TXDC, L.P. v. Kevin Americain
Claim Number: FA2106001953061
Complainant is TXDC, L.P. ("Complainant"), represented by Amy Tindell of Holland & Hart LLP, Colorado, USA. Respondent is Kevin Americain ("Respondent"), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <zalesoutlets.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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 28, 2021; the Forum received payment on June 28, 2021.
On June 29, 2021, NameSilo, LLC confirmed by email to the Forum that the <zalesoutlets.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. 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 June 30, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 20, 2021 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@zalesoutlets.com. Also on June 30, 2021, 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 July 23, 2021, 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
Complainant is the largest specialty jewelry retailer in the United States, the United Kingdom, and Canada, operating approximately 2,700 stores under various brands, including approximately 700 ZALES brick and mortar locations and 125 ZALES OUTLET locations. Complainant and its predecessors have used the ZALES mark for almost 100 years, with billions of dollars in sales. Complainant owns U.S. trademark registrations for ZALES, ZALES OUTLET, and related marks, including a design mark that includes ZALES THE DIAMOND STORE as its textual component.
Respondent
registered the disputed domain name <zalesoutlets.com> via a
privacy registration service in June 2021. The domain name is being used for a
website that displays Complainant's ZALES marks and logo and that mimics the
look and feel of Complainant's websites. The website contains product images
and descriptions copied from Complainant's websites, including the item
numbers. The products are offered at prices well below Complainant's prices,
with Complainant's price and the relative price difference indicated for each
item (e.g., "$3,779.00 [struck out] $34.27 SAVE OFF: 99.1%").
Complainant states that it has received complaints from consumers who have been
confused by Respondent's website. Complainant states further that Respondent is
not commonly known by the disputed domain name and is not authorized to use
Complainant's marks.
Complainant contends on the above grounds that the disputed domain name <zalesoutlets.com> is confusingly similar to its ZALES and ZALES OUTLET marks; that Respondent lacks 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
The disputed domain name <zalesoutlets.com> incorporates Complainant's registered ZALES OUTLET trademark, omitting the space, adding a letter "S" to form a plural, and appending the ".com" top-level domain. These alterations do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Anytime Fitness, LLC v. Internet Services / ICS Inc., FA 1802079 (Forum Sept. 25, 2018) (finding <anytimefitnesss.com> confusingly similar to ANYTIME FITNESS); TXDC, L.P. v. James Northcott, FA 144650 (Forum Mar. 19, 2003) (finding <zalesdiamondstores.com> confusingly similar to ZALES THE DIAMOND STORE); see also Spike's Holding, LLC v. Joke Chen, FA 1739821 (finding <finishlineoutlets.com> confusingly similar to FINISH LINE). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization, and it is being used for a website that displays Complainant's marks and otherwise attempts to pass off as Complainant, and that offers for sale competing and — the Panel infers — counterfeit products. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., BBY Solutions, Inc. v. Asmat Ullah Janjuna, FA 1933515 (Forum Mar. 29, 2021) (finding lack of rights or interests where domain name incorporating mark was used to create false impression of connection to mark owner and to offer competing products); ALO, LLC v. Chen Jian Shan, FA 1819707 (Forum Jan. 14, 2019) (finding lack of rights or interests where domain name incorporating mark was used to impersonate mark owner, to promote sale of counterfeit merchandise, and possibly to obtain personal information from Internet users); TXDC, L.P. v. RT Overseas Inc., FA 1277768 (Forum Sept. 15, 2009) (finding lack of rights or interests where domain name incorporating mark was used for website selling products that directly compete with mark owner's products).
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 is being 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 used a privacy registration service to register a domain name obviously intended to create confusion with Complainant and its marks, and is using the domain name to pass off as Complainant and offer competing and apparently counterfeit products. Such conduct is indicative of bad faith registration and use under the Policy. See, e.g., BBY Solutions, Inc. v. Asmat Ullah Janjuna, supra (finding bad faith registration and use in similar circumstances); ALO, LLC v. Chen Jian Shan, supra (same). The Panel so finds.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <zalesoutlets.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: July 26, 2021
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