DECISION

 

Nautica Apparel, Inc. v. Web Commerce Communications Limited / Client Care

Claim Number: FA2402002084211

 

PARTIES

Complainant is Nautica Apparel, Inc. ("Complainant"), represented by Bridgette Fitzpatrick of Authentic Brands Group LLC, New York, USA. Respondent is Web Commerce Communications Limited / Client Care ("Respondent"), Malaysia.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <tiendanauticachile.com> and <tiendanauticamexico.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.

 

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on February 16, 2024; Forum received payment on February 16, 2024.

 

On February 19, 2024, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED confirmed by e-mail to Forum that the <tiendanauticachile.com> and <tiendanauticamexico.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 20, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 11, 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@tiendanauticachile.com and postmaster@tiendanauticamexico.com. Also on February 20, 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 March 12, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed the Honorable Charles K. McCotter, Jr. (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.

 

PARTIES' CONTENTIONS

A. Complainant

Nautica Apparel, Inc. ("Complainant") is the owner of the globally NAUTICA brand, a globally famous lifestyle. Since established in 1983, the NAUTICA brand has been used in connection with a wide variety of branded goods and services, including clothing, accessories, and home goods, which are now sold in over 200 NAUTICA stores and select department stores in over 65 countries, and on the NAUTICA website, <nautica.com>. The NAUTICA brand is supported by a large portfolio of intellectual property rights, including copyrights and trademarks used with the advertising, marketing and sale of NAUTICA-brand products and services globally. 

 

Respondent's <tiendanauticachile.com> and <tiendanauticamexico.com> domain names are identical or confusingly similar to Complainant's registered trademarks for NAUTICA. The <tiendanauticachile.com> domain name consists of the "www." prefix followed by the descriptive Spanish term for store "tienda", Complainant's trademark "Nautica", and the geographic identifier "Chile". The <tiendanauticamexiico.com> domain name consists of the "www." prefix followed by the descriptive Spanish term for store "tienda", Complainant's trademark "Nautica", and the geographic identifier "Mexico".

 

Respondent does not have rights or legitimate interests in the <tiendanauticachile.com> and <tiendanauticamexico.com> domain names. Respondent is not commonly known by the disputed domain names and is not licensed or authorized to use Complainant's NAUTICA trademark.

 

Respondent is not making legitimate non-commercial or fair use of the domain names. Instead, Respondent has been actively using the Nautica trademarks on the resolving websites to promote its website for illegitimate commercial gains. Such unauthorized use of the Nautica trademarks is likely to mislead consumers into erroneously believing that Complainant is somehow affiliated with Respondent or endorsing its commercial activities.

 

Respondent registered the <tiendanauticachile.com> and <tiendanauticamexico.com> domain names in bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Nautica Apparel, Inc. ("Complainant") is the owner of the NAUTICA brand, a globally famous lifestyle. Since it was established in 1983, the NAUTICA brand has been used in connection with a wide variety of branded goods and services, including clothing, accessories, and home goods, which are now sold in over 200 NAUTICA stores and select department stores in over 65 countries, and on the NAUTICA website, <nautica.com>. The NAUTICA brand is supported by a large portfolio of intellectual property rights, including copyrights and trademarks used with the advertising, marketing and sale of NAUTICA-brand products and services globally (collectively, the "NAUTICA IP Rights").

 

Respondent's <tiendanauticachile.com> and <tiendanauticamexico.com> domain names are confusingly similar to Complainant's registered trademarks for NAUTICA.

 

Respondent registered the disputed domain names on May 29, 2023.

 

Respondent does not have rights or legitimate interests in the <tiendanauticachile.com> and <tiendanauticamexico.com> domain names. Respondent is not commonly known by the domain names. Respondent has not been authorized by Complainant to use the NAUTICA trademark. Respondent is not making legitimate non-commercial or fair use of the domain names. Instead, Respondent has been actively using the Nautica trademarks on the resolving websites to promote its website for illegitimate commercial gains. Such unauthorized use of the Nautica trademarks is likely to mislead consumers into erroneously believing that Complainant is somehow affiliated with Respondent or endorsing its commercial activities.

