DECISION

 

Eddie Bauer Licensing Services LLC v. Client Care / Web Commerce Communications Limited

Claim Number: FA2406002103618

 

PARTIES

Complainant is Eddie Bauer Licensing Services LLC ("Complainant"), represented by Bridgette Fitzpatrick of Authentic Brands Group LLC, New York, USA. Respondent is Client Care / Web Commerce Communications Limited ("Respondent"), Malaysia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <eddiebauercostarica.com>, registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED.

 

PANEL

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 Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on June 25, 2024; Forum received payment on June 25, 2024.

 

On June 25, 2024, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED confirmed by e-mail to Forum that the <eddiebauercostarica.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 June 26, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 16, 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@eddiebauercostarica.com. Also on June 26, 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 July 17, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.)  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

 

The Domain Name(s) is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

 

Eddie Bauer Licensing Services LLC ("Complainant") is the owner of the famous outdoors brand, EDDIE BAUER. The EDDIE BAUER brand is over 100 years old and is known for both its performance and casual clothing and outdoor equipment sold globally including on www.eddiebauer.com. The EDDIE BAUER brand is supported by a vast portfolio of intellectual property rights, including a global portfolio of over 900 trademark registrations covering a wide variety of goods and services (the "Eddie Bauer IP Rights"). The Eddie Bauer IP Rights include a valid trademark registration (Reg. No. 303519) in Costa Rica for EDDIE BAUER in Classes 18, 25 and 35.

 

The <eddiebauercostarica.com> Domain Name is identical or confusingly similar to Complainant's registered trademarks. The Domain Name consists of the "www." prefix followed by Complainant's trademark "Eddie Bauer" (not case sensitive), the geographic identifier "Costa Rica" (not case sensitive), and the generic suffix ".com". 

 

The Respondent has no rights or legitimate interests in respect of the Domain Name.

Complainant has not authorized Respondent to use the EDDIE BAUER trademark. There is no evidence that the Respondent is using or plans to use the EDDIE BAUER trademark or the domain names incorporating the EDDIE BAUER trademark for a bona fide offering of goods or services that doesn't infringe EDDIE BAUER's intellectual property rights.

On the contrary, Respondent has been actively using the Eddie Bauer trademarks in the Domain Name to promote its website for illegitimate commercial gains by operating a pay per click website. See Annex 1. Such unauthorized use of the Eddie Bauer trademarks is likely to mislead consumers into erroneously believing that Complainant is somehow affiliated with Respondent or endorsing its commercial activities, while in fact, no such relationship exists. There is no evidence of any Respondent's use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with any bona fide offering of goods or services. The Respondent has not been commonly known by the Domain Name. Respondent is not making a legitimate non-commercial or fair use of the Domain Name.

 

The Domain Name was registered and is being used in bad faith.

Respondent was aware of Complainant's trademark at the time Respondent registered the Domain Name. The Complainant's trademarks are well known around the world. This is proof of bad faith at the time of registration.

The gap of decades between registration of Complainant's EDDIE BAUER trademark and Respondent's registration of the <eddiebauercostarica.com> Domain Name containing the trademark shows bad faith registration.

Respondent is trying to pass off the Domain Name as the Complainant's website to sell competing and unauthorized goods. See Annex 1. On the Domain Name's website, Respondent uses the Eddie Bauer IP Rights as well as images of products bearing the Eddie Bauer IP Rights without any authorization. Respondent has no reason to use the Eddie Bauer IP Rights in the Domain Name or on the associated website other than to attract internet users to its site for commercial gain, especially since Complainant's official website is www.eddiebauer.com. Thus, Respondent is intentionally trying to create a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement.

Finally, Respondent used a privacy shield to mask its identity, which makes it difficult for Complainant to contact Respondent and amicably settle a domain dispute.

 

B. Respondent

Respondent failed to submit a Response in this proceeding. Respondent registered the <eddiebauercostarica.com> Domain Name on October 20, 2023.

 

 

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").

 

FINDINGS

Unfortunately for Complainant, Respondent's use of a privacy shield has masked Respondent's identity because the WHOis does not list the name of a Respondent. Respondent's use of a Privacy service frustrates the purpose of the Policy and makes it difficult for Complainant to protect its EDDIE BAUER trademark See Ustream.TV, Inc. v. Vertical Axis, Inc., WIPO Case No. D2008-0598 ("it is difficult to see why a PPC advertiser needs to protect its identity except to frustrate the purposes of the Policy or make it difficult for a brand owner to protect its trademarks against infringement, dilution and cybersquatting").

 

The Registrar of the <eddiebauercostarica.com> is ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED. However, Complainant does not know the identity of Respondent. Under RESPONDENT INFORMATION, Complainant alleges:

Although the WhoIs information does not specifically identify the name of the registrant, in Complainant's experience, when the registrant state and country is listed as "Kuala Lumpur, MY", the registrant is "Client Care / Web Commerce Communications Limited."

 

Complainant's identity of Respondent is a conclusory statement unsupported by evidence. See Ustream.TV, Inc. v. Vertical Axis, Inc., WIPO Case No. D2008-0598 (The standard of proof under the Policy is often expressed as the "balance of the probabilities" or "preponderance of the evidence" standard. Under this standard, an asserting party needs to establish that it is more likely than not that the claimed fact is true. The touchstone, however, is that an asserting party cannot meet its burden by simply making conclusory statements unsupported by evidence. To allow a party to merely make factual claims without any supporting evidence would essentially eviscerate the requirements of the Policy as both complainants or respondents could simply claim anything without any proof. For this reason, Panels have generally dismissed factual allegations that are not supported by any bona fide documentary or other credible evidence.).

 

This proceeding is Dismissed; however, the dismissal is without prejudice as Complainant may be able to bring this proceeding against a proper respondent in the future.

 

DECISION

Complaint having not identified Respondent; the Panel concludes that this proceeding shall be DISMISSED WITHOUT PREJUDICE.

 

 

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated: July 31, 2024