a mark with the USPTO is a valid showing of rights in a mark. See Margaritaville Enterprises, LLC v. Neil Wein, FA 1916531 (Forum Nov. 9, 2020) ("It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights"). Complainant provides copies of three of its USPTO registration certificates for the ALEX MILL mark. Thus, the Panel finds that Complainant has rights in its asserted mark under Policy ¶ 4(a)(i).

 

Next, Complainant argues that Respondent's <shopalexmill.us> domain name is confusingly similar to Complainant's ALEX MILL mark because it fully incorporates the mark and adds the descriptive preceding term "shop" as well as the ".us" TLD. The addition of generic or descriptive terms to a mark typically does not negate any confusing similarity between a disputed domain name and a mark under Policy ¶ 4(a)(i) – particularly where such word directly bears on the business conducted under the mark in which case it may actually enhance confusion. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) ("Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element."); see also Vance Int'l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (finding that by adding the term "security" to the complainant's VANCE mark, which described the complainant's business, the respondent "very significantly increased" the likelihood of confusion with the complainant's mark). Thus, the Panel finds that the <shopalexmill.us> domain name is confusingly similar to the ALEX MILL mark under 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). Should it succeed in this effort, the burden then shifts to Respondent to show that 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").

 

Complainant makes no mention of usTLD ¶ 4(c)(i) which states that rights or legitimate interests may be found where a respondent is "the owner or beneficiary of a trade or service mark that is identical to the domain name." Nevertheless, the Panel will consider this issue for the sake of completeness. See Pepsico, Inc. v. Becky, FA 117014 (Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)). The Panel has reviewed the USPTO database and found no evidence that anyone other than Complainant owns any trademark rights to the ALEX MILL mark¹ and there is no other evidence of record relevant to Policy ¶ 4(c)(i). As such, the Panel cannot conclude that Respondent has any rights or legitimate interests in the disputed domain name under this clause.

 

However, Complainant does contend that Respondent lacks rights or legitimate interests in the <shopalexmill.us> domain name since Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed to Respondent any rights in the ALEX MILL mark. WHOIS information is often referenced when considering whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(iii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). 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 Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) ("lack of evidence in the record to indicate a respondent is authorized to use [the] complainant's mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per [UDRP] Policy ¶ 4(c)(ii)"). The WHOIS information for the disputed domain name, as verified to Forum by the concerned Registrar, only lists the registrant as "Registration Private / DomainsByProxy.com" and there is no evidence to otherwise identify Respondent or indicate that it is authorized to use the ALEX MILL mark. Therefore, the Panel finds no ground upon which to conclude that Respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(iii).

 

Next, the Complaint notes that the disputed domain name resolves to a website that copies content from Complainant's own site and thus seeks to pass itself off as a legitimate outlet for Complainant's products. Prior decisions have held that passing oneself off as a complainant and diverting users to a respondent's webpage, is neither a bona fide offering of goods or services under Policy ¶ 4(c)(ii) nor is it a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). See Guess? IP Holder L.P. and Guess?, Inc. v. Kathrin Gerste / Martin Engel / Ulrike Schreiner / Juliane Scherer / Barbara Blau, FA 2080822 (Forum Feb. 23, 2024) ("Respondent's website purports to offer counterfeit clothing, apparel, and accessories for sale, while displaying Complainant's trademark and copyrighted images owned by Complainant. Respondent's use of the at-issue domain names to pass off in this manner constitutes neither a bona fide offering of goods or services under [UDRP] Policy ¶4(c)(i), nor a non-commercial or fair use pursuant to [UDRP] Policy ¶4(c)(iii).") Here, Complainant provides screenshots of the resolving <shopalexmill.us> website which prominently displays the ALEX MILL mark and graphic logo as well as photographs, video, and test which are identical to those displayed on Complainant's own www.alexmill.com website, screenshots of which have also been provided. It claims that Respondent uses the disputed domain name to impersonate Complainant and "is essentially offering substantially the same or similar products which are believed to be counterfeit..." The Panel has reviewed the submitted screenshots and notes that Respondent's website appears to be a nearly exact copy of Complainant's own site. From this evidence, the Panel finds support for the conclusion that Respondent is misleading consumers by passing itself off as Complainant and perhaps offering counterfeit products as claimed by Complainant. Respondent has not filed a Response or made any other submission in this case and so it provides no explanation for its activities. Thus, the Panel finds that Complainant has made a prima facie case which has not been rebutted by Respondent and that there is no evidence that Respondent is using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or that it is making a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iv).

 

Considering all of the above, the Panel finds, by a preponderance of the presented evidence, that Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).

 

Registration or Use in Bad Faith

Although not addressed in the Complaint, a foundational question under ¶ 4(a)(iii) is whether or not Respondent had knowledge of Complainant's rights in its ALEX MILL mark at the time it registered the <shopalexmill.us> domain name. Some attribution of knowledge of a complainant's trademark, whether actual, constructive, or based upon a conclusion that a respondent should have known of the mark, is inherently prerequisite to a finding of bad faith under the Policy. See Domain Name Arbitration, 4.02-C (Gerald M. Levine, Legal Corner Press, 2nd ed. 2019) ("Knowledge and Targeting Are Prerequisites to Finding Bad Faith Registration"); USA Video Interactive Corporation v. B.G. Enterprises, D2000-1052 (WIPO Dec. 13, 2000) (claim denied where "Respondent registered and used the domain name without knowledge of Complainant for a bona fide commercial purpose.") Complainant provides little evidence of the reputation of its mark apart from the marketing effort shown by a few screenshots from its www.alexmill.com website². However, Respondent's use of the <shopalexmill.us> domain name to impersonate Complainant and possibly sell counterfeit products makes it highly likely that Respondent was aware of Complainant's mark at the time it registered the disputed domain name. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) ("the Panel here finds actual knowledge through the name used for the domain and the use made of it.")

 

Next, Complainant argues that Respondent registered and uses the <shopalexmill.us> domain name in bad faith because Respondent passes itself off as Complainant by confusing and deceiving consumers into thinking that they are dealing with a website that originates with a genuine source for Complainant's products. Such conduct is indicative of bad faith per Policy ¶ 4(b)(iv). See Tesla Inc. v. Ultimate / Jonathan Littlewood, FA 2052426 (Forum Aug. 2, 2023) (finding bad faith where "Respondent has attempted to commercially gain or otherwise benefit by fraudulently impersonating Complainant to entice shoppers to purchase on Respondent's website."); Jarrow Formulas, Inc. v. Boyan Kabakov / Triping EOOD, FA 2080725 (Forum Feb. 15, 2024) (bad faith found where Respondent's website "uses the Complainant's mark and logo as a masthead and the Complainant's copyright materials…"). Complainant asserts that the products displayed by the Respondent are identical in nature to the apparel and accessory items sold by Complainant and the Panel again references the submitted screenshots which show Respondent's use of website content that has been copied almost whole cloth from Complainant's own website, and the offering for sale of products that are identical to those offered by Complainant under the ALEX MILL mark. The evidence presented gives the clear impression that Respondent's website originates with Complainant and is improperly seeking commercial gain based on confusion with its mark. It is thus targeting the mark and seeking to compete with Complainant. For its part, Respondent has not participated in these proceedings and so has not offered a plausible explanation for its actions. As such, the Panel finds firm ground upon which to conclude that Respondent both registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv) and thus under ¶ 4(a)(iii).

 

DECISION

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

 

Accordingly, it is Ordered that the <shopalexmill.us> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Steven M. Levy, Esq., Panelist

Dated: March 1, 2024