DECISION

 

Authentic Brands Group, LLC v. Walter Moore / corporacioneuroblinds

Claim Number: FA2402002082554

 

PARTIES

Complainant is Authentic Brands Group, LLC ("Complainant"), represented by Bridgette Fitzpatrick of Authentic Brands Group LLC, New York, USA. Respondent is Walter Moore / corporacioneuroblinds ("Respondent"), Illinois, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <authentlc.cam>, registered with NameCheap, Inc.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Richard Hill as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on February 6, 2024; Forum received payment on February 6, 2024.

 

On February 6, 2024, NameCheap, Inc. confirmed by e-mail to Forum that the <authentlc.cam> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 6, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 26, 2024 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@authentlc.cam. Also on February 6, 2024, 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 27, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Richard Hill 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant states that it owns a global portfolio of iconic and world-renowned media, entertainment, sport, luxe, fashion, beauty and wellness, home, active and outdoor brands. Headquartered in New York City, with offices around the world, Complainant connects strong brands with best-in-class partners and a global network of operators, distributors, and retailers to build long-term value in the marketplace. Complainant's brands generate approximately $25 billion in global annual retail sales and have an expansive retail footprint in more than 150 countries, including 9,400-plus freestanding stores and shop-in-shops and 356,000 points of sale. Complainant acquired its first brand in 2011 and has expanded its acquisition portfolio over the last decade to over 50 global brands, including but not limited to, Reebok, Elvis Presley, Judith Leiber, Marilyn Monroe, Lucky Brand, David Beckham, Forever 21, Shaquille O'Neal, Barneys New York, Nine West, Nautica, Eddie Bauer, Juicy Couture and Muhammad Ali. Complainant has gained national recognition as a multifaceted lifestyle, entertainment and digital platform and has come to signify the quality and reputation of Complainant's branding services. Complainant operates a website at <www.authentic.com> and has been using the domain name <authentic.com> for its emails since 2023. Complainant registered the domain name <authenticbrandsgroup.com> in 2009 and has been using it since then. Complainant asserts common law rights in the marks AUTHENTIC and AUTHENTIC BRANDS GROUP.

 

Complainant alleges that the disputed domain name is confusingly similar to its AUTHENTIC mark as it wholly incorporates the mark, merely adding the generic top-level domain ("gTLD") ".cam."

 

According to Complainant, Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name or any variant of Complainant's mark. Respondent is not licensed or authorized to use Complainant's mark. Respondent is not making a bona fide offering of goods or services through the disputed domain name or a legitimate noncommercial or fair use. Instead, Respondent has been actively using the disputed domain name for illegitimate activities that include sending misleading and deceptive emails in attempts to scam Complainant's current business partners out of substantial sums of money: Respondent claimed to be Complainant's Credit & Collections Manager, advising Complainant's client to wire the royalties due to Complainant to a different bank account which is in no way associated with Complainant.

 

Further, says Complainant, Respondent registered and is using the disputed domain name in bad faith because it is used in furtherance of a fraudulent email phishing scheme. Respondent had actual knowledge of Complainant's mark.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant has common law rights in the mark AUTHENTIC BRANDS GROUP, preceding the registration of the disputed domain name, and uses it in connection with its portfolio of brands.

 

The disputed domain name was registered in 2024.

 

Complainant has not licensed or otherwise authorized Respondent to use its mark.

 

The disputed domain name is used in furtherance of a fraudulent email phishing scheme.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").

 

Identical and/or Confusingly Similar

Complainant asserts common law rights in the AUTHENTIC and AUTHENTIC BRANDS GROUP marks. Common law rights are sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark). Common law rights may be established through evidence of secondary meaning in the mark such as longstanding use, evidence of an identical domain name, media recognition, and promotional material and advertising. See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July, 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including "longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.").

 

According to paragraph 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Jurisprudential Overview 3.0"), a Panel may conduct limited factual research regarding disputed domain names:

 

Noting in particular the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the UDRP Rules, it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision.

 

This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent or its use of the domain name, consulting historical resources such as the Internet Archive (www.archive.org) in order to obtain an indication of how a domain name may have been used in the relevant past, reviewing dictionaries or encyclopedias (e.g., Wikipedia), or accessing trademark registration databases.

