HBI Branded Apparel Enterprises, LLC and Hanesbrands, Inc. v. Client Care / Web Commerce Communications Limited
Claim Number: FA2301002026632
Complainant is HBI Branded Apparel Enterprises, LLC and Hanesbrands, Inc. (“Complainant”), USA, represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Client Care / Web Commerce Communications Limited (“Respondent”), Malaysia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <championcomco.com>, registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED.
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 Forum electronically on January 6, 2023; Forum received payment on January 6, 2023.
On January 10, 2023, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED confirmed by e-mail to Forum that the <championcomco.com> domain name is registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED and that Respondent is the current registrant of the name. ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED has verified that Respondent is bound by the ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED 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 January 12, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 1, 2023 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@championcomco.com. Also on January 12, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On February 8, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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.
Preliminary Issue: Multiple Complainants
There are two (2) Complainants in this matter: HBI Branded Apparel Enterprises, LLC and Hanesbrands, Inc., which are limited liability companies located in Winston-Salem, North Carolina. Complainant is a well-known manufacturer and marketer of leading everyday basic apparel brands in the Americas, Australasia, Europe and Asia. HBI Branded Apparel Enterprises, LLC is a subsidiary of Hanesbrands, Inc.
The relevant rules governing multiple complainants are UDRP Rule 3(a) and Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
Previous panels have interpreted Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
The Panel accepts that the submission in the Complaint is sufficient to establish a sufficient nexus between the two complainants, and thus the Panel determines to treat them all as a single entity in this proceeding. The two complainants will be collectively referred to as “Complainant.”
A. Complainant
i) Complainant is a leading manufacturer of innerwear and activewear apparel under some of the world’s most well-known apparel brands, such as Hanes, Champion, DKNY, Maidenform, Playtex, and Wonderbra. Complainant has rights in the CHAMPION mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,096,680, registered December 6, 2016). The disputed domain name is confusingly similar to Complainant’s CHAMPION mark because the disputed domain name includes the entirety of the CHAMPON mark with only the addition of descriptive or generic terms and the generic top level domain (“gTLD”) “.com”.
ii) Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name. Respondent is not using the disputed domain name in connection with any bona fide offering of goods and services or for any legitimate or fair use. Instead, the disputed domain name currently resolves to an inactive webpage for users geo-located in the United States. Respondent passes itself off as Complainant, and is impersonating Complainant as part of a phishing scheme for the users in Colombia.
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent passes itself off as Complainant, and is impersonating Complainant as part of a phishing scheme for the users in Colombia. The disputed domain name resolves to an inactive webpage for users geo-located in the United States. Respondent has engaged in a pattern of bad faith registration. Additionally, Respondent had actual knowledge of Complainant’s rights in the CHAMPION mark prior to registration of the disputed domain name.
B. Respondent
Respondent did not submit a Response in this proceeding.
1. The disputed domain name was registered on September 6, 2022.
2. Complainant has established rights in the CHAMPION mark based upon registration with the USPTO (e.g., Reg. No. 5,096,680, registered December 6, 2016).
3. For users in Colombia, Respondent is using the disputed domain name to pass itself off as Complainant.
4. For users geo-located in the United States, the website associated with the disputed domain name resolves to an inactive webpage.
5. Respondent has engaged in a pattern of bad faith registration.
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 asserts rights in the CHAMPION mark (e.g., Reg. No. 5,096,680, registered December 6, 2016) based upon registration with the USPTO. Registration with a governmental trademark authority is sufficient to demonstrate rights in a mark per Policy 4(a)(i). Complainant provides evidence of the trademark registration. Therefore, the Panel finds that Complainant has rights in the CHAMPION mark per Policy ¶ 4(a)(i).
Complainant contends that the disputed domain name <championcomco.com> is confusingly similar to Complainant’s CHAMPION mark because the disputed domain name includes the entirety of the CHAMPON mark with only the addition of descriptive or generic terms “com” and “co” and the “.com” gTLD. The addition of a descriptive or generic term as well as a gTLD may not defeat an argument of confusing similarity per Policy ¶ 4(a)(i). See 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.”). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name 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”).
