Maui Jim, Inc. v. the rock / Lisa J Labonte / Lisa Labonte / Theresa Chavez
Claim Number: FA2009001911772
Complainant is Maui Jim, Inc. (“Complainant”), represented by T. Blake Finney of Vorys, Sater, Seymour and Pease LLP, Ohio, USA. Respondent is the rock / Lisa J Labonte / Lisa Labonte / Theresa Chavez (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <mauisunglasses.shop>, <maujimclub.com>, <maujsunglass.com>, <mauijimus.com>, <mauijiim.com>, <maujimshop.com>, <mjsunglass.shop>, and <maujimoutlet.com>, registered with NameSilo, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 10, 2020; the Forum received payment on September 10, 2020.
On September 10, 2020, NameSilo, LLC confirmed by e-mail to the Forum that the <mauisunglasses.shop>, <maujimclub.com>, <maujsunglass.com>, <mauijimus.com>, <mauijiim.com>, <maujimshop.com>, <mjsunglass.shop>, <maujimoutlet.com> domain names are registered with NameSilo, LLC and that Respondent is the current registrant of the names. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 September 21, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 13, 2020 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@mauisunglasses.shop, postmaster@maujimclub.com, postmaster@maujsunglass.com, postmaster@mauijimus.com, postmaster@mauijiim.com, postmaster@maujimshop.com, postmaster@mjsunglass.shop, postmaster@maujimoutlet.com. Also on September 21, 2020, 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 October 15, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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.
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.” Complainant contends that the eight domain names are all operated by the same combination of Registrar and Web Host (See Exs. B and C), the disputed domain names’ resolving websites all misappropriate Complainant’s mark and use a similar landing page with similar content (See Compl. Ex. D), and the contact information provided to WHOIS for the domain name is likely false or misleading as they lack connection to names listed, and are illegitimate addresses that do not correspond to the actual places they list (See Compl. Ex. I).
The Panel finds that the domain names are commonly owned/controlled by a single Respondent who is using multiple aliases.
A. Complainant
Complainant made the following contentions.
Complainant runs a business marketing and selling sunglasses, accessories, and apparel. Complainant has rights in the MAUI JIM mark through its registrations with the United States Patent and Trademark Office (“USPTO”). (e.g. Reg. 1,404,711, registered Aug. 12, 1986). See Amend. Compl. Ex. A. Respondent’s <mauisunglasses.shop>, <maujimclub.com>, <maujsunglass.com>, <mauijimus.com>, <mauijiim.com>, <maujimshop.com>, <mjsunglass.shop>, and <maujimoutlet.com> domain names are identical and/or confusingly similar to Complainant’s mark as they incorporate the mark in its entirety, or abbreviations, misspellings, or acronyms of the mark, and proceed to add various generic, descriptive, and geographic terms, followed by either the “.shop” or “.com” generic top-level domains (“gTLDs”).
Respondent lacks rights and legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names, nor has Complainant authorized or licensed Respondent to use its MAUI JIM mark in the disputed domain names. Respondent does not use the disputed domain names for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead attempts to pass off as Complainant and sell counterfeit versions of Complainant’s products on the disputed domain names’ resolving websites.
Respondent registered and uses the disputed domain names in bad faith. Respondent disrupts Complainant’s business and attempts to attract internet users for commercial gain by passing off as Complainant and selling Complainant’s products on the disputed domain names’ resolving websites. Additionally, Respondent provided false contact information in registering the disputed domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that operates a business marketing and selling sunglasses, accessories, and apparel.
2. Complainant has established its trademark rights in the MAUI JIM mark through its registrations with the United States Patent and Trademark Office (“USPTO”). (e.g. Reg. 1,404,711, registered Aug. 12, 1986).
3. Respondent registered the <mauijimoutlet.com>, <mauijiim.com>, <mauijimus.com>, and <maujimclub.com> domain names on Apr. 29, 2020, the <mauijimshop.com> domain name on May 13, 2020, the <mjsunglass.shop> and <maujsunglass.com> domain names on May 17, 2020, and the <mauisunglasses.shop> domain name on June 8, 2020.
