New Era Cap, LLC v. Julius Bergman / Tobias Kappel / Juliane ACHEN / Heike Schulz / Gustavsson Veronica / Liu Bin / anna wulf / Dennis Busch / Lisa Schultheiss / Client Care / Web Commerce Communications Limited / Wang Zhi Wen
Claim Number: FA2205001997364
Complainant is New Era Cap, LLC (“Complainant”), represented by Corsearch, Inc., California, USA. Respondent is Julius Bergman / Tobias Kappel / Juliane ACHEN / Heike Schulz / Gustavsson Veronica / Liu Bin / anna wulf / Dennis Busch / Lisa Schultheiss / Client Care / Web Commerce Communications Limited / Wang Zhi Wen (“Respondent”), International.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <boneneweraportugal.com>, <buynewerasingapore.com>, <cappellinewera59fifty.com>, <gorrasneweracolombia.com>, <gorrasneweramexico.com>, <gorrosneweraperu.com>, <newera59flftyaustralia.com>, <neweracapargentlna.com>, <neweracap-canada.com>, <neweracapcanada.com>, <neweracaph.com>, <neweracapireland.com>, <neweracapmexicos.com>, <neweracapsonlineindia.com>, <neweracapsphilippines.com>, <neweracapssouthafrica.com>, <newerachile.cc>, <newerachile.co>, <newerachile.com>, <newerachiletienda.com>, <neweradeutschland.com>, <neweragreece.top>, <newerahatscanadas.com>, <newerahatsgreece.com>, <newerahatssingapore.com>, <neweraindiacaps.com>, <neweraindlacaps.com>, <newerajapanstore.com>, <neweramalaysiastore.com>, <neweranorway.com>, <newerasapkak.com>, <newerasapkaucuz.com>, <newerasbogota.com>, <newerasnorway.com>, and <usaneweracaps.com> (collectively “Domain Names”), registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED; 1API GmbH; Gransy, s.r.o.; Dynadot, LLC; MAT BAO CORPORATION; Web Commerce Communications Limited dba WebNic.cc; PDR Ltd. d/b/a PublicDomainRegistry.com; NameCheap, Inc. and NETIM SARL respectively.
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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 22, 2022; the Forum received payment on May 22, 2022.
Between May 23, 2022 and June 3, 2022 each of ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED; 1API GmbH; Gransy, s.r.o.; Dynadot, LLC; MAT BAO CORPORATION; Web Commerce Communications Limited dba WebNic.cc; PDR Ltd. d/b/a PublicDomainRegistry.com; NameCheap, Inc.; and NETIM SARL confirmed by e-mail to the Forum that the <boneneweraportugal.com>, <buynewerasingapore.com>, <cappellinewera59fifty.com>, <gorrasneweracolombia.com>, <gorrasneweramexico.com>, <gorrosneweraperu.com>, <newera59flftyaustralia.com>, <neweracapargentlna.com>, <neweracap-canada.com>, <neweracapcanada.com>, <neweracaph.com>, <neweracapireland.com>, <neweracapmexicos.com>, <neweracapsonlineindia.com>, <neweracapsphilippines.com>, <neweracapssouthafrica.com>, <newerachile.cc>, <newerachile.co>, <newerachile.com>, <newerachiletienda.com>, <neweradeutschland.com>, <neweragreece.top>, <newerahatscanadas.com>, <newerahatsgreece.com>, <newerahatssingapore.com>, <neweraindiacaps.com>, <neweraindlacaps.com>, <newerajapanstore.com>, <neweramalaysiastore.com>, <neweranorway.com>, <newerasapkak.com>, <newerasapkaucuz.com>, <newerasbogota.com>, <newerasnorway.com>, and <usaneweracaps.com> domain names are registered with them and that Respondent is the current registrant of the names. Each of the Registrars referred to have verified that Respondent is bound by their registration agreements with respect to the Domain Names registered with them and have 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 9, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 29, 2022 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@boneneweraportugal.com, postmaster@buynewerasingapore.com, postmaster@cappellinewera59fifty.com, postmaster@gorrasneweracolombia.com, postmaster@gorrasneweramexico.com, postmaster@gorrosneweraperu.com, postmaster@newera59flftyaustralia.com, postmaster@neweracapargentlna.com, postmaster@neweracap-canada.com, postmaster@neweracapcanada.com, postmaster@neweracaph.com, postmaster@neweracapireland.com, postmaster@neweracapmexicos.com, postmaster@neweracapsonlineindia.com, postmaster@neweracapsphilippines.com, postmaster@neweracapssouthafrica.com, postmaster@newerachile.cc, postmaster@newerachile.co, postmaster@newerachile.com, postmaster@newerachiletienda.com, postmaster@neweradeutschland.com, postmaster@neweragreece.top, postmaster@newerahatscanadas.com, postmaster@newerahatsgreece.com, postmaster@newerahatssingapore.com, postmaster@neweraindiacaps.com, postmaster@neweraindlacaps.com, postmaster@newerajapanstore.com, postmaster@neweramalaysiastore.com, postmaster@neweranorway.com, postmaster@newerasapkak.com, postmaster@newerasapkaucuz.com, postmaster@newerasbogota.com, postmaster@newerasnorway.com, postmaster@usaneweracaps.com. Also on June 9, 2022, 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 7, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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.