Complainant contends Respondent is not commonly known by the disputed domain name. Where there is no response, WHOIS information can substantiate a finding that a respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). The unmasked WHOIS information of record lists the registrant of the disputed domain name as “Client Care / Web Commerce Communications Limited.” The Panel therefore finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant further contends that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for any legitimate or fair use. For users in Colombia, Respondent is using the disputed domain name to pass itself off as Complainant. Passing off as a complainant does not represent a bona fide offering of goods and services or a legitimate or fair use per Policy ¶ 4(c)(i) and (iii). See ShipChain, Inc. v. 谢东东 / 谢东东, FA 1785189 (Forum June 21, 2018) (“The resolving webpages between Complainant’s and Respondent’s websites are virtually the same. Respondent’s use of the disputed domain name does not confer rights and legitimate interests under Policy ¶¶4(c)(i) and (iii).”). For users in the United States, the disputed domain name resolves to an inactive webpage. Failure to make an active use of a webpage is not a bona fide offering of goods and services or a legitimate or fair use per Policy ¶ 4(a)(ii). See Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <kohler-corporation.com> resolves to an inactive webpage displaying the message “website coming soon!”). Here, Complainant provides screenshots of the disputed domain name’s resolving webpages. The Panel therefore finds that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for any legitimate or fair use.
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. 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 name.
Complainant asserts Respondent registered and uses the disputed domain name in bad faith. Complainant contends that Respondent is using the website at the disputed domain name to impersonate Complainant as part of a fraud and/or phishing scheme, by allowing users to enter personal and financial information by attempting to place orders for CHAMPION products, despite Respondent not being authorized to sell such products. Use of a disputed domain name to pass off as a complainant and offer competing or counterfeit versions of its products may be evidence of bad faith per Policy ¶ 4(b)(iii) and (iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business), see also Guess? IP Holder L.P. and Guess?, Inc. v. LI FANGLIN, FA 1610067 (Forum Apr. 25, 2015) (finding respondent registered and used the domain name in bad faith per Policy ¶ 4(b)(iii) because the respondent used the resolving website to sell the complainant’s products, using images copied directly from the complainant’s website), see also 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.”). Complainant has provided screenshots of the disputed domain name's resolving website for users located in Colombia displaying content copied from Complainant’s official branded website <champion.com>, including images of Complainant’s products that belong to Complainant. Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) or (iv).
Next, Complainant contends that Respondent has engaged in a pattern of bad faith registration by pointing out the fact that Forum recently granted Complainant’s complaint against Respondent in a UDRP action regarding several domain names, all of which incorporate Complainant’s CHAMPION mark, and ordered transfer of the domain names. A pattern of bad faith registration is evidence of bad faith under Policy ¶ 4(b)(ii). See Microsoft Corporation and Skype v. zhong biao zhang / Unknown company / zhong zhang, FA1401001538218 (Forum Feb. 20, 2014) (holding that the respondent’s registration of three domain names incorporating variants of the complainant’s SKYPE mark reflected a pattern of bad faith registration under Policy ¶ 4(b)(ii)). Here, Complainant provides screenshots of the 40 prior UDRP decisions with Respondent and the order of the transfer of the disputed domain names. The Panel therefore finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(ii).
Complainant further argues that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the CHAMPION mark. Constructive knowledge is insufficient for a finding of bad faith registration of a disputed domain name; actual knowledge, however, is sufficient for a finding of bad faith per Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Here, Complainant contends Respondent had actual knowledge of Complainant’s rights in the CHAMPION mark based on Respondent’s reproduction and display of Complainant’s logo as well as the reputation of Complainant’s mark based on the Complainant’s extensive and continuous use of the CHAMPION trademarks in the United States as well as internationally since 1919. The Panel infers, due to the notoriety of Complainant’s mark and the manner of use of the disputed domain name that Respondent had actual knowledge of Complainant’s rights in its CHAMPION mark at the time of registering the disputed domain name, which constitutes bad faith registration 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 <championcomco.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: February 9, 2023
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