DECISION

 

No Ordinary Designer Label Limited t/a Ted Baker v. Client Care / Web Commerce Communications Limited

Claim Number: FA2402002082372

 

PARTIES

Complainant is No Ordinary Designer Label Limited t/a Ted Baker ("Complainant"), represented by Bridgette Fitzpatrick of Authentic Brands Group LLC, New York, USA. Respondent is Client Care / Web Commerce Communications Limited ("Respondent"), Malaysia.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <tedbakeroutletonline.com>, <tedbaker-saleuk.com> and <tedbakerlondonusa.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.

 

Ho-Hyun Nahm, Esq. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on February 5, 2024; Forum received payment on February 5, 2024.

 

On February 5, 2024, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED confirmed by e-mail to Forum that the <tedbakeroutletonline.com>, <tedbaker-saleuk.com> and <tedbakerlondonusa.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 February 6, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 26, 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@tedbakeroutletonline.com, postmaster@tedbaker-saleuk.com  and postmaster@tedbakerlondonusa.com. Also on February 6, 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 27, 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 names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

i) Complainant is one of the world's leading manufacturers of apparel, accessories, footwear, homeware and beauty, and has promoted and distributed such worldwide under its well-known and famous TED BAKER trademark. The TED BAKER mark is supported by a global portfolio of more than 500 trademarks. Complainant has rights in the TED BAKER mark, inter alia, through its registration of the mark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,644,551, registered on October 29, 2002). The disputed domain names  are confusingly similar to Complainant's TED BAKER mark as they incorporate the mark in its entirety while adding descriptive and/or geographic terms and the ".com" generic top-level domain ("gTLD").

 

ii) Respondent lacks rights and legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names, nor has Complainant authorized or licensed Respondent to use its TED BAKER mark in the disputed domain names. Respondent does not use the disputed domain names 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.

 

iii) Respondent registered and uses the disputed domain names in bad faith. Respondent disrupts Complainant's business and sells competing and unauthorized goods while attracting users for commercial gain. Furthermore, Respondent registered the disputed domain names with knowledge of Complainant's rights in the TED BAKER mark.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

1. The disputed domain names were registered on November 1, 2023.

 

2. Complainant has established rights in the TED BAKER mark, inter alia, through its registration of the mark with the USPTO (e.g., Reg. No. 2,644,551, registered on October 29, 2002).

 

3. The disputed domain names' resolving websites mimic Complainant's website and offer competing and unauthorized goods 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 TED BAKER mark through its registration of the mark with the USPTO (e.g., Reg. No. 2,644,551, registered on October 29, 2002). Registration of a mark with the USPTO is generally sufficient in establishing rights in the mark. Since Complainant has provided evidence of trademark registration with the USPTO, the Panel finds Complainant has established rights in the mark under Policy ¶ 4(a)(i).

 

Complainant argues the disputed domain names <tedbakeroutletonline.com>, <tedbaker-saleuk.com> and <tedbakerlondonusa.com> are confusingly similar to Complainant's TED BAKER mark. Under Policy ¶ 4(a)(i), adding a descriptive and/or a geographic term along with the ".com" gTLD is insufficient in differentiating from the mark. See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) ("[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i)."); see also Franklin Covey Co. v. franklincoveykorea, FA 1774660 (Forum Apr. 11, 2018) (finding that the <franklincoveykorea.com> domain name is confusingly similar to the FRANKLIN COVEY mark, as "[t]he addition of a geographic term and a gTLD do not negate confusing similarity between a domain name and a mark per Policy ¶ 4(a)(i)."). The Panel notes that all of the three disputed domain names incorporate Complainant's mark TED BAKER where the domain name <tedbakeroutletonline.com> adds the descriptive terms "outlet online"; the domain name <tedbaker-saleuk.com> adds a dash, the descriptive term "sale," and the geographic identifier "UK"; and the domain name <tedbakerlondonusa.com> adds the geographic identifier "London" and the geographic identifier "USA." Therefore, the Panel finds the disputed domain names are confusingly similar to Complainant's TED BAKER 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), 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.").

 

Complainant asserts Respondent is not commonly known by the disputed domain names, nor has Complainant authorized or licensed Respondent to use its TED BAKER mark in the disputed domain names. 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 "Client Care / Web Commerce Communications Limited." Thus, the Panel finds Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).

 

Complainant further contends Respondent is not using the disputed domain names for any bona fide offering of goods or services, nor any noncommercial or fair use. Complainant provides screenshots of the resolving webpages, which mimic Complainant's website and offer competing and unauthorized goods 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 names 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 names.

 

Registration and Use in Bad Faith

Complainant argues Respondent registered and uses the disputed domain names 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 items in disruption of a complainant's business while attracting users for commercial gain is evidence of bad faith registration and use. See TED BAKER? IP Holding L.P. and TED BAKER?, 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 names' resolving websites mimic Complainant's website and offer competing and unauthorized goods while displaying Complainant's mark, products, and images. Therefore, the Panel finds Respondent registered and uses the disputed domain names in bad faith under Policy ¶¶ 4(b)(iii) and (iv).

 

Complainant further argues that Respondent registered the disputed domain names with knowledge of Complainant's rights in the TED BAKER mark. While constructive notice is not sufficient to support a bad faith finding, actual knowledge may constitute a bad faith registration. Complainant contends Respondent had knowledge of Complainant's rights in the mark given the longstanding use of Complainant's mark. The Panel infers, due to the notoriety of Complainant's mark and the manner of use of the disputed domain names that Respondent had knowledge of Complainant's rights in the TED BAKER mark at the time of registering the disputed domain names, and finds that Respondent registered the disputed domains 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 <tedbakeroutletonline.com>, <tedbaker-saleuk.com> and <tedbakerlondonusa.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Ho-Hyun Nahm, Esq., Panelist

Dated: February 28, 2024