The Men's Wearhouse, Inc. v. BLADIMIR BOYIKO
Claim Number: FA1512001654753
Complainant is The Men's Wearhouse, Inc. (“Complainant”), represented by Lynn M. Humphreys of The Men's Wearhouse, Inc., California, USA. Respondent is BLADIMIR BOYIKO (“Respondent”), of the Russian Federation.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <menwearhouse.com>, registered with eNom, Inc.
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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 30, 2015; the Forum received payment on December 30, 2015.
On December 31, 2015, eNom, Inc. confirmed by e-mail to the Forum that the <menwearhouse.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 January 4, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 25, 2016 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@menwearhouse.com. Also on January 4, 2016, 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 February 1, 2016, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the Forum appointed The Honourable Neil
Anthony Brown QC, 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
Complainant made the following contentions:
Complainant uses the mark MEN’S WEARHOUSE in connection with its accessory and clothing lines. Complainant has registered the MEN’S WEARHOUSE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,672,903, registered January 21, 1992), which demonstrates rights in the mark. Complainant also uses the mark THE MEN’S WEARHOUSE mark in connection with its retail clothing store services. Complainant has registered the mark THE MEN’S WEARHOUSE with the USPTO (Reg. Nos. 1,521,918 and 2,374,245 registered January 24, 1989 and August 8, 2000, respectively).
Respondent has no rights or legitimate interests in the <menwearhouse.com> domain name. Respondent is not commonly known by the disputed domain name. Further, Respondent is making neither a bona fide offering of goods or services, nor a legitimate or fair use through the <menwearhouse.com> domain name. Rather, the domain name resolves to the websites of Complainant’s competitors through advertising systems from which Respondent presumably nets profits for traffic to these websites. See Compl., at Attached Annex 4 (screenshot of page which resolves from the <menwearhouse.com> domain).
Respondent is using the <menwearhouse.com> domain name in bad faith. Respondent has a pattern of bad faith registration and use as evidenced by a history of adverse UDRP decisions. See Compl., at Attached Annex 8. Further, Respondent also attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the provision of accessory and clothing lines.
2. Complainant has registered the MEN’S WEARHOUSE mark with the USPTO (Reg. No. 1,672,903, registered January 21, 1992), which demonstrates rights in the mark. Complainant also uses the mark THE MEN’S WEARHOUSE mark in connection with its retail clothing store services. Complainant has registered the mark THE MEN’S WEARHOUSE with the USPTO (Reg. Nos. 1,521,918 and 2,374,245 registered January 24, 1989 and August 8, 2000, respectively).
3. Respondent registered the <menwearhouse.com> domain name on May 7, 2002.
4. The domain name resolves to the websites of Complainant’s competitors through advertising systems from which Respondent presumably nets profits for traffic to these websites.
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 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 (Nat. Arb. 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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it can rely. Complainant uses the mark MEN’S WEARHOUSE in connection with its accessory and clothing lines. Complainant submits and has established that it has registered the MEN’S WEARHOUSE mark with the USPTO (Reg. No. 1672903, registered January 21, 1992), which demonstrates rights in the mark. Complainant also uses the mark THE MEN’S WEARHOUSE in connection with its retail clothing store services. Complainant also contends that it has registered the mark THE MEN’S WEARHOUSE with the USPTO (Reg. No. 1521918, registered January 24, 1989). Complainant alleges it uses the mark THE MEN’S WEARHOUSE in connection with its accessory and clothing lines. Complainant has registered the mark THE MEN’S WEARHOUSE with the USPTO (Reg. No. 2374245, registered August 8, 2000). Panels have found that a complainant’s valid USPTO registration is sufficient in establishing rights in a mark per Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Complainant has demonstrated rights in the MEN’S WEARHOUSE and THE MEN’S WEARHOUSE marks under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to any of Complainant’s marks. Complainant argues that Respondent’s <menwearhouse.com> domain name is confusingly similar to the MEN’S WEARHOUSE mark as it incorporates all but the apostrophe and the letter “s” from the mark and adds the “.com” gTLD. Complainant further argues that Respondent’s <menwearhouse.com> domain name is also confusingly similar to Complainant’s THE MEN’S WEARHOUSE mark as it incorporates all of the mark except the word “the,” the apostrophe, and the letter “s” and adds the “.com” gTLD. Panels have found that such alterations to a mark are insufficient in overcoming a finding of confusing similarity under Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it); see also Chi-Chi’s, Inc. v. Rest. Commentary, D2000-0321 (WIPO June 29, 2000) (finding the domain name <chichis.com> to be identical to the complainant’s CHI-CHI’S mark, despite the omission of the apostrophe and hyphen from the mark); see also Antoun v. Truth Squad, FA 114766 (Nat. Arb. Forum Aug. 21, 2002) (stating that the article "the" is "often added only for grammatical purposes, and may be superfluous to the name itself"). The Panel therefore finds that Respondent’s <menwearhouse.com> domain name is confusingly similar to the MEN’S WEARHOUSE and THE MEN’S WEARHOUSE marks under Policy ¶ 4(a)(i).
