A & H Sportswear Co., Inc. v. Santa SAR
Claim Number: FA2308002056411
Complainant is A & H Sportswear Co., Inc. (“Complainant”), represented by Yuo-Fong C. Amato of A & H Sportswear Co., Inc., Pennsylvania, USA. Respondent is Santa SAR (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <miraclesuitsale.shop>, <miraclesuitoutlet.shop>, and <miraclesuitswimwear.shop>, (‘the Domain Names’) registered with NameCheap, 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.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to Forum electronically on August 7, 2023; Forum received payment on August 7, 2023.
On August 7, 2023, NameCheap, Inc. confirmed by e-mail to Forum that the <miraclesuitsale.shop>, <miraclesuitoutlet.shop>, and <miraclesuitswimwear.shop> Domain Names are registered with NameCheap, Inc. and that Respondent is the current registrant of the names. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 August 8, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 28, 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@miraclesuitsale.shop, postmaster@miraclesuitoutlet.shop, and postmaster@miraclesuitswimwear.shop. Also on August 8, 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 29, 2023 pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Dawn Osborne 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.
A. Complainant
The Complainant owns the trade mark MIRACLE SUIT registered, inter alia, in the USA for swimwear with first use recorded as 1991.
The Domain Names registered in 2023 are confusingly similar to the Complainant’s trade mark containing it in its entirety and merely adding the generic terms ‘sale’, ‘outlet’ or ‘swimwear’ and the gTLD .shop which do not prevent said confusing similarity between any of the Domain Names and the Complainant’s mark.
Respondent is not commonly known by the Domain Names and is not authorised by the Complainant. The web site connected with the Domain Names purports to sell the Complainant’s products using images and text taken from the Complainant’s site. Since Internet users will be duped into believing the sites attached to the Domain Names are connected with the Complainant this is not legitimate. It is registration and use in bad faith confusing and diverting Internet users for commercial gain and disrupting the Complainant’s business. The use of the Complainant’s images and text shows the Respondent had actual knowledge of the Complainant, its rights, business and products.
The Respondent appears to have given fake address details to the WhoIs register.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant owns the trade mark MIRACLE SUIT registered, inter alia, in the USA for swimwear with first use recorded as 1991.
The Domain Names registered in 2023 are attached to sites purporting to sell the Complainant’s products using unauthorised images and text taken from the Complainant’s site. The Respondent has given a false address in the WhoIS register for the Domain Names.
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”).
The Domain Names consists of the Complainant's MIRACLE SUIT mark (which is registered in USA for swimwear with first use recorded as 1991), the generic terms ‘sale’, ‘outlet’ or ‘swimwear’ and the gTLD .shop.
Previous panels have found confusing similarity when a respondent merely adds a generic term to a Complainant's mark. See PG&E Corp. v Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underlying mark held by the Complainant). The Panel agrees that the addition of the generic terms ‘sale’, ‘outlet’ or ‘swimwear’ does not prevent confusing similarity between the Domain Names and the Complainant's registered trade mark.
The gTLD .shop does not serve to prevent confusing similarity between the Domain Names and the Complainant’s mark. See Red Hat Inc v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Names are confusingly similar to the Complainant’s registered mark.
As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.
Rights or Legitimate Interests
The Complainant has not authorised the use of its mark. There is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Names or any of them. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA 1574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The use is commercial and so cannot be non commercial legitimate fair use.
The web sites attached to the Domain Names used the Complainant's images and text taken from the Complainant’s site to suggest that they were official sites of the Complainant when they were not. The Panel finds this use is deceptive and confusing. As such it cannot amount to the bona fide offering of goods and services. See Am. Intl Group Inc v Benjamin FA 944242 (Forum May 11, 2007) (finding that the Respondent's use of a confusingly similar domain name to compete with the Complainant's business did not constitute a bona fide use of goods and services).
The Respondent has not answered the Complaint or rebutted the prima facie case evidenced by the Complainant as set out herein.
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Names and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
In the opinion of the panelist the use made of the Domain Names in relation to the Respondent’s site is confusing and disruptive in that visitors to the site might reasonably believe they are connected to or approved by the Complainant as they offer products under the Complainant’s mark using images and text taken from Complainant’s web site giving the impression that the site attached to the Domain Name is official. The use of the Complainant’s images and text and the reference to the Complainant’s products on the site shows that the Respondent has actual knowledge of the Complainant and its business, products and rights.
Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant's trade mark as to the source, sponsorship, affiliation or endorsement of the web site or products on it it likely to disrupt the business of the Complainant. See Asbury Auto Group Inc v Tex. Int'l Prop Assocs, FA 958542 (Forum May 29, 2007) (finding that the respondent's use of the disputed domain name to compete with the complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of a competing business and was therefore evidence of bad faith and use).
Providing false information at the time of a domain name’s registration may be evidence of respondent’s bad faith registration and use under Policy 4(a)(iii). See Farouk Systems, Inc. v. Jack King / SLB, FA 1618704 (Forum June 19, 2015) (finding bad faith registration and use pursuant to Policy ¶ 4(a)(iii) where the respondent had provided false contact information when registering the disputed domain name). Here in the context of the unauthorised copying of materials from the Complainant’s web site providing false address details seems clearly in bad faith.
As such, the Panelist believes that the Complainant has made out its case that the Domain Names were registered and used in bad faith and has satisfied the third limb of the Policy under Paragraphs 4(b)(iii) and (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <miraclesuitsale.shop>, <miraclesuitoutlet.shop>, and <miraclesuitswimwear.shop> domain names be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: August 29, 2023
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