The Joseph A. Bank Mfg. Co., Inc and Jos. A. Bank Clothiers, LLC v. 风雷 孙 / 龙云 郭
Claim Number: FA2307002053981
Complainant is The Joseph A. Bank Mfg. Co., Inc and Jos. A. Bank Clothiers, LLC (“Complainant”), represented by Renee Reuter, Missouri, USA. Respondent is 风雷 孙 / 龙云 郭 (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <josbankus.store> and <josbankoutlets.store>, registered with Name.com, Inc..
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.
Jeffrey J. Neuman, as Panelist.
Complainant submitted a Complaint to Forum electronically on July 20, 2023; Forum received payment on July 20, 2023.
On July 21, 2023, Name.com, Inc. confirmed by e-mail to Forum that the <josbankus.store> and <josbankoutlets.store> domain names are registered with Name.com, Inc. and that Respondent is the current registrant of the names. Name.com, Inc. has verified that Respondent is bound by the Name.com, 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 July 24, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 14, 2023 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@josbankus.store, postmaster@josbankoutlets.store. Also on July 24, 2023, 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 August 15, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Jeffrey J. Neuman 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Preliminary Issue: Multiple Complainants
In this proceeding, there are two Complainants, The Joseph A. Bank Mfg. Co., Inc. (“Joseph A. Bank”) and Jos. A. Bank Clothiers, LLC (“Jos A. Bank”).
Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.” That is an accurate description of the basis for the present proceeding.
The two companies are both part of the Tailored Brands (“the TB”) family of companies. Both companies also share the same address. A copy of a recent 10 Q quarterly filing by TB to the Securities and Exchange Commission was appended as an Exhibit to the Complaint showing the Jos. A. Bank brand was indeed an asset of TB. According to the Complainant, Jos. A. Bank is the owner of all JOS A BANK-related domain name registrations, and Joseph A. Bank is the owner of all of the applicable trademark registrations. In order for Jos A. Bank to be able to use the JOS A. BANK marks on its domain names, there are cross licenses between the two related companies. In the light of all of these circumstances, the two complainants have brought this single proceeding as joint complainants as they seek to protect the same trademark interest.
It is clear that the evidence brings the case within Rule 3(a) of the Rules and also within the Forum’s Supplemental Rule 1(e) and the Panel finds that the claim has therefore been properly brought in its present form, and the Complainants have established their joint standing.
For ease of reference, the Complainants will be collectively referred to as “Complainant” in this decision.
Preliminary Issue 2: Multiple Respondents
In the instant proceedings Complainant has alleged that the entities which control the disputed domain names are the same person or entity or are “effectively controlled by the same person and/or entity, which is operating under multiple aliases. The Complainant bases its assertions on the fact that both domain names (i) use the same registrar, (ii) are in the same top-level domain (.store), (iii) were registered within ten (10) days of each other, (iv) resolve to webpages that show Complainant’s mark, (v) feature images from Complainant’s main website and logo, (vi) offer counterfeit or unauthorized versions of Complainant’s products, and (vii) use the same nameservers offered by name.com.
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.” In addition to the above, the Panel also notes the substantial similarity of the two websites and that WHOIS records for both names list the registrants using Chinese characters and both use similarly formatted Hotmail e-mail addresses. The Panel therefore finds that more likely than not both domain names belong to, or are effectively controlled by, the same registrant.
A. Complainant
Complainant has been providing “classically styled tailored and casual clothing for men” for more than 100 years. Complainant sells its clothing, footwear and accessories through its 180 physical stores across the United States as well as globally through its online website which is currently located at <josbank.com>.
Complainant also owns numerous trademark registrations through the United States Patent and Trademark Office, including registration number 1,337,264 for the mark JOS A. BANK registered on May 21, 1985, with a first use date in 1945.
Respondent’s domain names, <josbankus.store> and <josbankoutlets.store> are confusingly similar to the JOS A. BANK mark and to its own main domain name, <josbank.com>. The first disputed domain name contains the Complainant’s mark without the middle “A”, adds the letters “us” and the .store gTLD. In addition, the first disputed domain name differs from the Complainant’s main domain name by replacing the .com with .store and adding the letters “us”. The second disputed domain name differs from the Complainants mark in that it also removes the “A” but adds the term “outlets”. The second disputed domain name differs from the Complainant’s domain name by adding the term “outlets” and replacing the com with .store.
Respondent does not have any rights or legitimate interests to the domain name in that it has not been authorized by Complainant to use its marks nor is the Respondent known by the mark or the domain name. The Respondent was not given any licenses to use the domain name or any of the content it uses on the disputed domain names which it copied from Complainant’s main website. Respondent cannot claim that it is using the domain names in connection with a bona fide offering of goods or services because it is passing itself off a Complainant.
Respondent registered and is using the disputed domain names in bad faith. Prior to registering and/or using the disputed domain names, the Respondent had actual knowledge of the Complainant’s marks given that it has been trying to impersonate the Complainant and is purportedly selling counterfeit or unauthorized Complainant products through the disputed domain names.
