Guru Denim Inc. d/b/a True Religion Brand Jeans v. WEI ZHANG
Claim Number: FA1606001679472
Complainant is Guru Denim Inc. d/b/a True Religion Brand Jeans (“Complainant”), represented by Anthony D. Peluso of Arent Fox LLP, California, USA. Respondent is WEI ZHANG (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <truereligionstore.com> and <truereligionestore.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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 14, 2016; the Forum received payment on June 14, 2016.
On June 15, 2016, eNom, Inc. confirmed by e-mail to the Forum that the <truereligionstore.com> and <truereligionestore.com> domain names are registered with eNom, Inc. and that Respondent is the current registrant of the names. 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 June 20, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 11, 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@truereligionstore.com, and postmaster@truereligionestore.com. Also on June 20, 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 July 20, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant owns trademark registrations for the TRUE RELIGION mark in the United States and other countries around the world and has also established common law rights in the TRUE RELIGION mark in the United States and other countries in connection with its high-quality designer garments and other retails products and services. Respondent's <truereligionstore.com> and <truereligionestore.com> domain names wholly incorporate Complainant's TRUE RELIGION mark. The disputed domain names only deviate from the TRUE RELIGION mark through the addition of (1) the generic descriptions 'store' and 'estore,' respectively, and (2) the generic top level domain name 'com.' Therefore, the disputed domain names are confusingly similar to Complainant's mark.
ii) Respondent has no rights or legitimate interests in the domain names. There is no evidence that Respondent owns any trademark or service mark rights or registrations that are identical, similar, or in any way related to the disputed domain names. Respondent is not commonly known by the domain names, and Complainant has not authorized Respondent to use Complainant's mark. Rather, the Whois records for the disputed domain names identify registrant as “Wei Zhang.''
iii) Complainant's mark is well known and widely advertised in the United States and other countries around the world. It can be inferred that Respondent has actual or constructive knowledge of Complainant's rights in the mark. Respondent has failed to discharge its contractual obligation to determine that the disputed domain names do not infringe the rights of a third party under Paragraph 2 of the Policy. Respondent has tried to profit from the goodwill associated with Complainant's mark by wholly incorporating the mark into the disputed domain names. Respondent is offering for sale on the corresponding website counterfeit versions of Complainant's products, and is displaying the Complainant's stylized logos without authorization. The commercial website to which the Disputed Domain Names resolve prominently displays infringing uses of Complainant’s registered trademarks, including both the TRUE RELIGION mark and the stylized TRUE RELIGION BRAND JEANS design mark, and offers for sale various denim products and other apparel bearing Complainant’s signature tag and stitching that are falsely advertised as “True Religion” brand products. Registration of a domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name and having engaged in a pattern of such past conduct is evidence of bad faith under the Policy. Respondent has engaged in pattern cybersquatting as evidenced by an adverse UDRP decision against it, further demonstrating that Respondent is acting in bad faith in the registration of the disputed domain names.
B. Respondent
Respondent has not submitted a Response in this proceeding. The Panel notes that the disputed domain names <truereligionstore.com> and <truereligionestore.com> were registered on March 7, 2016 and May 3, 2016 respectively.
Complainant established that it had rights in the mark contained in the disputed domain names. Each of the disputed domain names is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain names.
Respondent registered and used the disputed domain names 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.”).
Complainant contends that it owns trademark registrations for the TRUE RELIGION mark in the United States and other countries around the world and has also established common law rights in the TRUE RELIGION mark in the United States and other countries in connection with its high-quality designer garments and other retails products and services. The Panel finds from the Complainant's evidence that Complainant owns a service mark registration for the mark TRUE RELIGION (U.S. Registration No. 3,162,615; registered October 24, 2006) for on-line retail store services featuring clothing; retail store services featuring clothing, in Class 35. Panels have found that a registration with the USPTO is sufficient to establish rights in a trademark. See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i).). Therefore, the Panel concludes that Complainant has demonstrated rights in the TRUE RELIGION mark under Policy ¶ 4(a)(i).
Complainant asserts that Respondent’s domains are confusingly similar to the TRUE RELIGION mark as they incorporate the entire mark and add the generic terms “store” or “estore.” The Panel also notes that Respondent has affixed the generic top-level domain (“gTLD”) “.com” to the domains. Panels have held that neither the addition of a generic term nor the affixation of the “.com” gTLD is sufficient to differentiate a domain name from a mark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists 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.). Accordingly, the Panel agrees with Complainant and holds that Respondent’s domains are confusingly similar to Complainant’s mark.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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 (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 (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.”).
Complainant submits that there is no evidence that Respondent owns any trademark or service mark rights or registrations that are identical, similar, or in any way related to the disputed domain names. Complainant also alleges that Respondent is not commonly known by the domain names, and Complainant has not authorized Respondent to use Complainant's mark, and rather, the Whois records for the disputed domain names identify registrant as 'Wei Zhang.''
The Panel notes that the WHOIS information lists “Wei Zhang” as Registrant, and that Respondent has failed to provide further evidence to indicate that it is commonly known by the domain names. Panels have found, under similar circumstances, that a respondent is not commonly known by a domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Therefore, the Panel finds that Respondent is not commonly known by the domain names under Policy ¶ 4(c)(ii).
The Panel notes that Respondent is offering for sale on the corresponding website counterfeit versions of Complainant's products, and is displaying the Complainant's stylized logos without authorization. the commercial website to which the disputed domain names resolve prominently displays infringing uses of Complainant’s registered trademarks, including both the TRUE RELIGION Mark and the stylized TRUE RELIGION BRAND JEANS design mark, and offers for sale various denim products and other apparel bearing Complainant’s signature tag and stitching that are falsely advertised as “True Religion” brand products. Given the website contents of the disputed domain names, the Panel finds that Respondent has failed to use the domains to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Accordingly, the Panel concludes that Complainant has established the requirement under Policy ¶ 4(a)(ii).
Complainant alleges that i) Respondent's attempt to profit on the goodwill associated with Complainant's mark is clear, ii) Respondent has tried to profit from the goodwill associated with Complainant's mark by wholly incorporating the mark into the disputed domain names, iii) Respondent is offering for sale on the corresponding website counterfeit versions of Complainant's products, and is displaying the Complainant's stylized logos without authorization, and iv) the commercial website to which the disputed domain names resolve prominently displays infringing uses of Complainant’s registered trademarks, including both the TRUE RELIGION mark and the stylized TRUE RELIGION BRAND JEANS design mark, and offers for sale various denim products and other apparel bearing Complainant’s signature tag and stitching that are falsely advertised as “True Religion” brand products. Panels have agreed that passing off can lead to a finding of bad faith. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”). Accordingly, this Panel sees an attempt by Respondent to attract Internet users via confusingly similar domain names and induce them to interact with it through passing off and thereby accrue financial gain, conduct proscribed by Policy ¶ 4(b)(iv).
Complainant asserts that Complainant's mark is well known and widely advertised in the United States and other countries around the world, and thus it can be inferred that Respondent has actual or constructive knowledge of Complainant's rights in the mark. The Panel finds from the Complainant's evidence that Respondent is offering for sale on the corresponding website counterfeit versions of Complainant's products, and is displaying the Complainant's stylized logos without authorization. The commercial website to which the disputed domain names resolve prominently displays infringing uses of Complainant’s registered trademarks. The Panel agrees that the totality of the circumstances infers actual knowledge, and therefore that Respondent registered and subsequently used the disputed domain names in bad faith per 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").
Therefore, Complainant has established the requirement under 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 <truereligionstore.com> and <truereligionestore.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: July 28, 2016
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