Complainant contends that the registrants for the Domain Names are related because: 1) the Domain Names are all similar variants of Complainant’s NEW ERA mark consisting, in most case, of the NEW ERA Mark and a geographical or generic term 2) The Domain Names were registered in batches, mostly in June 2021, July 2021 and December 2021 3) All the Domain Names save <newera59flftyaustralia.com>, <neweracapcanada.com>, <neweragreece.top> and <neweracapsonlineindia.com> redirected what are very similar websites (the “Respondent’s Websites”). In essence each of these domain names leads to a website offering unauthorized versions of Complainant’s products for sale in many cases using the similar layouts and designs, sharing numerous common elements; and 4) A number of the named registrants of the Domain Names have been participants in previous proceedings under the Policy where they were found to have been aliases connected to a single respondent.
This evidence, in the Panel’s opinion, strongly suggests that the Domain Names are owned/controlled by a single Respondent; were the named Respondents unrelated, it would be unlikely that 12 unconnected entities would register 35 very similar domain names during a short time period with the majority of them being used for similar websites for the same purpose.
In light of these contentions, which none of the identified Respondents deny, the Panel concludes that, on the balance of probabilities, the Domain Names are commonly owned/controlled by a single Respondent who is using multiple aliases. Hereafter the single Respondent will be referred to as “Respondent” in this Decision.
A. Complainant
Complainant, New Era Cap, LLC, manufactures and sells hand-crafted headwear around the world. Complainant has rights in the NEW ERA, NEW ERA CAP, and 59FIFTY marks through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., NEW ERA – Reg. No. 2,031,348, registered Jan. 21, 1997; NEW ERA CAP – Reg. No. 2,550,756, registered Mar. 19, 2002; 59FIFTY – Reg. No. 2,421,160, registered Jan. 16, 2001). The Domain Names are each identical or confusingly similar to Complainant’s NEW ERA, NEW ERA CAP, and/or 59FIFTY marks as each of the Domain Names incorporates the entirety of one or more of Complainant’s marks, merely adding geographic and/or generic terms or translations of terms which connect with Complainant’s business, along with adding either the “.com” or “.top” generic top-level domain (“gTLD”), or the “.cc” or “.co” country-code top-level domain (“ccTLD”).
Respondent lacks rights and legitimate interests in the Domain Names as Respondent is not commonly known by any of the Domain Names and is neither an authorized user or licensee of Complainant’s NEW ERA, NEW ERA CAP, or 59FIFTY marks. Additionally, Respondent fails to use any of the Domain Names for either a bona fide offer of goods or services or for a legitimate noncommercial or fair use. Instead, Respondent uses 31 of the Domain Names to sell counterfeit versions of Complainant’s NEW ERA-branded products. The remaining four domain names resolve to inactive websites pending use for the purposes outlined above.
Respondent registered and uses the Domain Names in bad faith. First, Respondent has been involved in previous UDRP proceedings in which domain names have been transferred, which evidences a pattern of bad faith. Next, Respondent resolves 31 of the Domain Names to websites which display Complainant’s NEW ERA-branded products, which disrupts Complainant’s business, and likely leads to commercial gain for Respondent. The remaining four domain names resolve to inactive websites, which may also demonstrate bad faith disruption. Additionally, Respondent is presumably trying to create confusion and profit through each of the Domain Names. Finally, Complainant argues that Respondent registered the Domain Names with actual knowledge of Complainant’s rights in the NEW ERA, NEW ERA CAP, and 59FIFTY marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the NEW ERA mark. Each of the Domain Names is confusingly similar to Complainant’s NEW ERA mark. Complainant has established that Respondent lacks rights or legitimate interests in the Domain Names and that Respondent registered and has used the 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 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”).
Complainant has rights in the NEW ERA mark under Policy ¶ 4(a)(i) through its registration of the mark with the USPTO (e.g. Reg. No. 2,031,348, registered January 21, 1997). Registration of a mark with the USPTO is sufficient to establish rights in that mark. 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).”).
