DG Premium Brands LLC v. Mo Zeghloul
Claim Number: FA1708001746550
Complainant is DG Premium Brands LLC (“Complainant”), represented by Paul Gelb Gelb of Drinker Biddle & Reath LLP, California, USA. Respondent is Mo Zeghloul (“Respondent”), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <7forallmankindjeansshop.com> and <7forallmankindjeansoutlet.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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 28, 2017; the Forum received payment on August 28, 2017.
On August 30, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <7forallmankindjeansshop.com> and <7forallmankindjeansoutlet.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 August 30, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 19, 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@7forallmankindjeansshop.com, postmaster@7forallmankindjeansoutlet.com. Also on August 30, 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 20, 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 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant, DG Premium Brands LLC, is a global manufacturer and marketer of private label apparel products. In connection with this business, Complainant uses the 7 FOR ALL MANKIND mark to promote its goods and services.
Complainant has rights in the 7 FOR ALL MANKIND mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (i.e. Reg. No. 2,890,644, registered Oct. 5, 2004).
Respondent’s <7forallmankindjeansshop.com> and <7forallmankindjeansoutlet.com> are confusingly similar as they add the generic terms “jeans,” “shop,” and “outlet,” as well as the generic top-level-domain (“gTLD”) “.com” to Complainant’s wholly incorporated mark.
Respondent lacks rights and legitimate interests in the disputed domain name. Nothing in the record shows that Respondent is commonly known by or affiliated with the 7 FOR ALL MANKIND mark. Complainant also does not permit, license, or authorize Respondent to use the mark for any purpose. Respondent does not use the disputed domain for any bona fide offering of goods or services because Respondent passes itself off as Complainant to sell counterfeit versions of Complainant’s goods.
Respondent registered and uses the <7forallmankindjeansshop.com> and <7forallmankindjeansoutlet.com> domain names in bad faith. Respondent passes itself off as Complainant to attract internet users otherwise seeking Complainant, for Respondent’s commercial gain. Finally, Respondent must have had actual or constructive knowledge of Complainant’s 7 FOR ALL MANKIND mark because of the name used for the domain names and the use made of them.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the 7 FOR ALL MANKIND mark through its registration of such marks with the USPTO, and otherwise.
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 its relevant trademarks.
Respondent uses the at-issue domain names to pass itself off as Complainant and sell counterfeit versions of Complainant’s 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.
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 names are each confusingly similar to trademarks in which Complainant has rights.
Complainant’s ownership of a USPTO trademark registration for 7 FOR ALL MANKIND demonstrates its rights in a mark for the purposes of 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.).
Each at-issue domain name contains Complainant’s 7 FOR ALL MANKIND trademark less its spaces, followed by the descriptive term “jean” and either the descriptive term “shop” or “outlet.” Each domain name has the top-level domain name “.com” appended to the relevant second level string. However, the alterations to Complainant’s trademark are insufficient to distinguish either at-issue domain name from Complainant’s mark for the purposes of the Policy. In fact, the domain names’ inclusion of suggestive generic terms only adds to the confusion resulting from the presence of Complainant’s 7 FOR ALL MANKIND trademark in the at-issue domain names. Therefore, the Panel finds that the <7forallmankindjeansshop.com> and <7forallmankindjeansoutlet.com> domain names are each confusingly similar to Complainant’s trademark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist 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.).
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, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of each at-issue domain name. Respondent is not authorized to use Complainant’s trademarks 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 either of the at-issue domain names.
WHOIS information for the at-issue domain names lists ““Mo Zeghloul” as the domain names’ registrant. There is nothing in the record that otherwise suggests Respondent is commonly known by either Respondent’s <7forallmankindjeansshop.com> or <7forallmankindjeansoutlet.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain names pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) … does not apply); see also, Instron Corp. v. Kaner, FA 768859 (Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Respondent uses the at-issue domain names to pose as Complainant so that it might sell counterfeit versions of Complainant products online. Using the domain name in this manner is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”);
Given the foregoing, Complainant satisfies its initial burden under Policy ¶4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain names.
The domain names were each registered and used in bad faith. As discussed below, Policy ¶4(b) specific bad faith circumstances as well as other circumstance are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy regarding the <7forallmankindjeansshop.com> and <7forallmankindjeansoutlet.com> domain names.
Respondent’s confusingly similar domain names create confusion among internet users primarily because the domain names each include Complainant’s trademark and because Respondent offers counterfeit 7 FOR ALL MANKIND products on the addressed website(s). These circumstances demonstrate bad faith registration and use of the <7forallmankindjeansshop.com> and <7forallmankindjeansoutlet.com> domain names 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).
Furthermore, Respondent’s scheme relies on passing itself off as Complainant by imitating Complainant’s website and, inter alia, by explaining away apparent discrepancies between website images and the products actual distributed by Respondent. Passing off is additional evidence of Respondent’s bad faith registration and use of the domain names. . 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.”).
Finally, Respondent had actual knowledge of Complainant’s rights in the 7 FOR ALL MANKIND mark when it registered the <7forallmankindjeansshop.com> and <7forallmankindjeansoutlet.com>domain names. 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 <7forallmankindjeansshop.com> and <7forallmankindjeansoutlet.com> website(s); and from Respondent’s offering of counterfeit 7 FOR ALL MANKIND products via such website(s). Registering and using a confusingly similar domain with knowledge of a 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <7forallmankindjeansshop.com> and <7forallmankindjeansoutlet.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: September 24, 2017
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