The Complainant is HBI Branded Apparel Enterprises, LLC and Hanesbrands, Inc., both of Winston-Salem, North Carolina, United States of America ("United States" or "U.S.A."), represented by Kilpatrick Townsend & Stockton LLP, United States.
The Respondent is youngmin kwon of Ansan, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name is registered with Gabia, Inc. (the "Registrar"). 3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 14, 2017. On April 18, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 19, 2017, the Registrar transmitted by email to the Center its verification response indicating that the language of the Registration Agreement is Korean and confirming that the Respondent is listed as the registrant and providing the Respondent's contact details.
On April 21, 2017, the Center notified the Parties in both English and Korean that the language of the Registration Agreement for the disputed domain name is Korean. On April 26, 2017, the Complainant requested for English to be the language of the proceeding. The Respondent did not reply.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 28, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 18, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 19, 2017.
The Center appointed Andrew J. Park as the sole panelist in this matter on June 1, 2017. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainants, HBI Branded Apparel Enterprises, LLC and Hanesbrands, Inc. (collectively referred to as the "Complainant" or "HBI"), are both limited liability companies located in Winston-Salem, North Carolina, U.S.A. Founded in 1901, the Complainant is a Fortune 500 company with approximately 65,300 employees in more than 40 countries, including Japan.
The Complainant has a long history of innovation and brand recognition. The Complainant is the world's largest marketer of basic apparel such as T-shirts, socks, sweatshirts, fleece and other activewear. Since 1919, the Complainant has been offering such apparel under the CHAMPION brand name. Last year, the Complainant sold CHAMPION apparel on five continents and earned approximately USD 1.2 billion in revenue. Through the Complainant's extensive and continuous use of the trademark CHAMPION in the United States as well as internationally, the trademark CHAMPION has acquired distinctiveness as it relates to apparel and is a widely-known trademark associated exclusively with the Complainant and its business.
In addition to the common law trademark rights the Complainant has built over nearly 100 years of use of the CHAMPION trademark, the Complainant holds a number of trademark registrations on the Principal Register of the United States Patent and Trademark Office for its CHAMPION trademarks, including, inter alia, CHAMPION, CHAMPION (stylized), CHAMPION SPORTS, CHAMPION GEAR, for use in connection with products and services such as the following 1) clothing such as shirts, shorts, T-shirts, sports bras, jackets, pants, socks, sweatshirts, and underwear; and 2) retail store services featuring apparel. The earliest of these include the United States trademark registration No. 274,178, for CHAMPION, registered on August 19, 1930.
The Complainant also owns a number of registrations throughout the world for the CHAMPION trademark, including, inter alia, Japan, Republic of Korea, China, Philippines, Canada, Mexico, Australia, and New Zealand.
The Complainant has also registered and uses the domain name to provide information about the Complainant and its CHAMPION products to the public.
The Respondent has not responded to the Complaint.
The disputed domain name was registered by the Respondent on September 20, 2015. The disputed domain name resolves to an active website that is used for selling clothing apparel, which includes CHAMPION-branded products as well as products of the Complainant's direct competitors. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain name should be transferred to the Complainant because:
1) the disputed domain name is identical and/or confusingly similar to the Complainant's CHAMPION trademark and infringes upon the Complainant's exclusive and indisputable common law and registered rights in and to the mark. The Respondent used the Complainant's trademark CHAMPION in the disputed domain name in its entirety hoping to mislead consumers into believing that the disputed domain name is affiliated with the Complainant to attract Internet users to the Respondent's website for the Respondent's commercial gain. Consumers who search the Internet for the Complainant or the Complainant's CHAMPION products by using the CHAMPION trademark may be directed to the disputed domain name, thereby creating a likelihood of confusion. That likelihood of confusion is magnified due to the Respondent's prominent display of images of CHAMPION products on the website to which the disputed domain name resolves.
2) the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent registered the disputed domain name on or around September 21, 2015 – years after the Complainant had established rights in its CHAMPION trademark. Because the Complainant's CHAMPION trademark is so well-known and recognized, there can be no rights or legitimate use by the Respondent. The Complainant has no relationship whatsoever with the Respondent and has never authorized the Respondent to use the mark CHAMPION.
3) the disputed domain name was registered and is being used in bad faith. The Complainant's trademark CHAMPION was used by the Complainant first and was registered long before the Respondent became the owner of the disputed domain name in 2015. The Complainant contends that it is "inconceivable" that the Respondent was unaware of the Complainant's CHAMPION trademark given the content of the Respondent's website, which offers CHAMPION products for sale and prominently displays the Complainant's CHAMPION design logo. Thus, the Complainant contends that the Respondent's bad faith is also established by the likelihood that the Complainant's customers will mistakenly believe the disputed domain name and accompanying website are authorized, endorsed, sponsored, or licensed by the Complainant, when that is not the case. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Language of Proceeding
The Registration Agreement for the disputed domain name is in Korean. Pursuant to paragraph 11 of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, i.e., Korean. Here, the Center preliminarily accepted the Complaint as filed in English, and has indicated that it would accept a response in either English or Korean, subject to a determination by the Panel pursuant to paragraph 11 of the Rules.
