DG Premium Brands LLC v. Donald Knapp
Claim Number: FA1708001746551
Complainant is DG Premium Brands LLC ("Complainant"), represented by Paul Gelb of Drinker Biddle & Reath LLP, California, USA. Respondent is Donald Knapp ("Respondent"), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ellamosstops.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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 E. Sorkin 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, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by email to the Forum that the <ellamosstops.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 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 email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@ellamosstops.com. Also on August 30, 2017, the Written Notice of the Complaint, notifying Respondent of the email 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 David E. Sorkin 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
The ELLA MOSS trademark has been used in connection with apparel and related goods and services since 2001. "Complainant and/or its affiliates"[1] own various U.S. and international registrations for the ELLA MOSS mark.
Respondent registered the disputed domain name <ellamosstops.com> in May 2017. The domain name is being used for a website that purports to sell "Ella Moss" women's clothing. Complainant alleges that Respondent is holding himself out as Complainant for commercial gain, and that the items being offered for sale on Respondent's website are counterfeit goods.
Complainant contends on these grounds that that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
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 disputed domain name <ellamosstops.com> combines Complainant's ELLA MOSS mark with the generic term "tops" and the ".com" top-level domain name. These additions do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., J. Choo Limited v. lee rose / Whois Agent, Whois Privacy Protection Service, Inc, D2016-1229 (WIPO Aug. 23, 2016) (finding <jimmychoopumps.com> confusingly similar to JIMMY CHOO); PRL USA Holdings, Inc. v. LucasCobb, D2006-0162 (WIPO Mar. 20, 2006) (finding <ralphlaurenpants.com> confusingly similar to RALPH LAUREN). The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights.
Under the Policy, Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's mark without authorization, and its sole apparent use has been to promote the sale of counterfeit products in a manner likely to confuse potential customers. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Kurk Wasserman Consulting, L.L.C. v. Elis Kias / AIMEI International Trade Co., Ltd, FA 1735426 (Forum July 10, 2017); Skechers U.S.A., Inc. & Skechers U.S.A., Inc. II v. Farhad Salimi, FA 1719039 (Forum Mar. 28, 2017).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent's registration of a domain name obviously intended to create confusion with Complainant, together with its use of that domain name in an attempt to sell counterfeit goods, is indicative of bad faith under these provisions of the Policy. See, e.g., Kurk Wasserman Consulting, L.L.C., supra; Skechers U.S.A., Inc., supra. The Panel finds that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ellamosstops.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: September 25, 2017
[1] Complainant is neither the registrant nor the current listed owner of any of the trademarks listed in the Complaint; they are all registered in the name of what appears to be an "affiliate" of Complainant. It would have been helpful to the Panel if Complainant had explained its connection to this entity in order to substantiate Complainant's claim to the requisite trademark rights.
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