Complainant also argues that Respondent is engaging in “typosquatting,” which past Panels have found to be further evidence of confusing similarity. See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that the respondent’s domain name <wwwbankofamerica.com> is confusingly similar to the complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”). Therefore, the Panel finds that Respondent’s <menwearhouse.com> domain name is a typosquatted variation of the MEN’S WEARHOUSE mark which further supports a finding of confusing similarity per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s MEN’S WEARHOUSE and THE MEN’S WEARHOUSE marks and to use them in its domain name with only minor alterations;
(b) Respondent has then caused the domain name to resolve to the websites of Complainant’s competitors through advertising systems from which Respondent presumably nets profits for traffic to these websites;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant argues that Respondent has no rights or legitimate interests in the <menwearhouse.com> domain name because Respondent is not commonly known by the disputed domain name. The WHOIS information regarding the disputed domain name lists “Bladimir Boyiko” as registrant. The Panel also notes that Respondent has failed to submit a response in this proceeding. Therefore, in light of the available evidence, the Panel finds that there is no basis to find that Respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name);
(e) Further, Complainant argues that Respondent is neither making a bona fide offering of goods or services nor a legitimate noncommercial or fair use through the <menwearhouse.com> domain name. Rather, Complainant contends that the domain name resolves to the websites of third party and competing businesses from which Respondent presumably nets pay-per-click profits. See Compl., at Attached Annexes 5 and 7. Complainant alleges that before the domain name resolves to one of these websites, there are two web addresses that flash across the screen: <btnativedirect> and <AMPxchange.com>. Complainant contends that these names are Internet advertising platforms. Complainant further contends that the AMPxchange website states that the service compensates for clicks on online advertisements and for generating traffic to an advertiser’s site. See Compl., at Attached Annex 6. Panels have agreed that such competing use evinces neither a bona fide offering of goods or services nor any legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute 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)). Accordingly, the Panel determines that Respondent’s reported use of the <menwearhouse.com> domain name to compete with Complainant furnishes no basis for which a finding of rights and legitimate interests would be appropriate.
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant contends that Respondent has a pattern of domain name misuse as evidenced by more than twenty UDRP decisions ordering the transfer of domain names back to the trademark owners. See Compl., at Attached Annex 8. The Panel agrees with Complainant and holds that a history of adverse UDRP decisions, as in the present case, shows a pattern of bad faith registration and use pursuant to Policy ¶ 4(b)(ii). See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations).
Secondly, Complainant contends that Respondent has also attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website. The Panel agrees with Complainant and holds that Internet user confusion, which subsequently results in the redirection to competitors’ sites through “pay for traffic” advertising systems, constitutes bad faith attempted attraction for commercial gain under Policy ¶ 4(b)(iv). See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the MEN’S WEARHOUSE and MEN’S WEARHOUSE marks
and in view of the conduct that Respondent engaged in when using it, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <menwearhouse.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC,
Panelist
Dated: February 3, 2016
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