The Complainant is 3x1 NYC, LLC of New York, New York, United States of America (“United States”), represented by Tarter Krinsky & Drogin LLP, United States.
The Respondent is Shannon Amlaw of New Hampshire, United States. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 4, 2017. On May 4, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 5, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 May 17, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 6, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 7, 2017.
The Center appointed Lynda M. Braun as the sole panelist in this matter on June 22, 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 Complainant is 3X1 NYC LLC, a limited liability company organized and existing under the laws of the State of New York, with its principal place of business in New York, New York. The Complainant consists of a jean manufacturing facility where all the denim garments are made by hand and a retail store featuring premium custom made and ready to wear jeans for men and women. The jeans are sold at its facility in, at third party websites and in several high-end retail stores. The Complainant also markets and sells its denim products through its official website “.”
The Complainant owns registered trademarks in the United States, including 3x1, United States Reg. No. 4,043,463, registered on October 18, 2011; and 3x1 MADE HERE, United States Reg. No. 4,641,504, registered on November 18, 2014. The Complainant also owns numerous trademarks in many countries throughout the world, including the European Union, Japan, the Republic of Korea, Australia, Brazil and China (collectively, the “3x1 Mark”).
The Respondent registered the Disputed Domain Name on November 26, 2016. The Disputed Domain Name resolves to a website that closely resembles the Complainant’s official website and appears to be the genuine website of the Complainant. When an individual conducts a Google search for 3x1, the first website to appear is the website to which the Disputed Domain Name resolves. The Respondent’s website purports to sell genuine jeans bearing the 3x1 Mark, although the jeans are not authentic. 5. Parties’ Contentions A. Complainant
In summary, the following are the Complainant’s contentions:
- The Disputed Domain Name is confusingly similar to the Complainant’s trademark.
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
- The Disputed Domain Name was registered and is being used in bad faith.
- The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)):
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) The Disputed Domain Name was registered and is being used in bad faith. A. Identical or Confusingly Similar
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.
It is uncontroverted that the Complainant has established rights in the 3x1 Mark based on its several years of continuous use as well as its numerous trademark registrations in the United States and worldwide for the 3x1 Mark. The Disputed Domain Name consists of the 3x1 Mark followed by the descriptive or generic word “jeans” connected by a hyphen, and followed by the generic Top-Level Domain (“gTLD”) “.com”.
Numerous UDRP decisions have reiterated that the addition of a descriptive or generic word to a trademark is insufficient to avoid confusing similarity. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo,WIPO Case No. D2011-0795; Hoffman-La Roche, Inc. v. Wei-Chun Hsia,WIPO Case No. D2008-0923; Nintendo of America, Inc. v. Fernando Sascha Gutierrez,WIPO Case No. D2009-0434. This is especially true where, as in the present case, the descriptive or generic word “jeans” is associated with the Complainant and its business. See, e.g., Gateway, Inc. v. Domaincar,WIPO Case No. D2006-0604 (finding the domain name confusingly similar to the trademark GATEWAY because the domain name contained “the central element of the Complainant’s GATEWAY marks, plus the descriptive word for the line of goods and services in which the Complainant conducts its business”).
Further, although the Disputed Domain Name contains hyphens between the 3x1 Mark and the word “jeans”, this is irrelevant for purposes of the Policy, because the presence or absence of punctuation marks such as hyphens cannot on their own avoid a finding of confusing similarity. Six Continents Hotels, Inc. v. Helen Slew,WIPO Case No. D2004-0656 (citing Six Continents Hotels, Inc. v. Georgetown, Inc.,WIPO Case No. D2003-0214 (hyphens do not “serve to dispel Internet user confusion here”); Fort Knox National Company v. Ekaterina Phillipova,WIPO Case No. D2004-0281 (“[T]his Panel believes that the expression true-pay is similar to the trademark TRUEPAY”).
Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may generally be disregarded when assessing whether a disputed domain name is identical or confusingly similar to a trademark. Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182.
Accordingly, the first element of paragraph 4(a) has been met by the Complainant. B. Rights or Legitimate Interests
Under the Policy, a 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 rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is 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”), paragraph 2.1.
In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case. Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its 3x1 Mark. The name of the Respondent has no apparent connection to the Disputed Domain Name that would suggest that it is related to a trademark or trade name in which the Respondent has rights. The Complainant does not have any type of business relationship with the Respondent nor is the Respondent an authorized dealer, agent, distributor, reseller, wholesaler or retailer of 3x1 goods. Based on the use made of the Disputed Domain Name, the Panel finds that the Respondent is not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Name.
Accordingly, the second element of paragraph 4(a) has been met by the Complainant. C. Registered and Used in Bad Faith
The Panel finds that based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.
First, the Respondent attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s 3x1 Mark. The Panel finds that the Respondent registered and is using the Disputed Domain Name in bad faith to attract customers to its website by using a domain name that is confusingly similar to the Complainant’s 3x1 Mark. The Respondent’s use of the Disputed Domain Name to resolve to a website that appears to be the official website of the Complainant to entice customers to purchase non-authentic products demonstrates the Respondent’s bad faith registration and use of the Disputed Domain Name under the Policy, paragraph 4(b)(iv). Such use creates the false impression that the Respondent’s website is sponsored or endorsed by the Complainant. In fact, the Complainant was informed by a potential customer that it arrived at the Respondent’s website, only to purchase jeans that it never received.
Second, the Panel finds that the Respondent had actual knowledge of the Complainant’s rights in its widely-used 3x1 Mark when registering the Disputed Domain Name. The Respondent’s actual knowledge of the Complainant’s rights can be inferred from the Respondent’s use of the Disputed Domain Name to resolve to a website that displayed and sold goods bearing the 3x1 Mark to convince customers that the website was affiliated with the genuine 3x1 brand when it was not.
Accordingly, the third element of paragraph 4(a) has been met by the Complainant. 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.
Lynda M. Braun
Sole Panelist
Date: June 30, 2017
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