B. Respondent
Respondent has not submitted a response in this matter. The disputed domain names, <josbankus.store> and <josbankoutlets.store> were registered on June 2, 2023, and June 12, 2023 respectively.
1. The domain names registered by Respondent are both intentional typos of Complainant’s mark and as such are confusing similar to the JOS A. BANK mark.
2. Respondent has no rights to or legitimate interests in respect of the domain names; and
3. The disputed domain names were clearly registered, and are currently being used, by Respondent 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 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”).
Complainant has rights in the JOS A. BANK mark through Complainant’s registration of the mark with the USPTO (e.g. Reg. No. 1,337,264, registered on May 21, 1985). See Compl. Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel may find Complainant has demonstrated rights in the JOS A. BANK mark per Policy ¶ 4(a)(i).
Both <josbankus.store> and <josbankoutlets.store> are confusingly similar to Complainant’s mark as Respondent merely removes the middle “A” from the JOS A. BANK mark and adds the descriptive terms “us” and “outlets”. In addition, the disputed domain names are confusingly similar to the Complainant’s domain name (which does not contain the “A”), in that it simply adds the descriptive terms “us” and “outlets” and replaces the “com” with .store.” Adding descriptive terms and a gTLD to a complainant’s mark may not sufficiently distinguish a disputed domain name from the mark under Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). Therefore, the Panel finds Respondent’s disputed domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
In addition to demonstrating that that the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights, the Complainant must make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Once that prima facie case is made, the burden shifts to Respondent to show 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 Respondent lacks rights or legitimate interests in the disputed domain names as Respondent is not commonly known by the disputed domain names nor has Complainant authorized or licensed to Respondent any rights in the JOS A. BANK mark. When a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). In addition, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain names lists the registrants as “风雷 孙” and “龙云 郭. The record contains no evidence that might otherwise tend to provide that the Respondent is either commonly known by the disputed domain names nor that it has any authorization to use the JOS A. BANK mark. The Panel therefore concludes that for the purposes of Policy ¶ 4(c)(ii) Respondent is not commonly known by the at-issue domain names.
Additionally, Respondent fails to use the disputed domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to pass off as a Complainant and offer competing services is generally not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business). Complainant provides screenshots of the disputed domain names’ resolving websites, which both resolve to very similar websites which purport to offer Complainant’s goods under the Complainant’s name JOS A. Bank. The website also features photos copied off of different parts of Complainant’s main website. In the “About us” section of the Respondent’s disputed domains, it states: “At .%s we love every passion and interest on Earth because it is a reference to your UNIQUENESS. And to spread exactly that...is our core vision” [Emphasis Added]. The Respondent obviously used form language in the About Us section and didn’t even bother to put in a company name which also tends to demonstrate that the Respondent is not only attempting to pass itself off as Complainant, but also that it is more likely than not running an abusive site designed as a scam.
In short, the evidence presented by Complainant clearly establishes that Respondent is attempting to impersonate and create a false connection with Complainant. Panels have consistently held that blatant unauthorized use of a Complainant’s marks is clear evidence that Respondent has no rights or legitimate interests in a disputed domain name. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that as Respondent attempted to pass itself off as Complainant online, through wholesale copying of Complainant’s website, Respondent had no rights or legitimate interests in the disputed domain name) and Choice Hotels International, Inc. v. Hotel Partners a/k/a eGO Inc., FA 190506 (Forum Oct. 6, 2003) ( “Respondent’s attempt to pass itself off as Complainant at the disputed domain name, without authorization or license by Complainant, coupled with Respondent’s failure to respond to the Complaint, is evidence that Respondent lacks rights or legitimate interests in the disputed domain name.”)
The Policy ¶ 4(b) provides a number of non-exclusive scenarios that constitute evidence of a respondent’s bad faith. Policy ¶¶ 4(b)(iii) and (iv) provide respectively that such evidence of use of in bad faith could include:
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
Complainant provides sufficient evidence demonstrating that Respondent is attempting to pass itself off as Complainant. Respondent is using the domain names for an online retail store offering for sale clothing branded with, and advertised under, Complainant’s JOS A. BANK mark. It also uses form language for a variety of the sections of the website which are either incomplete or are deliberately misleading. Further, the website takes actual photos used on the Complainant’s websites and uses them on the disputed domain names.
As such, it is clear that not only did Respondent have actual knowledge of the Complainant’s rights when it registered the disputed domain name, but also that Respondent was attempting to pass itself off as the Complainant to sell the complainant’s goods. This is direct evidence of bad faith under Policy ¶¶ 4(b)(iii) or (iv). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)); see also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with 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 <josbankus.store> and <josbankoutlets.store> domain names be TRANSFERRED from Respondent to Complainant.
Jeffrey J. Neuman, Panelist
Dated: August 29, 2023
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