The Panel finds that each of the Domain Names is confusingly similar to the NEW ERA mark as they each incorporate the entire NEW ERA mark while adding generic or geographical terms, in some cases an additional mark registered by Complainant and a TLD. Adding a generic term and a TLD to a mark fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Svensson Viljae, FA 1784650 (Forum June 1, 2018) (finding confusing similarity where “[t]he disputed domain name <skechers-outlet.com> adds a hyphen and the generic term ‘outlet’ to Complainant's registered SKECHERS mark, and appends the ‘.com’ top-level domain.”); see also MTD Products Inc v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”); see also CloudFlare, Inc. v. [Registrant], FA 1624251 (Forum Aug. 1, 2015) (holding, “The inclusion of a ccTLD does not alleviate the similarity between a mark and a disputed domain name as per Policy ¶ 4(a)(i).”);
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Names. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the 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) and 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.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names as Respondent is not commonly known by the Domain Names, nor has Complainant authorized Respondent to use the NEW ERA mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS information of record lists “Julius Bergman / Tobias Kappel / Juliane ACHEN / Heike Schulz / Gustavsson Veronica / Liu Bin / anna wulf / Dennis Busch / Lisa Schultheiss / Client Care / Web Commerce Communications Limited / Wang Zhi Wen” as the registrants of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Names in accordance with Policy ¶ 4(c)(ii).
The Domain Names save <newera59flftyaustralia.com>, <neweracapcanada.com>, <neweragreece.top> and <neweracapsonlineindia.com> (“Active Domain Names”) resolve or have resolved to the Respondent’s Websites which, through the reproduction of the NEW ERA Mark, Complainant’s other marks and reference to Complainant’s products, pass themselves off as official websites of the Complainant for the purpose of selling unauthorized versions of Complainant’s goods, in direct competition with Complainant’s merchandise. The use of a confusingly similar domain name to resolve to a webpage that directly offers unauthorized versions of a complainant’s goods does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use; indeed it provides a false impression that the Respondent is affiliated with or authorized by Complainant. See BALENCIAGA SA v. ling lin, FA 1768542 (Forum Feb. 16, 2018) (“The disputed domain names incorporate Complainant's registered mark, and are being used for websites that prominently display Complainant's mark and logo, along with apparent images of Complainant's products, offering them for sale at discounted prices. The sites do not disclaim any connection with Complainant, and in fact seem to be designed to create an appearance of such a connection. Such use does not give rise to rights or legitimate interests.”). See also Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
The Domain Names <newera59flftyaustralia.com>, <neweracapcanada.com>, <neweragreece.top> and <neweracapsonlineindia.com> (“Inactive Domain Names”) are inactive given that they resolve to parked pages or pages with error messages. Passively holding a disputed domain name may suggest a lack of rights and legitimate interests in the domain name per Policy ¶ 4(a)(ii). See TMP Int’l, Inc. v. Baker Enters., FA 204112 (Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”). Furthermore in the present case the Panel considers it likely that the Inactive Domain Names are being held pending use in a similar manner to the Active Domain Names.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds on the balance of probabilities that, at the time of registration of the Domain Names (June 2021 to March 2022), Respondent had actual knowledge of Complainant’s NEW ERA mark since the Respondent’s Websites pass themselves off as official websites of the Complainant and as such make repeated references to Complainant and its products. Furthermore, there is no obvious explanation, nor has one been provided, for an entity to register 35 domain names that contain the NEW ERA mark and use 31 of them (with the remaining domain names being inactively held) to redirect visitors to websites selling goods in direct competition with the Complainant under the NEW ERA mark other than to take advantage of Complainant’s reputation in the NEW ERA mark. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Names in bad faith to create confusion with Complainant’s NEW ERA mark for commercial gain by using the confusingly similar Active Domain Names (the Inactive Domain names likely being passively held pending similar use) to resolve to websites that, through the use of the NEW ERA mark related marks owned by Complainant, pass off as Complainant websites and offer unauthorized versions of Complainant’s products in direct competition with the Complainant’s products. Using a confusingly similar domain name to trade upon the goodwill of a complainant can evince bad faith under Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). See also See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant or is otherwise affiliated or associated with Complainant.”).
The Panel finds Complainant has satisfied 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 <boneneweraportugal.com>, <buynewerasingapore.com>, <cappellinewera59fifty.com>, <gorrasneweracolombia.com>, <gorrasneweramexico.com>, <gorrosneweraperu.com>, <newera59flftyaustralia.com>, <neweracapargentlna.com>, <neweracap-canada.com>, <neweracapcanada.com>, <neweracaph.com>, <neweracapireland.com>, <neweracapmexicos.com>, <neweracapsonlineindia.com>, <neweracapsphilippines.com>, <neweracapssouthafrica.com>, <newerachile.cc>, <newerachile.co>, <newerachile.com>, <newerachiletienda.com>, <neweradeutschland.com>, <neweragreece.top>, <newerahatscanadas.com>, <newerahatsgreece.com>, <newerahatssingapore.com>, <neweraindiacaps.com>, <neweraindlacaps.com>, <newerajapanstore.com>, <neweramalaysiastore.com>, <neweranorway.com>, <newerasapkak.com>, <newerasapkaucuz.com>, <newerasbogota.com>, <newerasnorway.com>, and <usaneweracaps.com> domain names be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: July 8, 2022
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