PAIGE, LLC v. William Dorsey
Claim Number: FA1810001813059
Complainant is PAIGE, LLC (“Complainant”), represented by Rod S. Berman of Jeffer Mangels Butler & Mitchell LLP, California, USA. Respondent is William Dorsey (“Respondent”), Alabama, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <paigedenimsale.com>, registered with Web Werks India Pvt. Ltd d/b/a ZenRegistry.com.
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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 22, 2018; the Forum received payment on October 25, 2018.
On October 29, 2018, Web Werks India Pvt. Ltd d/b/a ZenRegistry.com confirmed by e-mail to the Forum that the <paigedenimsale.com> domain name is registered with Web Werks India Pvt. Ltd d/b/a ZenRegistry.com and that Respondent is the current registrant of the name. Web Werks India Pvt. Ltd d/b/a ZenRegistry.com has verified that Respondent is bound by the Web Werks India Pvt. Ltd d/b/a ZenRegistry.com 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 November 6, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 26, 2018 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 email@example.com. Also on November 6, 2018, 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, the Forum transmitted to the parties a Notification of Respondent Default.
On November 28, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant engages in the business of selling various clothing and apparel items, including jeans, shorts, tops, jackets, skirts, dresses, t-shirts, hats, scarves, etc. Complainant has rights in the PAIGE mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”), the European Union Intellectual Property Office (“EUIPO”), and many other countries. Respondent’s <paigedenimsale.com> domain name is identical or confusingly similar to Complainant’s mark as it merely tacks on the generic terms “denim” and “sale” along with the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <paigedenimsale.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent’s website makes liberal and unauthorized use of Complainant’s PAIGE mark in connection with Respondent’s competing counterfeit products.
Respondent registered and uses the <paigedenimsale.com> domain name in bad faith. Respondent intentionally attempts to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s PAIGE mark to offer for sale counterfeit PAIGE jeans, shorts, pants, tops, dresses, and accessories.
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(2) Complainant has not proven Respondent has no rights or legitimate interests in respect of the domain name; and
(3) Complainant has not proven the domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant claims rights in the PAIGE mark through its registration of the mark with the USPTO, the EUIPO, and the trademark offices of many other countries and it submits into evidence images of some of its U.S. and E.U. registration certificates for the marks PAIGE, PAIGE PREMIUM DENIM, PAIGE DENIM CO. LOS ANGELES, and others (collectively the “PAIGE Marks”). These registrations were filed as early as 2004 and claim first use of the PAIGE Marks as early as 2005. Registration of a mark with the USPTO or EUIPO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has established rights in the PAIGE Marks for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <paigedenimsale.com> domain name is identical or confusingly similar to Complainant’s Marks as it merely tacks on the generic terms “denim” and “sale” along with the “.com” gTLD. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See ASOS plc v. Sarah Bullock, FA D2018-0507 (WIPO May 4, 2018) (the asosjacketsale.com domain name copies Complainant’s ASOS trademark “and combines it with the words ‘Jacket" and "Sale.’ … [T]he addition of the dictionary terms to the Complainant's mark in the Disputed Domain Name does not prevent a finding of confusing similarity under the first element”). The Panel therefore finds that the <paigedenimsale.com> domain name is confusingly similar to the PAIGE mark under Policy ¶ 4(a)(i).
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). Should it succeed in this effort, the burden then shifts to Respondent to show that 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 contends that Respondent has no rights or legitimate interests in the <paigedenimsale.com> domain name as it is not commonly known by the domain per Policy ¶ 4(c)(ii). Where a response is lacking, relevant information to support such a claim may include the WHOIS record and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Here, the WHOIS record, which has been submitted into evidence by Complainant, identifies “William Dorsey” as the registrant of the <paigedenimsale.com> domain name. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by this domain name or by any of the PAIGE Marks. Panels may use these assertions as evidence of lacking rights or legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the domain name prior to its registration, and Complainant has not given Respondent permission to use the mark in any manner. Accordingly, the Panel agrees that Respondent is not commonly known by the <paigedenimsale.com> domain name under Policy ¶ 4(c)(ii).
Next, Complainant claims that Respondent’s website makes liberal and unauthorized use of Complainant’s PAIGE Marks in connection with Respondent’s competing counterfeit products. The unauthorized selling of a complainant’s products, whether real or counterfeit, can evince a lack of a bona fide offering of goods or service or a legitimate noncommercial or fair use. See Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015) (finding no bona fide offering of goods or services, or legitimate noncommercial or fair use existed where Respondent used the resolving website to sell products branded with Complainant’s MERRELL mark, and were either counterfeit products or legitimate products of Complainant being resold without authorization). However, even when a respondent does not submit a response in a proceeding, the complainant still must make a prima facie case as noted above. See VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (“Respondent's default, however, does not lead to an automatic ruling for Complainant. Complainant still must establish a prima facie case showing that under the Uniform Domain Name Dispute Resolution Policy it is entitled to a transfer of the domain name.”).
Here, Complainant does not provide screenshots of the <paigedenimsale.com> website or any other evidence of its use as alleged in the Complaint. Even the submitted declaration of Complainant’s Chief Financial Officer does not address the content of the website or the use of the domain name. Critical evidentiary shortcomings have supported the denial of past cases. See, e.g., Richard Izzo Toughman Enterprises v. TJ Tryon, FA1704001728347 (Forum May 30, 2017) (“While this Panel is willing to give Complainant some leeway because Complainant is pro se, that does not allow Complainant to ignore its burden of proof. A complainant fails to make a prima facie case when it fails to provide any evidence whatsoever of a respondent’s use of a disputed domain name.”); Chrome Bones / CB Luxury Brands, LLC v. Laursen, Shawn / Shawn's pasta & bake shop, FA1805001787926 (Forum June 27, 2018) (“Complainant’s evidence of secondary meaning consists only of its unsupported assertion that it has used the mark since 2000. … Respondent’s default in this matter notwithstanding, the evidence before the Panel utterly fails to demonstrate that Complainant’s trademark rights accrued prior to April 2003, when Respondent registered the Domain Name.”) In the present case, the Panel is unable to adequately consider the use to which the <paigedenimsale.com> domain name has been put let alone whether such use is bona fide, legitimate, or fair. As critical evidence is lacking here, the Panel finds that Complainant has failed to carry its burden of producing a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
For the same reasons as noted above in relation to Policy ¶ 4(a)(ii), Complainant has failed to meet its burden of proof to demonstrate bad faith registration and use under Policy ¶4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶4(a)(iii); citing Graman USA Inc. v. Shenzhen Graman Indus. Co., FA0501000406512 (Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED. This decision is made without prejudice to Complainant recommencing this Proceeding upon fixing the deficiencies in Complainant’s complaint.
Accordingly, it is Ordered that the <paigedenimsale.com> domain name REMAIN WITH Respondent.
Steven M. Levy, Esq., Panelist
Dated: November 30, 2018
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