DECISION
Adriano Goldschmied, LLC v. drcz unvlpxn1 / hqfye wzuxole
Claim Number: FA2412002128805
PARTIES
Complainant is Adriano Goldschmied, LLC ("Complainant"), represented by Philip Nulud of Buchalter, California, USA. Respondent is drcz unvlpxn1 / hqfye wzuxole ("Respondent"), Ohio, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <ag-denim.com> and <agjeansus.com> (the "disputed domain names"), registered with Gname.com Pte. Ltd.
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.
Lynda M. Braun as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on December 10, 2024; Forum received payment on December 10, 2024.
On December 11, 2024, Gname.com Pte. Ltd. confirmed by e-mail to Forum that the <ag-denim.com> and <agjeansus.com> disputed domain names are registered with Gname.com Pte. Ltd. and that Respondent is the current registrant of the names. Gname.com Pte. Ltd. has verified that Respondent is bound by the Gname.com Pte. Ltd. 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 December 12, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 2, 2025 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@ag-denim.com, postmaster@agjeansus.com. Also on December 12, 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 January 3, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Lynda M. Braun 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 disputed domain names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
The Panel agrees with Complainant that, for purposes of this administrative proceeding, the two registrants are related In the instant proceedings. Complainant has alleged that Respondents are effectively controlled by the same person and/or entity or are alter-egos of the same person or entity, and therefore, are appropriate Respondents in this proceeding. Paragraph 3(c) of 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." In addition, Paragraph 4(f) of the Policy provides that "[i]n the event of multiple disputes between you and a complainant, either you or the complainant may petition to consolidate the disputes before a single Administrative Panel." This is allowed where it "promotes the shared interests of the parties in avoiding unnecessary duplication of time, effort and expense, reduces the potential for conflicting or inconsistent results arising from multiple proceedings, and generally furthers the fundamental objectives of the Policy." UDRP Panels have reviewed a variety of factors in determining whether multiple domains are, in fact, of common ownership. Such factors as similar naming conventions and similar website content may be considered to determine if the disputed domain names are owned by a single entity. See WIPO Case No. D2014-0474, Delta Dental Plans Association v. ICS INC., et al. (consolidation of 31 domains allowed where "[t]he Panel notes that each of the disputed domain names follows an identical naming convention").
In the present case, Complainant alleges that the disputed domain names are registered by a single entity operating under multiple aliases and using false names and contact information. Complainant believes that Respondent is but one Respondent, although Respondents appear to be two separate Respondents. The two Respondents use the same garbled characters as in their name, and use the same "US Ohio" in the address and garbled text. Moreover, they both use the same second level domain "avafzaccarin" and generic Top-Level Domain ".shop" in their email address. Finally, they both were listed as redacted for privacy on the WhoIs site.
Thus, the Panel finds that the aforementioned facts present a compelling case for consolidation of Respondents. Complainant should not be forced to expend time, effort and money filing duplicative proceedings against Respondents in this proceeding.
Finally, while Respondents had the opportunity to make a submission on the issue of consolidation, they have chosen not to do so, and correspondingly did not respond to the Complaint. The Panel may take this into consideration when determining whether or not Respondents should be consolidated into this single proceeding under the Policy. See Eli Lilly and Company v. Private Registration, WhoisGuardService.com, WIPO Case No. D2016-1737. As a result, the Panel concludes that based on circumstances iterated here, it would be equitable and procedurally efficient to permit consolidation of Respondents in this case.
PARTIES' CONTENTIONS
A. Complainant
Complainant is a California, United States limited liability company that began selling its signature premium jeans in 1998 under the brand AG ADRIANO GOLDSCHMIED. Over the years, Complainant began to use not only the trademark AG ADRIANO GOLDSCHMIED, but also the AG and AG JEANS marks to market its products. The AG trademarks have become associated with high-quality, fashionable goods. Complainant sells its goods online and in brick and mortar stores, which stores are located in upscale malls and locations throughout the world. Complainant has spent substantial amounts of time, energy and expense in the design, development, marketing and sale of goods under the AG trademarks.
Complainant owns, among others, the following United States trademark with the United States Patent and Trademark Office ("USPTO"): AG, United States Trademark Reg. No. 3972536, registered on June 7, 2011, with a date of first use in commerce of July 1, 2001, in international class 25. The foregoing AG trademark will hereinafter be referred to as the "AG Mark".
Complainant also owns the domain name <ag.com>, which resolves to its official website at "www.ag.com" and through which it promotes and sells its AG-branded products.
The disputed domain names resolve to copy-cat websites that are essentially a clone of Complainant's official website. The disputed domain names' resolving websites prominently display Complainant's registered trademarks and sell products that are purportedly counterfeit AG products. Complainant submitted screenshots of the resolving websites as an Annex to the Complaint.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
The Panel finds that Complainant has registered trademark rights in the AG Mark as described above. The Panel also finds that the disputed domain names are confusingly similar to Complainant's AG Mark, that Respondent has no rights or legitimate interests in respect of the disputed domain names, and that the disputed domain names were registered and are being used 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 disputed domain name should be cancelled or transferred:
(1) the disputed domain names registered by Respondent are 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 disputed domain names; and
(3) the disputed domain names have been registered and are 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 Panel finds that the disputed domain names are confusingly similar to the AG Mark.