 

Here, it appears from the Internet Archive that Complainant acquired the domain name <authentic.com> in November 2022, whereas that domain name had previously been used by other parties.

 

The Panel finds that Complainant has failed to provide sufficient evidence to establish common law rights in the mark AUTHENTIC.

 

However, Complainant registered the domain name <authenticbrandsgroup.com> in 2009 and used the AUTHENTIC BRANDS GROUP mark in various promotional and advertising materials since at least that time. The Panel finds that Complainant has provided sufficient evidence to show that it established common law rights in its AUTHENTIC BRANDS GROUP mark, with rights predating the registration of the disputed domain name.

 

According to 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Jurisprudential Overview 3.0"): "In specific limited instances, while not a replacement as such for the typical side-by-side comparison, where a panel would benefit from affirmation as to confusing similarity with the complainant's mark, the broader case context such as website content trading off the complainant's reputation, … may support a finding of confusing similarity."

 

Here, Complainant presents evidence showing that the disputed domain name was used in emails to make Complainant's clients believe that Respondent is somehow affiliated with Complainant. This supports the side-by-side comparison below.

 

The disputed domain name consists of a misspelling of the dominant portion AUTHENTIC of Complainant's AUTHENTIC BRANDS GROUP mark, and merely adds the ".cam" generic top-level domain ("gTLD"). Such changes do not distinguish the domain name from the mark per Policy ¶ 4(a)(i). See ADP, LLC. v. Ella Magal, FA 1773958 (Forum Aug. 2, 2017) ("Respondent's <workforce-now.com> domain name appropriates the dominant portion of Complainant's ADP WORKFORCE NOW mark and adds a hyphen and the gTLD ".com." These changes do not sufficiently distinguish the disputed domain name from the ADP WORKFORCE NOW mark."); see Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) ("The [<morganstonley.com> and <morganstainley.com>] Domain Names are confusingly similar to Complainant's marks, as they fully incorporate the MORGAN STANLEY mark, varying it only by subtle misspellings, omitting a space between the words, and adding the generic top-level domain ("gTLD") '.com.'"); see also Dell Inc. v. Protection of Private Person, FA 1681432 (Forum Aug. 1, 2016) ("A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs"). Therefore the Panel finds that the disputed domain name is confusingly similar to Complainant's mark per Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant has not licensed or otherwise authorized Respondent to use its mark. Respondent is not commonly known by the disputed domain name: under Policy ¶ 4(c)(ii), WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA 1626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named "Fred Wallace" as registrant of the disputed domain name). Here, the WHOIS information for the disputed domain name lists the registrant as "Walter Moore / corporacioneuroblinds". Therefore the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).

 

Complainant provides evidence showing that Respondent has been actively using the disputed domain name for illegitimate activities that include sending misleading and deceptive emails in attempts to scam Complainant's current business partners out of substantial sums of money: Respondent claimed to be Complainant's Credit & Collections Manager, advising Complainant's client to wire the royalties due to Complainant to a different bank account which is in no way associated with Complainant. Previous panels have determined that a respondent's attempt to pass itself off as a complainant, or a respondent's attempt to phish, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Forum Apr. 30, 2010) ("The Panel finds that Respondent's attempt to "phish" for users' personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)."). Thus the Panel finds that Respondent fails to used the disputed domain name to make a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.

 

Registration and Use in Bad Faith

Respondent (who did not reply to Complainant's contentions) has not presented any plausible explanation for its use of Complainant's mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent's failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.

 

Indeed, as already noted, Respondent has attempted to use the email address associated with the disputed domain name to impersonate one of Complainant's employees, and to attempt to divert funds intended for Complainant. Previous panels have determined that a respondent's attempt to pass itself off as a complainant and to induce fund transfers constitute bad faith use in the sense of the Policy. See National Oilwell Varco, L.P. v. Craig Wood/NOV, FA 1575951 (Forum Sept. 22, 2014) (finding bad faith where respondent fraudulently attempted to induce wire transfers by sending e-mails purporting to be from complainant's President and CEO); see also Capital One Financial Corporation and Capital One Bank v. Austin Howel, FA 289304 (Forum Aug. 11, 2004) (finding bad faith where respondent used complainant's mark to fraudulently induce transfer of credit and personal identification information). Consequently, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <authentlc.cam> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Richard Hill, Panelist

Dated: February 27, 2024