 

Respondent registered the <tiendanauticachile.com> and <tiendanauticamexico.com> domain names in bad faith.

 

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 has rights in the <tiendanauticachile.com> and <tiendanauticamexico.com> domain names through registration of its NAUTICA trademarks globally.

 

Respondent's <tiendanauticachile.com> and <tiendanauticamexico.com> domain names are confusingly similar to Complainant's registered trademarks for NAUTICA. Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. See, e.g., Rakuten, Inc. v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Matthew Connor, No Company, WIPO Case No. D2019-2983 (finding complainant's mark RAKUTEN clearly recognizable within the disputed domain name <travelrakutenmexico.com> despite the additional descriptive terms "travel" and "Mexico").

 

Rights or Legitimate Interests

Respondent does not have rights or legitimate interests in the <tiendanauticachile.com> and <tiendanauticamexico.com> domain names. Respondent has not been authorized by Complainant to use the NAUTICA trademark. See Foot Locker, Inc. v. Blezin Widmaer, No. FA 113283 (Forum June 17, 2002) (finding registrant had no rights or legitimate interests in domain where "Respondent is not a licensee or authorized agent of Complainant.").

 

Although the WhoIs information does not specifically identify the name of the registrant, in Complainant's experience, when the registrant state and country is listed as "Kuala Lumpur, MY", the registrant is "Client Care / Web Commerce Communications Limited." Respondent is not commonly known by NAUTICA. See Gallup Inc. v. Amish Country Store, FA 96209 (Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).

 

Respondent is not making legitimate non-commercial or fair use of the domain names. Instead, Respondent has been actively using the Nautica trademarks on the resolving website to promote its website for illegitimate commercial gains. Such unauthorized use of the Nautica trademarks is likely to mislead consumers into erroneously believing that Complainant is somehow affiliated with Respondent or endorsing its commercial activities.

 

Registration and Use in Bad Faith

Respondent registered and used the <tiendanauticachile.com> and <tiendanauticamexico.com> domain names in bad faith.

 

Respondent was aware of Complainant's NAUTICA trademark at the time Respondent registered the domain names. Complainant's NAUTICA trademarks are well-known around the world. "A simple Google search would have disclosed the Complainants' marks and business. Good faith due diligence requires more than a scintilla of research." Tractor Supply Co. of Texas LP, Tractor Supply Company v. Fractional Investors, WIPO Case No. D2010-1142. This is proof of bad faith at the time of registration.

 

Further, a gap of several years between registration of a complainant's trademark and respondent's registration of a disputed domain name containing the trademark can show bad faith registration. See Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415 and International Business Machines Corporation v. Domain Administrator, See PrivacyGuardian.org / Tan Fei Tan, WIPO Case No. D2021-0085. In this case, Respondent registered the domain names decades after Complainant established registered trademark rights in the Nautica trademarks.

 

Respondent is trying to pass off the domain names as Complainant's website to sell competing and unauthorized goods. On the resolving website, Respondent uses the NAUTICA trademarks and images of products bearing NAUTICA trademarks. Respondent has no reason to use the NAUTICA trademarks in the domain names or on the associated website other than to attract internet users to its site for commercial gain. Thus, Respondent is intentionally trying to create a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement. Prior UDRP panels have found that such use of a domain name constitutes bad faith, See Urban Outfitters Inc. v. Super Privacy Service LTD c/o Dynadot / Domain Administrator, Domain Name Corporation, WIPO Case No. D2022-2928 citing Gilead Sciences, Inc. v. Adewale Tokosi, WIPO Case No. D2021-0961.

 

For the foregoing reasons, Respondent is using the domain names in bad faith.

 

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 <tiendanauticachile.com> and <tiendanauticamexico.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated: March 26, 2024