4. Respondent attempts to pass itself off as Complainant and sell counterfeit versions of Complainant’s products on the disputed domain names’ resolving websites.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant claims rights in the MAUI JIM mark through its registrations with the USPTO. (e.g. Reg. 1,404,711, registered Aug. 12, 1986). See Amend. Compl. Ex. A. Registration with the USPTO is generally sufficient to satisfy rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds Complainant has rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s MAUI JIM mark. Complainant argues that the <mauisunglasses.shop>, <maujimclub.com>, <maujsunglass.com>, <mauijimus.com>, <mauijiim.com>, <maujimshop.com>, <mjsunglass.shop>, and <maujimoutlet.com> domain names are identical or confusingly similar to Complainant’s MAUI JIM mark, as they incorporate the mark in its entirety and add various generic or descriptive words, abbreviate or misspell the mark, and/or add the “.com” or “.shop” gTLDs. Per Policy ¶ 4(a)(i), adding generic, descriptive, or geographic words, as well as a gTLD, is generally insufficient change in differentiating a disputed domain name from the mark it incorporates or abbreviates. See Roche Therapeutics Inc. v. Williams Shorell, FA 1684961 (Forum Aug. 30, 2016) (“Complainant asserts Respondent’s <boniva.top> domain name is identical to the BONIVA mark. The addition of a generic top level domain to a mark does not differentiate the domain from said mark under Policy ¶ 4(a)(i).”); see also Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”). Additionally, shortening or abbreviating a mark does not necessarily negate confusing similarity between a domain name and the mark. See Universal Protein Supplements Corporation d/b/a Universal Nutrition v. Universal Nutrition, FA 1510186 (Forum Aug. 28, 2013) (concluding that the “<uniprotein.com> domain name is, as alleged in the Complaint, an amalgamation of a common abbreviation of Complainant’s UNIVERSAL trademark and the term ‘protein,’ which describes an aspect of Complainant’s business, plus the generic Top Level Domain (‘gTLD’) ‘.com.’”). The disputed domain names incorporate the MAUI JIM mark in its entirety or use an abbreviation or acronym of the mark, and add various generic, descriptive, and geographic words such as “sunglass”, “club”, and “us”, as well as the “.com” and “.shop” gTLDs. Therefore, the Panel finds the disputed domain names are identical or confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
(a) Respondent has chosen to take Complainant’s MAUI JIM trademark and to use it in its domain names and use an abbreviation or acronym of the mark, and add various generic, descriptive, and geographic words such as “sunglass”, “club”, and “us”;
(b) Respondent registered the <mauijimoutlet.com>, <mauijiim.com>, <mauijimus.com>, and <maujimclub.com> domain names on Apr. 29, 2020, the <mauijimshop.com> domain name on May 13, 2020, the <mjsunglass.shop> and <maujsunglass.com> domain names on May 17, 2020, and the <mauisunglasses.shop> domain name on June 8, 2020;
(c) Respondent attempts to pass itself off as Complainant and sell counterfeit versions of Complainant’s products on the disputed domain names’ resolving websites;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent is not commonly known by any of the <mauisunglasses.shop>, <maujimclub.com>, <maujsunglass.com>, <mauijimus.com>, <mauijiim.com>, <maujimshop.com>, <mjsunglass.shop>, and <maujimoutlet.com> domain names, nor has Complainant authorized Respondent to use its MAUI JIM mark in any of the disputed domain names. Where a response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”). The WHOIS of record for the disputed domain names lists the various registrants as “the rock”, “Lisa J Labonte”, “Lisa Labonte”, and “Theresa Chavez”. See Amend Compl. Ex. C; see also Registrar Verification Email. Nothing in the record rebuts Complainant’s assertion that it never authorized or licensed Respondent to use its mark in the disputed domain names. Therefore, the Panel finds Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent is not using the <mauisunglasses.shop>, <maujimclub.com>, <maujsunglass.com>, <mauijimus.com>, <mauijiim.com>, <maujimshop.com>, <mjsunglass.shop>, and <maujimoutlet.com> domain names for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead attempts to pass off as Complainant and sell counterfeit versions of Complainant’s products. Attempting