Adriano Goldschmied, LLC v. Mo Zeghloul / Vincent Williams
Claim Number: FA1802001772177
Complainant is Adriano Goldschmied, LLC (“Complainant”), represented by Philip Nulud of Buchalter, California, USA. Respondent is Mo Zeghloul / Vincent Williams (“Respondent”), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <agjeansoutletstore.com> and <agjeanssaleonline.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 15, 2018; the Forum received payment on February 15, 2018.
On February 16, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <agjeansoutletstore.com> and <agjeanssaleonline.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 February 19, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 12, 2018 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@agjeansoutletstore.com, postmaster@agjeanssaleonline.com. Also on February 19, 2018, 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 March 19, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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, Adriano Goldschmied, LLC, is well known around the world, and began selling its signature premium jeans in 1998 under the brand AG ADRIANO GOLSCHMIED. Complainant also uses the marks AG and AG JEANS to market its products. Complainant owns registrations for AG mark through the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,972,536 registered Jun. 7, 2011). See Compl. Annex 3. Respondent’s <agjeansoutletstore.com> and <agjeanssaleonline.com> domain names are confusing similar to Complainant’s AG JEANS mark as the domain names combine said mark entirely while merely adding descriptive terms.
Respondent should be considered as having no rights or legitimate interests in respect to the disputed domain names. Based on the WHOIS information and/or Respondent’s lack of authorization to use Complainant’s marks, Respondent is not commonly known by the at issue domain names, as the registrants are listed as “Mo Zeghloul” and “Vincent Williams.” See Compl. Annex 2. Respondent’s use of the domain names at issue do not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Rather, Respondent’s domain names resolve to websites that appear to use images taken from Complainant’s website agjeans.com. Additionally, attempts to purchase goods from Respondent’s resolving websites do not go through nor are the goods shipped.
Respondent’s registered and used the <agjeansoutletstore.com> and <agjeanssaleonline.com> domain names in bad faith. Respondent’s bad faith is evident because the domain names at issue were registered in order to prevent Complainant from reflecting its mark in corresponding domain names. Further, Respondent’s use of the domain names to provide unauthorized counterfeit products tarnishes Complainant’s reputation and goodwill. Additionally, Respondent attempts to phish for internet users personal and financial information and gain commercially through the disputed domain names. Lastly, Respondent provided false and misleading WHOIS information.
B. Respondent
Respondent failed to submit a Response in this proceeding. Respondent registered the disputed domain name on July 5, 2017.
The Panel finds that the disputed domain names are confusingly similar to Complainant’s valid and subsisting trademark; that Respondent has no rights or legitimate interests in or to the disputed domain names; and that Respondent has engaged in bad faith use and registration of the disputed domain names.
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.”).
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” The Panel finds that these two entities shall be treated as one in the same for these proceedings.
The Panel finds that the disputed domain names, <agjeansoutletstore.com> and <agjeanssaleonline.com>, are confusingly similar to Complainant’s valid and subsisting trademark, AG JEANS. Complainant has adequately plead its rights and interests in and to this trademark. Respondent arrives at the disputed domain names by taking Complainant’s trademark in its entirety and merely adding the generic words “sale online” and “outlet store” plus the g TLD “.com.” This is insufficient to distinguish the disputed domain names from Complainant’s trademark.
As such, the Panel finds that the disputed domain names are confusingly similar to Complainant’s trademark.
Further, the Panel finds that Respondent has no rights or legitimate interests in or to the disputed domain names. Respondent has no right, permission or license to register the disputed domain names. Respondent is not commonly known by either of the disputed domain names. Respondent’s use of the domain names at issue do not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Rather, Respondent’s domain names resolve to websites that appear to use images taken from Complainant’s website agjeans.com. Additionally, attempts to purchase goods from Respondent’s resolving websites do not go through nor are the goods shipped.
As such, the Panel finds that Respondent has no rights or legitimate interests in or to the disputed domain names.
The Panel further finds that Respondent has engaged in bad faith use and registration of the disputed domain names. Respondent registered and used the <agjeansoutletstore.com> and <agjeanssaleonline.com> domain names in bad faith by preventing Complainant from reflecting its mark in corresponding domain names. Registering multiple confusingly similar domain names can evince bad faith under Policy ¶ 4(b)(ii). See Philip Morris USA Inc. v. RapidClic / VAUCLIN Olivier, FA1309001520008 (Forum November 7, 2013) (finding that the respondent’s registration of multiple infringing domain names indicates a pattern of bad faith registration and use under Policy ¶ 4(b)(ii)). Accordingly, the Panel finds that Respondent’s registration of multiple domain names in the present case evinces bad faith pursuant to Policy ¶ 4(b)(ii).
Additionally, Complainant argues that Respondent registered and uses the <agjeansoutletstore.com> and <agjeanssaleonline.com> domain names in bad faith by offering counterfeit products or phishing for consumer information, thereby disrupting Complainant’s business. Using a disputed domain name that disrupts a complainant’s business in such a manner can evince bad faith under Policy ¶ 4(b)(iii). See Ontel Products Corporation v. waweru njoroge, FA1762229 (Forum December 22, 2017) (“Respondent’s primary offering seem to be counterfeits of Complainant’s toy car products. Respondent’s use of the <magictrackscars.com> domain name is thus disruptive to Complainant’s business per Policy ¶ 4(b)(iii)”); see also Wells Fargo & Co. v. Maniac State, FA 608239 (Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers).
Complainant does not provide any evidence to further this assertion; however, given the totality of the circumstances, the Panel finds that it is quite likely that Complainant’s business would be disrupted by the registration and use, as described above, of the disputed domain names by Respondent.
Also, given the fact that Respondent registered two domain names using Complainant’s exact trademark and the totality of the circumstances, the Panel finds that Respondent had actual knowledge of Complainant’s prior rights and interests in and to the trademark AG JEANS.
As such, the Panel finds that Respondent has engaged in bad faith use and registration of the disputed domain names.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <agjeansoutletstore.com> and <agjeanssaleonline.com> domain names transferred from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: March 20, 2018
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