The Complainant is ABG-Volcan, LLC, United States of America (“United States”), represented internally.
The Respondent is Bai Hou, China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 21, 2020. On September 22, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 23, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 24, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 28, 2020. The Center verified that the Complaint together with the amended 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 October 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 26, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 30, 2020. The Center appointed Steven A. Maier as the sole panelist in this matter on November 11, 2020. 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 a limited liability company organized under the laws of the state of Delaware, United States. It is a retail clothing supplier. The Complainant is the owner of registrations for various trademarks comprising or including the mark VOLCOM. Those registrations include, for example: - United States trademark number 1725875 for the word mark VOLCOM, registered on October 20, 1992; and - United States trademark number 6148957 for a design plus word mark VOLCOM together with a “diamond” logo, registered on September 8, 2020. The disputed domain name was registered on July 20, 2018. The disputed domain name has resolved to a website at “www.volcomsoutlet.com” which is headed with the Complainant’s VOLCOM mark and diamond logo and which offers discounted clothing for sale online. 5. Parties’ Contentions A. Complainant The Complainant relies on its trademark registrations and also contends that it (or its predecessor in interest) has operated an official website for its clothing brand at “www.volcom.com” since 1996. The Complainant submits that the disputed domain name is confusingly similar to its VOLCOM trademark, differing from that trademark only by the addition of the letter “s” and the term “outlet”, which implies that it represents a marketplace for the Complainant’s goods. The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It states that there is no connection between the Complainant and the Respondent, and that the Respondent registered and is using the disputed domain name solely to mislead customers for commercial gain. The Complainant submits that the Respondent registered and has used the disputed domain name in bad faith. It refers in particular to the Respondent’s website mentioned above, although the Panel notes that it has failed to exhibit any evidence of the appearance of that website, relying solely upon a hyperlink: that is unsatisfactory in the Panel’s view, as it fails to evidence the appearance of the website in the period covered by the Complaint. The Complainant states that the website and the goods sold on it are unauthorized and that some of the goods are counterfeit (although particulars are not provided). The Complainant submits that it is the Respondent’s obvious intention to capitalize unfairly on the Complainant’s brand by misrepresenting an association between its website and the Complainant. The Complainant requests the transfer of the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements 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. A. Identical or Confusingly Similar The Complainant has established that it has registered trademark rights in the mark VOLCOM. The disputed domain name wholly incorporates the Complainant’s mark together with the letter “s” and the dictionary term “outlet”, neither of which prevent the Complainant’s trademark from being recognisable within the disputed domain name. The Panel therefore finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights B. Rights or Legitimate Interests In the view of the Panel, the Complainant’s submissions set out above give rise to a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. However, the Respondent has not filed a Response in this proceeding and has not submitted any explanation for its registration and use of the disputed domain name, or evidence of rights or legitimate interests on its part in the disputed domain name, whether in the circumstances contemplated by paragraph 4(c) of the Policy or otherwise. There being no other evidence before the Panel of any such rights or legitimate interests, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith While the Complainant’s evidence concerning the Respondent’s website is sketchy, the Panel has reviewed the website to which the disputed domain name resolved as at the date of this Decision. The Panel finds in these circumstances that the Respondent’s website prominently uses the Complainant’s word and design trademarks and represents a clear impersonation of an official website operated by the Complainant. The Panel also notes that the website includes no disclaimer of its implied connection with the Complainant and that the Respondent has not disputed the Complainant’s factual assertions in this proceeding, including the allegation that the website includes counterfeit goods. The Panel finds in the circumstances that the Respondent registered and has used the disputed domain name for the purpose of impersonating the Complainant and unfairly taking advantage of the Complainant’s goodwill in its VOLCOM trademark by misrepresenting that its website is operated or duly authorized by the Complainant. The Panel finds in particular that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website (para 4(b)(iv) of the Policy). The Panel therefore concludes that the disputed domain name has been registered and is being used in bad faith. 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, Steven A. Maier
Sole Panelist
Date: November 18, 2020
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