DECISION

 

ABG-Volcom LLC v. Online trading / afasdf sdfadf

Claim Number: FA2402002085511

 

PARTIES

Complainant is ABG-Volcom LLC ("Complainant"), represented by Bridgette Fitzpatrick of Authentic Brands Group LLC, New York, USA. Respondent is Online trading / afasdf sdfadf ("Respondent"), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <volcomoutlets.shop>, <volcomsale.shop>, <volcomwarehouse.shop>, <volcomworld.shop> and <volcomonlinesale.vip>, registered with Sav.Com, Llc.

 

For the reasons given below, the Panel finds that the only relevant domain names for this case are <volcomoutlets.shop>, <volcomsale.shop>, <volcomworld.shop> and <volcomonlinesale.vip>, registered with Sav.Com, Llc.

 

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.

 

Richard Hill as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on February 26, 2024; Forum received payment on February 26, 2024.

 

On February 26, 2024, Sav.Com, Llc confirmed by e-mail to Forum that the <volcomoutlets.shop>, <volcomsale.shop>, <volcomwarehouse.shop>, <volcomworld.shop> and <volcomonlinesale.vip> domain names are registered with Sav.Com, Llc and that Respondent is the current registrant of the names. Sav.Com, Llc has verified that Respondent is bound by the Sav.Com, Llc 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 26, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 18, 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@volcomoutlets.shop, postmaster@volcomsale.shop, postmaster@volcomwarehouse.shop, postmaster@volcomworld.shop and postmaster@volcomonlinesale.vip. Also on February 26, 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 19, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Richard Hill 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 RESPONDENTS

In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. In support of this allegation it states:

a)       the domain names were all registered with the same registry within the last year;

b)       the WHOIS records list the registrants' state and country as IL, US;

c)       Complainant suspects that the registrant's contact details for <volcomwarehouse.shop> are entirely fictitious;

d)       the shared Hotmail domains of the registrants' email addresses are seen as more than mere coincidence.

 

Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") provides that a "complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder."  

 

The Panel finds that Complainant's allegations above do not necessarily indicate that the domain names are all under common control. Specifically, the fact that the WHOIS address for <volcomwarehouse.shop> appears to be fictitious does not support finding that the registrant for that domain name is the same as the registrant for the other domain names, whose WHOIS address appears to be legitimate. Further, Hotmail is a widely used email service, so its use by all the registrants is not sufficient to find that the registrants are the same (the actual email name is different for <volcomwarehouse.shop>).

 

Thus the Panel finds that Complainant has not presented sufficient evidence to find that all the disputed domain names were registered by the same person or entity.

 

Under Forum's Supplemental Rule 4(c), the Panel must determine which domain names are commonly owned and elect which Respondent to proceed against, as a UDRP decision can proceed against only one Respondent. The Panel is then required to dismiss the Complaint in relation to the domain names not commonly owned by the chosen Respondent. 

 

Accordingly, the Panel will rule only on the <volcomoutlets.shop>, <volcomsale.shop>, <volcomworld.shop> and <volcomonlinesale.vip> domain names, and it will dismiss, without prejudice, the complaint regarding the <volcomwarehouse.shop> domain name. See Brian Renner v. Contactprivacy.com, FA 1335211 (Forum Aug. 26, 2010); see also Amazon Technologies, Inc. v. M M / shanwang chen / feifei lin / HUA ZHANG / L H / Eddie Nash / Heather Brooker, FA 1973471 (Forum Dec. 17, 2021).

 

PARTIES' CONTENTIONS

A. Complainant

Complainant states that, inspired by creative spirit, it was founded in 1991 by two passionate entrepreneurs, who based the ethos of the company on their own experiences with board sports. During the "March Dumps of '91," the two friends went on a snowboarding trip to Tahoe, and afterward, they decided to start a board sports-riding company. Complainant has one of the best surfing, skateboarding, and snowboarding teams in the world and works with top tier entertainment tastemakers like Run the Jewels & Fat Tony. With over 234 million total fans on social media, the VOLCOM brand is famous in connection with its art, music, films, athletes and wide variety of branded goods and services, including women's clothing and accessories, which has 100,000 points of sale throughout North America, Europe, Asia, Latin America and the Middle East, as well as on its own website, <www.volcom.com>. Complainant asserts rights in the VOLCOM mark through its registration in the United States in 1992. The mark is registered elsewhere around the world.

 

According to Complainant, the disputed domain names are confusingly similar to its VOLCOM mark because they incorporate the mark in its entirety and merely add generic/descriptive terms and a generic top-level domain ("gTLD").

