DECISION

 

Eminent, Inc. v. George Goldenberg / CaaStle Inc

Claim Number: FA2504002152147

 

PARTIES

Complainant is Eminent, Inc. ("Complainant"), represented by Jessica Sganga of Knobbe, Martens, Olson & Bear, LLP, California, USA. Respondent is George Goldenberg / CaaStle Inc ("Respondent"), New York, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <runwayrevolve.com> and <revolvetherunway.com>, registered with Amazon Registrar, Inc.

 

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 Neil Anthony Brown KC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on April 23, 2025; Forum received payment on April 23, 2025.

 

On April 25, 2025, Amazon Registrar, Inc. confirmed by e-mail to Forum that the <runwayrevolve.com> and <revolvetherunway.com> domain names are registered with Amazon Registrar, Inc. and that Respondent is the current registrant of the names. Amazon Registrar, Inc. has verified that Respondent is bound by the Amazon Registrar, Inc. 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 May 1, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 21, 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@runwayrevolve.com, postmaster@revolvetherunway.com. Also on May 1, 2025, 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 May 22, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC 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

    Complainant made the following contentions

1.       The Complainant is a United States company engaged in the provision of clothing and related goods and services and it has been so engaged since at least 2003.

2.       The Complainant provides its goods and services under the trademark for REVOLVE and has done so since at least 2003.

3.       In particular, the evidence will establish that the Complainant has acquired registered trademark rights in the REVOLVE trademark by virtue of the registration of that mark with the United States Patent and Trademark Office ("USPTO") registered Number 5058770, registered on October 11, 2016 and numerous other registrations domestically and internationally for REVOLVE (collectively "the REVOLVE trademark"). The Complainant has used that trademark since its registration to offer its goods and services.

4.       The Respondent registered the <runwayrevolve.com> domain name on May 16, 2023 and the <revolvetherunway.com> domain name on February 24, 2023 ("the disputed domain names").

5.       The Respondent has caused the disputed domain names to resolve to websites that use the REVOLVE trademark without permission and advertise competing goods to those of the Complainant. 

6.       The disputed domain names are confusingly similar to the REVOLVE trademark.

7.       The Respondent has no rights or legitimate interests in the disputed domain names as:

(a)        the Complainant has never given any licence, permission or authority to the Respondent to use the REVOLVE trademark, any other similar mark or any other of the Complainant's aforesaid trademarks and there has never been any affiliation or relationship between the Complainant and the Respondent;

(b)        the Respondent has not used the domain names for a bona fide offer of goods or services within the meaning of Policy ¶ 4(c)(i);

(c)       the Respondent has not used the domain names for a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(b)(iii); and

(d)        there is no other ground on which it could conceivably be shown that the Respondent has a right or legitimate interest in the disputed domain names.

8.       The Respondent registered and has used the disputed domain names in bad faith, as:

(a)                      the Respondent has used the Complainant's trademark in the aforesaid domain names to offer the same brands as those sold by the Complainant and thereby to associate the Respondent's websites with the Complainant;

(b)                      the conduct of the Respondent as aforesaid was calculated to disrupt the Complainant's business within the meaning of Policy ¶ 4(b)(iii);

(c)                      the conduct of the Respondent as aforesaid was calculated to generate confusion within the meaning of Policy ¶ 4(b)(iv); and

(d)                      all of the acts, facts, matters and circumstances to be revealed by the evidence will establish that the Respondent registered and used the disputed domain names in bad faith.

9.       The evidence will establish that the Complainant has been able to make out all of the grounds it must establish under the Policy and that accordingly it is entitled to the relief that it seeks, namely the transfer of the disputed domain names from the Respondent to the Complainant

B. Respondent

    Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1.       The Complainant is a United States company engaged in the provision of clothing and related goods and services and it has been so engaged since at least 2003.

2.       The Complainant provides its goods and services under the trademark for REVOLVE and has done so since at least 2003.

3.       In particular, the evidence has established that the Complainant has acquired registered trademark rights in the REVOLVE trademark by virtue of the registration of that mark with the United States Patent and Trademark Office ("USPTO") registered Number 5058770, registered on October 11, 2016 and numerous other registrations domestically and internationally for REVOLVE (collectively "the REVOLVE trademark"). The Complainant has used that trademark since its registration to offer its goods and services.