to pass off as a complainant by mimicking its website and sell counterfeit goods is not considered bona fide offerings of goods or services, nor legitimate noncommercial or fair uses under Policy ¶¶ 4(c)(i) and (iii). See Watts Water Technologies Inc. v. wo ci fa men zhi zao (kun shan) you xian gong si, FA 1740269 (Forum Aug. 11, 2017) (“Respondent has used the domain name to resolve to a website that mimics the color scheme associated with Complainant’s WATTS brand and displays counterfeit versions of Complainant’s products for purchase in an attempt to pass itself off as Complainant… [therefore], the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.”). Complainant provides screenshots of the various domain names’ resolving websites, and argues the websites utilize a similar layout as Complainant’s own website, and use Complainants copyrighted images and marks to sell counterfeit versions of Complainant’s products. Compare Compl. Ex. D with Compl. Ex. G. As the Panel agrees, it finds Respondent does not use the disputed domain names for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <mauisunglasses.shop>, <maujimclub.com>, <maujsunglass.com>, <mauijimus.com>, <mauijiim.com>, <maujimshop.com>, <mjsunglass.shop>, and <maujimoutlet.com> domain names in bad faith by disrupting Complainant’s business through competitive use. Using a disputed domain name to sell counterfeit versions of a complainant’s products is generally considered bad faith disruption of business under Policy ¶ 4(b)(iii). See Ontel Products Corporation v. waweru njoroge, FA1762229 (Forum Dec. 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)”). The Panel recalls Complainant’s screenshots of the disputed domain names’ resolving websites, which feature allegedly counterfeit versions of Complainant’s sunglasses for sale. See Compl. Ex. D. Therefore, the Panel finds Respondent uses the disputed domain names for bad faith disruption of Complainant’s business under Policy ¶ 4(b)(iii).
Secondly, Complainant argues that Respondent registered and uses the disputed domain names to pass itself off as Complainant and sell counterfeit versions of Complainant’s products. Using a disputed domain name to pass off as a Complainant by mimicking its website and selling counterfeit versions its products is considered bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See The Prudential Insurance Company of America v. Henrique Bryan Souza / DATAMIX ENSINO DE INFORMATICA, FA 1718308 (Forum Apr. 3, 2017) (finding bad faith where the respondent used the disputed domain name to resolve to a website upon which the respondent imitated the complainant’s mark, logo, and color scheme to create a “strikingly similar” website); see also H-D Michigan, LLC v. Ross, FA 1250712 (Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion and thus demonstrates bad faith per Policy ¶ 4(b)(iv)). The Panel recalls Complainant’s screenshots of the disputed domain names’ resolving websites, which feature layouts similar to Complainant’s website, and utilize Complainant’s copyrighted images and marks to sell allegedly counterfeit versions of Complainant’s products. Compare Comp. Ex. D with Compl. Ex. G. As the Panel agrees, it finds Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(iv).
Thirdly, Complainant argues that Respondent provided false contact information for the disputed domain names. Under Policy ¶ 4(a)(iii), providing false or misleading contact information when registering domain names is evidence of bad faith. See Farouk Systems, Inc. v. Jack King / SLB, FA1505001618704 (Forum June 19, 2015) (finding bad faith registration and use pursuant to Policy ¶ 4(a)(iii) where the respondent had provided false contact information when registering the disputed domain name). Complainant provides screenshots of the contact information provided for the disputed domain names, and argues it is obviously false. See Compl. Ex. I. Specifically, Complainant notes that the same zip code is used for each of three addresses, despite the addresses being in different states. As the Panel agrees, it finds bad faith under Policy ¶ 4(a)(iii).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mauisunglasses.shop>, <maujimclub.com>, <maujsunglass.com>, <mauijimus.com>, <mauijiim.com>, <maujimshop.com>, <mjsunglass.shop>, and <maujimoutlet.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: October 16, 2020
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