The Panel finds that Complainant has rights in the AG Mark based on its registration of the mark with the USPTO (e.g., AG, United States Trademark Registration No. 3972536, registered on June 7, 2011, with a date of first use in commerce of July 1, 2001, in international class 25). Registration of a mark with the USPTO confers upon a complainant trademark rights for purposes of the Policy paragraph 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) ("Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.").
The Panel additionally finds that the disputed domain names are confusingly similar to the AG Mark under Policy paragraph 4(a)(i). The disputed domain names incorporate the entirety of the AG Mark, one followed by the terms "jeans" and "us", and the other followed by the term "denim" and joined by a hyphen. Adding a term to a disputed domain name does not distinguish a disputed domain name from a trademark under Policy paragraph 4(a)(i) because where a trademark is recognizable in a disputed domain name, the addition of other terms does not prevent a finding of confusing similarity. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA1782013 (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.").
Moreover, the addition of a gTLD to an otherwise recognizable mark, as here, does not distinguish a disputed domain name from the trademark under Policy paragraph 4(a)(i). The addition of a gTLD to a complainant's mark is irrelevant in determining whether the disputed domain names are confusingly similar. See Tupelo Honey Hospitality Corp. v. King, Reggie, FA 1732247 (Forum July 19, 2017) (the addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name).
Accordingly, the Panel finds that Policy paragraph 4(a)(i) has been established by Complainant.
Rights or Legitimate Interests
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names.
Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving that a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of "proving a negative", requiring information that is often primarily within the knowledge or control of the respondent.
In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy paragraph 4(a)(ii), and then the burden shifts to Respondent to show that it does have rights or legitimate interests in the disputed domain names. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA780200 (Forum Sept. 25, 2006) ("Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names."). Here, the Panel holds that Complainant has made out a prima facie case.
The Panel concurs with Complainant that Respondent has no rights or legitimate interests in the disputed domain names as Respondent has not proven that it is commonly known by the disputed domain names, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the AG Mark. The Panel further concludes that Respondent has no relationship, affiliation, connection, endorsement or association with Complainant.
Further, Respondent fails to use the disputed domain names in connection with a bona fide offering of goods or services or a legitimate, noncommercial or fair use as the website to which the disputed domain names resolve purportedly feature counterfeit goods of Complainant that are featured on copycat websites that are nearly identical to that of Complainant. Complainant provides screenshots of Respondent's resolving websites as Annexes to the Complaint, demonstrating the counterfeit goods on the sites. In addition to featuring counterfeit goods, Respondent's resolving websites include use of the AG Mark. In sum, Respondent is purportedly selling counterfeit AG products and is engaging in a fraudulent scheme to deceive consumers into incorrectly believing that the websites and counterfeit products are affiliated with or sponsored by Complainant, certainly not a bona fide offering of goods or services.
Accordingly, the Panel finds that Policy paragraph 4(a)(ii) has been established by Complainant.
Registration and Use in Bad Faith
This Panel finds that, based on the record, the Complainant has demonstrated the existence of Respondent's bad faith registration and use pursuant to paragraph 4(b)(iv) of the Policy as described below.
First, the use of disputed domain names to intentionally attempt to attract Internet users to a respondent's website or online location by creating a likelihood of confusion or a false association with a complainant's mark as to the source, sponsorship, affiliation or endorsement of the registrant's website or online location demonstrates registration and use in bad faith. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006).
Second, where disputed domain names are so obviously connected with a well-known name, product or service, their use by someone with no connection to the name, product or service indicates opportunistic bad faith. Therefore, the Panel concludes that Respondent's registration and use constitutes bad faith under Policy paragraph 4(a)(iii).
Third, Respondent disrupts Complainant's business by diverting consumers to Respondent's websites and by passing off the websites as Complainant's own website for commercial gain. Use of a disputed domain name to redirect Internet users to a respondent's website, which features counterfeit goods, constitutes bad faith disruption of a complainant's business under Policy paragraph 4(b)(iii) and an attempt to attract users for commercial gain under Policy paragraph 4(b)(iv).
Fourth, the Panel finds that Respondent registered and is using the disputed domain names in bad faith because Respondent registered the disputed domain names with actual knowledge of Complainant's rights in the AG Mark. In this case, it strains credulity to think that Respondent did not have actual knowledge of Complainant's AG Mark as the disputed domain names chosen by Respondent use the AG Mark in its entirety and resolve to websites that allegedly feature counterfeit goods. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (finding actual knowledge due to the domain name chosen and the use made of it); Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware" of the complainant's mark at the time of registration). The fame of Complainant's AG Mark combined with the alleged counterfeit content of the disputed domain names' resolving websites, using the AG Mark, demonstrates that Respondent intentionally registered and is using the disputed domain names with full knowledge of the AG Mark and in bad faith. Complainant provides screenshots of the disputed domain names' resolving websites as Annexes to the Complaint to demonstrate Respondent's confusingly similar infringing websites.
Accordingly, the Panel finds that Policy paragraph 4(a)(iii) has been established by Complainant.
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 <ag-denim.com> and <agjeansus.com> disputed domain names be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: January 13, 2025
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