PAIGE, LLC v. Chris Kimber
Claim Number: FA1701001714208
Complainant is PAIGE, LLC (“Complainant”), represented by Nathaniel Dang of JEFFER MANGELS BUTLER & MITCHELL LLP, California, USA. Respondent is Chris Kimber (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <paigejeansuk.com>, registered with GoDaddy.com, LLC.
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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 25, 2017; the Forum received payment on January 25, 2017.
On January 26, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <paigejeansuk.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 26, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 15, 2017 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@paigejeansuk.com. Also on January 26, 2017, 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 23, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn 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 engages in business endeavors in the clothing industry. Complainant has registered the PAIGE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,046,193, registered Oct. 25, 2011), in connection with “jeans, pants, leggings, skirts, dresses, shirts, t-shirts, tank tops, jackets, in class 25.”. Respondent’s <paigejeansuk.com> is confusingly similar because it includes the PAIGE mark entirely, the descriptive term “jeans” and the geographically descriptive term “uk”.
Respondent has no rights or legitimate interests in <paigejeansuk.com>. Respondent is not commonly known by the domain name, nor has Respondent made a bona fide offering of goods or services or any legitimate noncommercial or fair use. Rather, Respondent has purported to offer counterfeit products of competing brands to Complainant’s PAIGE mark. There is no connection with Complainant, as the website imputes through liberal use of Complainant’s PAIGE mark without a disclaimer.
Respondent is engaged in offering for sale counterfeit PAIGE jeans, shorts, and pants as well as counterfeit apparel purporting to be made by Complainant’s competitors. This is bad faith under Policy ¶ 4(b)(iv).
B. Respondent
The Panel notes that <paigejeansuk.com> was registered on August 19, 2016.
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).
Identical or Confusingly Similar: Policy ¶ 4(a)(i).
Complainant claims it has registered the PAIGE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,046,193, registered Oct. 25, 2011), in connection with “jeans, pants, leggings, skirts, dresses, shirts, t-shirts, tank tops, jackets, in class 25.”. USPTO registrations confer rights under Policy ¶ 4(a)(i). See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office.). Accordingly, the Panel agrees that Complainant has rights in the PAIGE mark under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <paigejeansuk.com> is confusingly similar because it includes the PAIGE mark entirely, the descriptive term “jeans” and the geographically descriptive term “uk,”. Such alterations have not been considered distinguishing features under Policy ¶ 4(a)(i). See Kohler Co. v. Curley, FA 890812 (Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also Hess Corp. v. GR, FA 770909 (Forum Sept. 19, 2006) (finding that the respondent’s <hess-uk.com> domain name was confusingly similar to the complainant’s HESS mark, as the mere addition of “uk” and a hyphen failed to sufficiently differentiate the disputed domain name from the registered mark). Accordingly, the Panel agrees that “jeans” is descriptive of Complainant’s business offerings , and “uk” is an irrelevant addition under the Policy, creating confusing similarity under Policy ¶ 4(a)(i).
Complainant argues that Respondent has no rights or legitimate interests in <paigejeansuk.com>. Complainant contends that Respondent is not commonly known by the domain name. Where there is no response on record, WHOIS information may form the basis of a Policy ¶ 4(c)(ii) finding. See Chevron Intellectual Property LLC v. Fred Wallace, FA 1626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS lists “Chris Kimber.” Therefore, the Panel finds that Respondent is not commonly known by <paigejeansuk.com>.
Complainant contends that Respondent has not made a bona fide offering of goods or services or any legitimate noncommercial or fair use. Rather, Complainant asserts that Respondent has purported to offer counterfeit products of competing brands to Complainant’s PAIGE mark. Where counterfeit products are offered, there may be no rights or legitimate interests. See Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015) (finding no bona fide offering of goods or legitimate noncommercial or fair use existed where Respondent used the resolving website to sell products branded with Complainant’s MERRELL mark, which were either counterfeit products or legitimate products of Complainant being resold without authorization). Here, Complainant argues that there is no connection with Complainant, as the website imputes through its liberal use of Complainant’s PAIGE mark without a disclaimer. Accordingly, this Panel agrees that it seems Respondent is engaged in the counterfeit offer of goods and therefore has no rights under Policy ¶¶ 4(c)(i) or (iii).
Thus, Complainant has also satisfied Policy ¶¶ 4(a)(ii).
Complainant argues that Respondent has registered and used <paigejeansuk.com> in bad faith. Complainant contends Respondent is engaged in offering for sale counterfeit PAIGE jeans, shorts, and pants as well as counterfeit apparel purporting to be made by Complainant’s competitors, and that this constitutes bad faith under Policy ¶ 4(b)(iv). Similar circumstances have returned such findings. See H-D Michigan, LLC v. Ross, FA 1250712 (Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion). Accordingly, the Panel agrees that the evidence supports that counterfeit use has been engaged in by Respondent, and that such use imputes Policy ¶ 4(b)(iv) in bad faith.
Thus, Complainant has also 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 <paigejeansuk.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
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