Stitch Fix, Inc. v. var char
Claim Number: FA2205001997811
Complainant is Stitch Fix, Inc. (“Complainant”), represented by Jered E. Matthysse, Texas, USA. Respondent is var char (“Respondent”), Monaco.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <stitchfixinc.com>, registered with NameCheap, Inc.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 24, 2022; the Forum received payment on May 24, 2022.
On May 25, 2022, NameCheap, Inc. confirmed by e-mail to the Forum that the <stitchfixinc.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. 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 May 26, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 15, 2022 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@stitchfixinc.com. Also on May 26, 2022, 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 June 20, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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.
A. Complainant
1. Respondent’s <stitchfixinc.com> domain name is confusingly similar to Complainant’s STITCH FIX mark.
2. Respondent does not have any rights or legitimate interests in the <stitchfixinc.com> domain name.
3. Respondent registered and uses the <stitchfixinc.com> domain name in bad faith.
B. Respondent did not file a Response.
Complainant is an online clothing retailer, and holds a registration for the STITCH FIX mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 5,712,506 registered April 2, 2019).
Respondent registered the <stitchfixinc.com> domain name on June 6, 2021, and uses it to host pay-per-click advertisements, and to conduct a phishing scheme.
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 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”).
Respondent’s <stitchfixinc.com> domain name uses Complainant’s STITCH FIX mark and adds the term “inc” and the “.com” gTLD. The addition of a descriptive term and gTLD fails to sufficiently distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). Therefore, the Panel finds that Respondent’s <stitchfixinc.com> domain name is confusingly similar to Complainant’s STITCH FIX mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 argues that Respondent lacks rights and legitimate interests in the <stitchfixinc.com> domain name, as Respondent is not commonly known by the disputed domain name and has no license or consent to use the STITCH FIX mark. The WHOIS information shows that Respondent is known as “var char.” Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name, and thus has no rights under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name); see also 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)”).
Complainant also argues that Respondent uses the <stitchfixinc.com> domain
name to further a fraudulent phishing scam by redirecting users to
Complainant’s own webpage and prompting users to enter contact information. Phishing
is a practice used to defraud internet users into revealing personal
information. Using a domain name in a phishing scheme is not a bona fide
offering of goods or services under Policy ¶ 4(c)(i), or a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). See Enterprise Holdings, Inc. v. I S / Internet Consulting
Services Inc., FA 1785242 (Forum
June 5, 2018) (“On its face, the use of a domain name
that is confusingly similar to the mark of another in order to facilitate a
phishing scheme cannot be described as either a bona fide offering
of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or
fair use under Policy ¶ 4(c)(iii).”). Complainant provides screenshots
of the resolving webpage asking for users’ contact information. Therefore, the
Panel finds that this is not a bona fide offering of goods or services or
a legitimate noncommercial or fair use, and thus Respondent has no rights under
Policy ¶ 4(c)(i) or 4(c)(iii).
Complainant contends that Respondent’s use of <stitchfixinc.com> to
resolve to a site containing pay-per-click hyperlinks and advertisements also
does not qualify as a bona fide offering or a legitimate noncommercial
or fair use. Complainant provides screenshots showing the pay-per-click
advertising at <stitchfixinc.com>. The Panel agrees that
this is further evidence that Respondent lack rights under Policy ¶ 4(c)(i) and
4(c)(iii). See Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (concluding that
the operation of a pay-per-click website at a confusingly similar domain name
does not represent a bona fide offering of goods or services or a
legitimate noncommercial or fair use, regardless of whether or not the links
resolve to competing or unrelated websites or if the respondent is itself
commercially profiting from the click-through fees).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <stitchfixinc.com> domain name in bad faith because Respondent disrupts Complainant’s business and attempts to attract Internet users to its website for commercial gain. Using a disputed domain name to pass off as a complainant evinces bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See 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.”); see also Yahoo! Inc. v. Web Master, FA 127717 (Forum Nov. 27, 2002) (“By use of <yahgo.com> to operate its search engine, a name that infringes upon Complainant’s mark, Respondent is found to have created circumstances indicating that Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website as proscribed in Policy ¶ 4(b)(iv).”). Accordingly, the Panel finds that Respondent registered and used the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Complainant argues that Respondent had actual knowledge of Complainant’s rights in the STITCH FIX mark when it registered the <stitchfixinc.com> domain name. To support this assertion, Complainant points to its trademark registrations along with the fact that Respondent attempts to pass off as Complainant. The Panel agrees and finds that Respondent had actual knowledge of Complainant’s right in the STITCH FIX mark, and finds further bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <stitchfixinc.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: June 20, 2022
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