4.       The Respondent registered the <runwayrevolve.com> domain name on May 16, 2023 and the <revolvetherunway.com> domain name on February 24, 2023 ("the disputed domain names").

5.       The Respondent has caused the disputed domain names to resolve to websites where the REVOLVE trademark is prominently displayed and which are used by the Respondent to give the false impression that it is the Complainant or authorised by it to sell the products displayed on those websites and that they are genuine products of the Complainant and by which means the Respondent passes itself off as the Complainant and infringes and tarnishes the Complainant's trademark.

6.       By reason of the matters aforesaid, and as established by the evidence, the disputed domain names are confusingly similar to the Complainant's REVOLVE trademark, the Respondent has no rights or legitimate interests in the disputed domain names and the disputed domain names have been registered and used in bad faith.

7.       Accordingly, the disputed domain names should be transferred from the Respondent to 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 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 domain names; and

(3)        the 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 first question that arises is whether the Complainant has rights in a trademark or service mark on which it may rely in this proceeding. The Panel finds that the Complainant has used the REVOLVE trademark to offer its goods and services and that the Complainant has done so since at least 2003. In particular, the evidence has established that the Complainant has acquired registered trademark rights in the REVOLVE trademark by virtue of the registration of that mark with the United States Patent and Trademark Office ("USPTO") registered Number 5058770, registered on October 11, 2016 and numerous other registrations domestically and internationally for REVOLVE (collectively "the REVOLVE trademark"). The Complainant has used that trademark since its registration to offer its goods and services.

The Panel therefore finds that the Complainant has established that it has registered trademark rights in the REVOLVE trademark, that it held those rights when the Respondent acquired the disputed domain names and that it still holds those rights. The Complainant has thus established its trademark rights and hence its standing to bring this proceeding.

The next question that arises is whether the disputed domain names are identical or confusingly similar to the Complainant's REVOLVE trademark.

The Panel finds that the disputed domain names are confusingly similar to the REVOLVE trademark as they embody, without the consent of the Complainant, the entirety of the REVOLVE trademark with the addition of the words "runway"  and " "therunway" respectively, followed by the generic Top Level Domain ".com". When a domain name includes a trademark in its entirety, it is more likely than not that the domain name is confusingly similar to the trademark. That is obviously so in the present case, as internet users would no doubt see the domain names as invoking the Complainant's trademark and the goods sold under it. Nor would the presence of the words "runway" and "therunway" negate that impression, as internet users would read the domain names to be invoking the Complainant's trademark and the goods sold under it, particularly when those goods, which are fashion items, are being displayed and promoted on a fashion runway.

The addition of the generic Top Level Domain ".com" is regularly ignored in making the comparison between a domain name and a trademark, as all domain names must have such an extension and its inclusion cannot negate a finding of confusing similarity that is otherwise present on the evidence, which it clearly is in the present case.

The Panel therefore finds that the disputed domain names are confusingly similar to the REVOLVE trademark under paragraph 4(a)(i) of the Policy.

The Complainant has thus made out the first of the three elements that it must establish under the Policy.

 

Rights or Legitimate Interests

It is now well established that the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain names under paragraph 4(a)(ii) of Policy and that, if the prima facie case is made out, the burden then shifts to the Respondent to show that it does have such 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 paragraph 4(a)(ii)) of the Policy.

 

The Complainant has shown on the evidence that the Respondent has no rights or legitimate interests in the domain names for all of the reasons it has given, namely:

(a)       the Complainant has never given any licence, permission or authority to the Respondent to use the REVOLVE trademark, any other similar mark or any other of the Complainant's aforesaid trademarks and there has never been any affiliation or relationship between the Complainant and the Respondent; that has been established by the evidence; thus it could not be seriously argued that the Respondent registered and used the domain names with any sort of consent from the Complainant;

(b)        the Respondent has not used the domain names for a bona fide offer of goods or services within the meaning of Policy ¶ 4(c)(i); there is nothing bona fide in the way the Respondent has used the domain names; it has caused them to resolve to websites that are in evidence in Annexes H and I which the Panel has naturally examined and finds that they use the name Runway Revolve and promote ladies' fashions; the evidence is that these items compete with those of the Complainant and are clearly for sale; thus the Respondent has used the Complainant's trademark to sell its purported offerings which is entirely illegitimate;

(c)       the Respondent has not used the domain names for a legitimate noncommerical or fair use within the meaning of Policy ¶ 4(b)(iii); the evidence shows that the uses demonstrated by Annexes H and I are not legitimate, not noncommercial and not fair, either to the Complainant or internet users generally; and

(d)        the evidence shows that there is no other ground on which it could conceivably be shown that the Respondent has a right or legitimate interest in the disputed domain names.