Having considered the circumstances of the case, the Panel decides that English be adopted as the language of the proceeding under paragraph 10 of the Rules. In coming to this decision, the Panel has taken the following into account: although the administrative proceeding was notified to the Respondent in both English and Korean, the Respondent has chosen not to participate in the proceeding despite having the opportunity to do so (by either requesting that the proceeding be conducted in Korean or submitting a response to the Complaint). Additionally, significant content on the website at the disputed domain name is offered in English, including the Respondent's notice of its purported copyright rights.
In light of these circumstances, the Panel concludes that it will accept the Complaint as filed in English and issue a decision in English. 7. Discussion and Findings
Paragraph 4(a) of the Policy sets forth three requirements which have to be met for the Panel to order the transfer of the disputed domain name to the Complainant. Those requirements are: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith.
The Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to paragraph 15(a) of the Rules. In accordance with paragraphs 5(f) and 14(b) of the Rules, if the respondent does not submit a response, in the absence of exceptional circumstances, the panel shall decide the dispute based upon the complaint. A. Identical or Confusingly Similar
This element consists of two parts: first, whether the Complainant has rights in a relevant trademark and, second, whether the disputed domain name is identical or confusingly similar to that trademark.
The Panel finds that the Complainant has established registered rights in the mark CHAMPION and that the disputed domain name is confusingly similar to the Complainant's trademark CHAMPION. The disputed domain name incorporates the Complainant's trademark CHAMPION in its entirety, and the added term "Japan" does nothing to avoid a finding of confusing similarity to the Complainant's trademark.
For these reasons, pursuant to the Policy, paragraph 4(a)(i), the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant's trademark. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the Respondent carries the burden of demonstrating its rights or legitimate interests in the disputed domain name. If the Respondent fails to do so, the Complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 2.1.
The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules (see, e.g., Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009; Isabelle Adjani v. Second Orbit Communications, Inc.,WIPO Case No. D2000-0867). The Complainant should nevertheless make out a prima facie case that the Respondent lacks rights or legitimate interests (see Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110).
Here, the Panel finds that the Complainant has made out an unrebutted prima facie case.
The Complainant has asserted that the Respondent has no relationship with or authorization from the Complainant to use its trademarks. There is nothing in the record to suggest that the Respondent has made a legitimate noncommercial or fair use of the disputed domain name or has been commonly known by the disputed domain name. Also, there is no evidence that the Respondent has an intention to use the disputed domain name in connection with a bona fide offering of goods or services. The Panel's view is that these facts may be taken as true in the circumstances of this case as they have not been denied by the Respondent.
The evidence, which is not denied by the Respondent, shows that the Respondent knew of and has sought to take unfair advantage of the similarity between the disputed domain name and the Complainant's trademarks, which is not descriptive or generic as it relates to clothing apparel in order to free ride on the notoriety of the Complainant's mark. In addition, the Respondent offers products for sale that directly compete with the Complainant's products. The Panel finds that this conduct does not amount to a bona fide offering of goods nor otherwise provide a right or legitimate interest in the disputed domain name under paragraph 4(a)(ii) of the Policy (see, e.g., American Automobile Association Inc. v. Texas International Property Associates,WIPO Case No. D2007-0592; Avon Products Inc. v. Jongsoo Lee, WIPO D2001-0272).
The Panel agrees with the Complainant that there is no evidence whatsoever that the Respondent is currently using or commonly known by, has used or has been commonly known under, or has a bona fide intent to use or be commonly known under the disputed domain name or the name "champion".
Accordingly, the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following is sufficient to support a finding of bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that the complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on the respondent's website or location.
The Complainant claims that the Respondent registered and is using the disputed domain name in bad faith in violation of the Policy, paragraph 4(a)(iii). Specifically, the Complainant claims that the Respondent's behavior falls within the circumstances described under the Policy, paragraph 4(b)(iv), by using the disputed domain name for the purpose of attempting to attract, for commercial gain, Internet users to the Respondent's "" website by creating a likelihood of confusion with the Complainant's CHAMPION mark as to the source, affiliation, or endorsement of the website.
As already mentioned, the Respondent did not file any response to the Complaint, failing thereby to rebut the Complainant's allegations of the Respondent's bad faith registration and use of the disputed domain name.
Nevertheless, the Panel still has the responsibility of determining which of the Complainant's assertions are established as facts, and whether the conclusions asserted by the Complainant can be drawn from the established facts (see Harvey Norman Retailing Pty Ltd v. Oxford-University,WIPO Case No. D2000-0944).
The Panel finds that the Complainant's trademark CHAMPION was registered long before the Respondent registered the disputed domain name . Given that the disputed domain name merely adds a geographical term to the Complainant's mark, and the website to which the disputed domain name resolves offers CHAMPION products for sale and prominently displays the Complainant's CHAMPION design logo, it is obvious that the Respondent did not come up with the disputed domain name independently without the Complainant's trademark in mind. Accordingly, the evidence, which is not rebutted by the Respondent, shows that the Respondent knew of and has sought to take unfair advantage of the similarity between the disputed domain name and the Complainant's trademark CHAMPION.
The conduct described above falls squarely within paragraph 4(b)(iv) of the Policy and accordingly, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith pursuant to the Policy, paragraph 4(a)(iii). 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Andrew J. Park
Sole Panelist
Date: June 19, 2017
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