 

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names. Respondent is neither commonly known by the disputed domain names nor has Complainant authorized Respondent to use its mark. Respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial fair use. Instead, the disputed domain names are not being used.

 

Further, says Complainant, Respondent registered and uses the disputed domain names in bad faith. The disputed domain names are not being used.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant owns the mark VOLCOM and uses it to market a variety of goods and services, including snowboards and clothing. The mark is well known.

 

Complainant's rights in its mark date back to 1992.

 

The disputed domain names were registered in 2023 and 2024.

 

Complainant has not licensed or otherwise authorized Respondent to use its mark.

 

The disputed domain names are not being used.

 

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

The disputed domain names incorporate Complainant's VOLCOM mark in its entirety and merely add generic/descriptive terms and a generic top-level domain ("gTLD"). This is not sufficient to defeat a finding of confusing similarity under Policy ¶ 4(a)(i). See Am. Express Co. v. Buy Now, FA 318783 (Forum Oct. 14, 2004) ("In the view of the Panel, the disputed domain names are confusingly similar to Complainant's AMERICAN EXPRESS and AMEX marks. Each disputed domain name contains the AMERICAN EXPRESS or AMEX marks in its entirety and merely adds nondistinctive, descriptive and generic terms, some of which describe Complainant's business). Therefore, the Panel finds that the disputed domain names are confusingly similar to Complainant's mark per Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant has not authorized Respondent to use its mark. Respondent is not commonly known by the disputed domain names: under Policy ¶ 4(c)(ii), the Panel may look to the WHOIS information to determine whether Respondent is commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA 1626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named "Fred Wallace" as registrant of the disputed domain name). Here, the WHOIS information on record lists "Online trading" as the registrant. Therefore the Panel finds that Respondent is not commonly known by the disputed domain names.

 

The disputed domain names are not being used. Failure to make an active use of a domain name demonstrates that Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) ("Respondent is wholly appropriating Complainant's mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant's mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii)."). Therefore, the Panel finds that Respondent fails to use the disputed domain names to make a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain names.

 

Registration and Use in Bad Faith

Respondent (who did not reply to Complainant's contentions) has not presented any plausible explanation for its use of Complainant's mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent's failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain names.

 

Indeed, as already noted, the disputed domain names are not being used. According to paragraph 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Jurisprudential Overview 3.0): "From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or "coming soon" page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant's mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent's concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put."

 

In the present case, Complainant's trademark is well known. It is difficult to envisage any use of the disputed domain names that would not violate the Policy, see Morgan Stanley v. TONY / shentony, FA 1637186 (Forum Oct. 10, 2015) ("Respondent registered the disputed domain name [MORGANSTANLEY.ONLINE] in bad faith because . . . it is difficult to envisage any use of the disputed domain name that would not violate the Policy"); see also Singapore Airlines Ltd. v. European Travel Network, D2000-0641 (WIPO Aug. 29, 2000) (where selection of disputed domain name is so obviously connected to complainant's well-known trademark, use by someone with no connection with complainant suggests opportunistic bad faith); see also Starwood Hotels & Resorts Worldwide, Inc., Sheraton Int'l IP, LLC, Westin Hotel Mgmt., L.P. v. Jingjing Tang, D2014-1040 (WIPO Aug. 19, 2014) ("The Panel finds that the [WESTIN] Marks are not such that could legitimately be adopted by traders other than for the purpose of creating an impression of an association with Complainant. Thus, the Panel concludes that the disputed domain names were registered in bad faith.").

 

There has been no response to the Complaint and Respondent used a privacy service, that is, it attempted to conceal its identity. Given these circumstances, the Panel finds that, in this particular case, a finding of bad faith use can be inferred even though the disputed domain names are not being actively used. See Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).

 

DECISION

The Panel dismisses, without prejudice, the Complaint against the <volcomwarehouse.shop> domain name.

 

Having established all three elements required under the ICANN Policy for the <volcomoutlets.shop>, <volcomsale.shop>, <volcomworld.shop> and <volcomonlinesale.vip> domain names, the Panel concludes that relief shall be GRANTED for those domain names.

 

Accordingly, it is Ordered that the <volcomoutlets.shop>, <volcomsale.shop>, <volcomworld.shop> and <volcomonlinesale.vip> domain names be TRANSFERRED from Respondent to Complainant and that the <volcomwarehouse.shop> REMAIN WITH Respondent.

 

 

 

Richard Hill, Panelist

Dated: March 19, 2024