The Panel therefore finds that all of the grounds relied in by the Complainant have been made out.

 

In any event, none of the foregoing uses can conceivably give rise to a right or legitimate interest in the domain names used to perpetrate the Respondent's subterfuge.

 

The Complainant has therefore made out a persuasive case for all of the grounds it relies on to show that the Respondent does not have a right or legitimate interest in the disputed domain names.

 

The Respondent has not filed a Response and is in default and has thus not rebutted the prima facie case against it.

 

The Complainant has therefore made out the second of the three elements it must establish under the Policy.

 

Registration and Use in Bad Faith

It is clear that to establish bad faith for the purposes of the Policy, the Complainant must show that the disputed domain names were registered and used in bad faith. It is also clear that the criteria set out in paragraph 4(b) of the Policy are not exclusive, but that domain name proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.

The Complainant has submitted that the Respondent has registered and used the disputed domain names in bad faith on several grounds. In view of the evidence discussed above, which is equally applicable to bad faith as it is to rights and legitimate interests and which it is not necessary to repeat, it is clear that the Complainant has made out all of the grounds relied on. The Respondent has clearly been motivated by bad faith in the registration and use of the domain names and in particular in the deception of internet users in which the Respondent has engaged, amply demonstrated by the Complainant's detailed evidence referred to above in Annexes H and I. In particular, it is clear from the evidence that, as the Complainant has submitted:

(a)                      the Respondent has used the Complainant's trademark in the aforesaid domain names to offer the same type of brands as those sold by the Complainant and thereby to associate the Respondent's websites with the Complainant; the evidence is that the Respondent has engaged in a subterfuge, under which it has taken the Complainant's trademark, copied it and used it to try to sell articles of clothing under cover of the Complainant's trademark, pretending that it is the Complainant or that it has the permission of the Complainant to engage in this subterfuge;

(b)                      the conduct of the Respondent as aforesaid was calculated to disrupt the Complainant's business within the meaning of Policy ¶ 4(b)(iii); clearly, the intention was to have internet users spend less time and buy fewer articles from looking at the Complainant's website and more time looking at the Respondent's offending website, which amounts to disruption;

(c)                      the conduct of the Respondent as aforesaid was calculated to generate confusion within the meaning of Policy ¶ 4(b)(iv); the intention of the Respondent must likewise have been to induce internet users to conclude, wrongly, that the Respondent's site was official and legitimate, which it clearly was not;

(d)                      the Complainant also makes the valid point that the Respondent has persistently sought to give the impression that its own offerings were legitimately associated with the Complainant which is not so; and

(e)                      all of the acts, facts, matters and circumstances revealed by the evidence have established that the Respondent registered and used the disputed domain names in bad faith.

Finally, in addition to the specific provisions of the Policy and having regard to the totality of the evidence, the Panel finds that, in view of the Respondent's registration of the disputed domain names using the aforesaid REVOLVE trademark and in view of the conduct of the Respondent, as shown by all of the available evidence, the Respondent registered and used the disputed domain names in bad faith within the generally accepted meaning of that expression. It is clear that, from the beginning, the Respondent set about targeting the Complainant, passed itself of as the Complainant and sought to mislead internet users to believe that the clothing offered on its websites was genuine and authentic, which the Respondent must have known was not true.

The Complainant has thus made out the third of the three elements that it must establish.

The Complainant has also cited several prior UDRP decisions that support all of its contentions on each of the three elements of the Policy.

The Complainant has therefore established all of the elements that it must show under the Policy and it is entitled to the relief it seeks, namely transfer of the disputed domain names.

 

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 <runwayrevolve.com> and <revolvetherunway.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

The Honorable Neil Anthony Brown KC,

Panelist

Dated: May 23, 2025