DECISION

 

Authentic Brands Group, LLC v. Shipley Marmion

Claim Number: FA2406002104055

 

PARTIES

Complainant is Authentic Brands Group, LLC ("Complainant"), represented by Bridgette Fitzpatrick of Authentic Brands Group LLC, New York, USA. Respondent is Shipley Marmion ("Respondent"), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <authentlc.com>, registered with GoDaddy.com, LLC.

 

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.

 

Charles A. Kuechenmeister, Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on June 27, 2024; Forum received payment on June 27, 2024.

 

On July 5, 2024, GoDaddy.com, LLC confirmed by e-mail to Forum that the <authentlc.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 July 8, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of July 29, 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.com. Also on July 8, 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 30, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Charles A. Kuechenmeister 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 owns a portfolio of famous brands. It has rights in the AUTHENTIC BRANDS mark based upon its use of that mark in commerce since as early as 2008. The <authentlc.com> domain name is identical or confusingly similar to Complainant's mark because it fully incorporates the mark, albeit misspelled.

 

Respondent has no rights or legitimate interests in the domain name. The domain name is a typosquatted version of Complainant's mark, Respondent is not affiliated with Complainant and Complainant has not licensed or authorized it to use its mark, Respondent is not using the domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use but instead is using the domain name to send emails impersonating Complainant in an effort to defraud Complainant and its clients of substantial sums of money, and Respondent is not commonly known by the domain name.

 

Respondent registered or uses the domain name in bad faith. The domain name is a typosquatted version of Complainant's mark, Respondent is using the domain name to send emails impersonating Complainant in an effort to defraud Complainant and its clients of substantial sums of money, and it registered the domain name with actual knowledge of Complainant's rights in the AUTHENTIC BRANDS mark.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

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 a complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:

 

(1)       the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(2)       the 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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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 as true unless the evidence is clearly contradictory. Nevertheless, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. 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"), WIPO Overview 3.0, at ¶ 4.3 ("In cases involving wholly unsupported and conclusory allegations advanced by the complainant, . . . panels may find that—despite a respondent's default—a complainant has failed to prove its case.").

 

The Panel finds as follows with respect to the matters at issue in this proceeding:

 

Identical and/or Confusingly Similar

Complainant's AUTHENTIC BRANDS mark is not a registered trademark but it is well-settled that a complainant need not show registration of its mark to establish rights in a mark in order to meet the requirements of Policy ¶ 4(a)(i). If proven, common law rights are sufficient to establish rights for the purposes of Policy ¶ 4(a)(i).  Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015) ("A complainant does not need to hold registered trademark rights in order to have rights in a mark under Policy ¶ 4(a)(i) and it is well established that a Complainant may rely on common law or unregistered trademarks that it can make out".), 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 in a trademark can be established by evidence of secondary meaning, which is proven by showing exclusive use of the mark in commerce for a period of time, evidence of advertising and sales, recognition of the mark by customers, unsolicited media attention, or other evidence showing that the relevant consuming public has come to associate the mark with goods or services provided by a single vendor. Karen Koehler v. Hiroshi Ishiura/ Lifestyle Design Inc., FA 1730673 (Forum June 1, 2017) (holding that Complainant established common law rights in her personal name since "[a] mark can generate a secondary meaning sufficient to establish Complainant's rights when consistent and continuous use of the mark has created distinctive and significant good will… Complainant has published under the KAREN KOEHLER name extensively, and Complainant's legal skills have been recognized by various organizations and groups with extensive positive media coverage. Complainant also operates an online blog associated with the KAREN KOEHLER mark."), Gourmet Depot v. DI S.A., FA 1378760 (Forum June 21, 2011) ("Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition."). The WIPO Overview 3.0 ¶ 1.3 lists a number of factors that support a claim of common law trademark rights, including "(i) the nature and duration of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys."  

 

Complainant does not expressly assert that it has common law rights in its mark. It alleges that it has operated under the AUTHENTIC BRANDS mark since 2008, but it submitted no evidence to support that. Complaint Annex 4 is a screenshot of Complaint's website located at <authentic.com> on some unspecified date but bearing the copyright notice ©2023. The website clearly advertises Complainant, listing a number of the brands the Complaint alleges that it represents, and displaying facts about Complainant also alleged in the Complaint, such as $29B+ in annual retail sales, 400K+ points of sale, 150+ countries and the like. Absent, however, is any evidence of the extent of advertising using the mark, and the degree of actual public recognition or association of the mark with Complainant. The evidence presented falls far short of establishing common law rights in the mark. Complainant has failed to meet the requirements of Policy ¶ 4(a)(i). 

 

Rights or Legitimate Interests, Registration or Use in Bad Faith

As Complainant has failed to satisfy the requirements of Policy ¶ 4(a)(i), the Panel may decline to analyze the other elements of the Policy.  Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum Apr. 17, 2017) (finding that because the complainant must prove all three elements under the Policy, the complainant's failure to prove one of the elements makes further inquiry into the remaining element unnecessary), Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum June 23, 2017) (deciding not to inquire into the respondent's rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)). The Panel elects to adopt this approach and does not analyze the other two elements in detail. The Panel does note, however, that the evidence submitted in support of the Policy ¶¶ 4(a)(ii) and 4(a)(iii) elements appears to support Complainant's allegations with respect to those two elements. As to the allegation of use of the domain name to defraud Complainant and its clients of substantial sums of money, the evidence consists only of a single email purportedly from one of Complainant's billing managers, from an email account based upon the domain name, demanding payment of an allegedly past-due invoice. A copy of an invoice bearing a bank routing number and customer account number is submitted with the email, but the invoice is payable not to Complainant but to a well-known clothing distributor. The distributor may well be a client of Complainant but there is no explanation, let alone evidence, of how the invoice could produce a fraudulent payment. And, this single transaction is the sole support for Complainant's allegation of a general fraudulent scheme or practice. The evidence demonstrates passing off or impersonation, but it again falls short of supporting the claim of fraudulent or illegal conduct.

 

DECISION

Complainant having failed to establish all three elements required under the Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the Complaint be and it hereby is DISMISSED.  This Order is based upon a failure of evidence as to one of the three elements, which evidence was not presented but may well exist. Under these circumstances, and recognizing that Complainant appeared herein without legal counsel, the Panel's Order is entered without prejudice to Complainant's right to file another UDRP administrative proceeding involving the domain name supported by competent evidence.

 

 

 

Charles A. Kuechenmeister, Panelist

July 31, 2024