Thom Browne, Inc. v. Junior Tejeda / Wangzhe trade company
Claim Number: FA1708001745805
Complainant is Thom Browne, Inc. (“Complainant”), represented by Edward F. Maluf of Seyfarth Shaw LLP, New York, USA. Respondent is Junior Tejeda / Wangzhe trade company (“Respondent”), South Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thombrowne.us.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco, as Panelist.
Complainant participated in the mandatory CentralNic Mediation, and the mediation process was terminated.
Complainant submitted a Complaint to the Forum electronically on August 23, 2017; the Forum received payment on August 23, 2017.
On August 24, 2017, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <thombrowne.us.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the CentralNic Dispute Resolution Policy (the “CDRP”).
On August 29, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 18, 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@thombrowne.us.com. Also on August 29, 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 September 21, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 to the CDRP (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 CDRP, CDRP 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 contends as follows:
Complainant is a high fashion apparel and accessories company based out of New York City.
Complainant registered its THOM BROWNE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,560,533, registered July 1, 2014).
Respondent’s <thombrowne.us.com> is confusingly similar to the mark because it incorporates it in its entirety, adds the “.us” country code top-level domain (“ccTLD”), and the “.com” generic top-level domain (“gTLD”).
Respondent has no right or legitimate interest in the disputed domain name. Respondent is not commonly known by the disputed domain name. Respondent has not made a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the mark. Respondent’s intent in operating the disputed domain name is simply to divert consumers Respondent’s website to sell or promote counterfeit goods for Respondent’s commercial gain.
Respondent has registered or is using the disputed domain name in bad faith. Respondent is the registrant of multiple domains bearing the marks of other famous clothing brands. Respondent’s other sites have been shut down due to federal court proceedings, indicating a pattern under Policy ¶ 4(b)(ii). Respondent has also sold counterfeit merchandise bearing the THOM BROWN mark through the domain name, indicating an intent to disrupt the business of Complainant per Policy ¶ 4(b)(iii).
B. Respondent
Complainant contends as follows:
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the THOM BROWN mark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the THOM BROWN trademark.
Respondent uses the domain name to operate a website that sells counterfeit THOM BROWN goods.
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.
The CDRP also requires that Complainant have participated in a CentralNic Mediation, and that said mediation must have been terminated prior to the consideration of the Complaint.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the CDRP, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The at-issue domain name is identical to a trademark in which Complainant has rights.
Complainant shows it registered its THOM BROWN mark with the USPTO. Such registration is conclusive evidence of Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Respondent’s <thombrowne.us.com> domain name contains Complainant’s entire THOM BROWN trademark, less its space, with the country code top-level “.us” and generic top-level “.com” appended thereto. The addition of top level domain names to Complainant’s trademark does nothing to distinguish the at-issue domain name from Complainant’s mark for the purpose of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <thombrowne.us.com> domain name is identical to Complainant’s THOM BROWN trademark. See EMVCo, LLC c/o Visa Holdings v. Stephanie Wells, FA 1617890 (Forum June 11, 2015) (asserting, “‘ccTLDs’ are irrelevant to Policy ¶ 4(a)(i) analysis.”); see also Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Junior Tejeda” and the record before the Panel contains no evidence that otherwise tends to prove that Respondent is commonly known by the <thombrowne.us.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the <thombrowne.us.com> domain name for the purposes of Policy ¶ 4(c)(ii). SeeCoppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent’s <thombrowne.us.com> domain name addresses a website that offers counterfeit THOM BROWN products. The website displays the THOM BROWN mark and poses as one of Complainant’s sponsored websites. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶4(c)(iii). See eLuxury.com Inc. v. WangJunJie, FA 1075554 (Forum Nov. 30, 2007) (concluding that the sale of counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name).
Given the foregoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below Policy ¶4(b) bad faith circumstances are present and there is additional non-Policy ¶4(b) evidence from which the Panel may independently conclude that Respondent acted in bad faith pursuant to Policy ¶4(a)(iii).
Respondent’s confusingly similar domain name creates confusion among internet users because the domain name includes Complainant’s trademark and because Respondent offers counterfeit products on a website addressed by the <thombrowne.us.com> domain name. These circumstances demonstrate bad faith registration and use of the <thombrowne.us.com> domain name under both Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv). See H-D U.S.A., LLC v. Janis Vecvanags, FA1503001608165 (Forum April 6, 2015) (holding that the respondent’s use of the disputed domain name to sell counterfeit HARLEY-DAVIDSON products disrupted the complainant’s business and indicated bad faith under Policy ¶ 4(b)(iii)); see also, Dell Inc. v. Innervision Web Solutions, FA 445601 (Forum May 23, 2005), (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services).
Next, Respondent’s fraudulent scheme relies on Respondent passing itself off as Complainant by using Complainant’s trademark in its domain name and by imitating Complainant’s official website. Passing off is additional evidence of Respondent’s bad faith registration and use of the <thombrowne.us.com> domain name. . See Target Brands, Inc. v. JK Internet Servs., FA 349108 (Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”).
Additionally, Respondent had actual knowledge of Complainant’s rights in the THOM BROWN mark when it registered the <thombrowne.us.com> domain name. Respondent’s actual knowledge is evident from the notoriety of Complainant’s trademark; from Respondent’s use of Complainant’s trademark and trade dress on the <thombrowne.us.com> website; and from Respondent’s offering of counterfeit THOM BROWN products on such website. Registering and using a trademark identical domain name with knowledge of Complainant’s rights in such domain name indicates bad faith registration and use pursuant to Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name).
Finally, the ultimate findings reached above regarding Respondent’s bad faith in the instant case appear to be consistent with judicial conclusions reached in multiple third party trademark actions involving domains names also registered by Respondent. These adverse decisions indicate a pattern of online domain name abuse by Respondent and suggest bad faith in the instant case pursuant to Policy ¶ 4(a)(ii). See Bullock v. Network Operations Ctr., FA 1269834 (Forum Aug. 10, 2009) (“Complainant contends that Respondent has a longstanding history of cybersquatting . . . . The Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(ii).”).
Having established all three elements required under the CDRP, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <thombrowne.us.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: September 25, 2017
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