The Complainant is Solid Clothing, Inc., United States of America (“U.S.”), represented by Park Law Firm, U.S.
The Respondent is Privacy Service Provided by Withheld for Privacy ehf, Iceland / Huy Dang, Viet Nam.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2021. On December 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 23, 2022, 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 January 10, 2022, 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 amendment to the Complaint on January 10, 2022.
The Center verified that the Complaint together with the amendment to 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 January 19, 2022. In accordance with the Rules, paragraph 5, the due date for Response was March 14, 2022. On January 10 and 15 and on February 4, 2022 the Respondent sent three informal email communications to the Center. The Center sent a possible settlement email to the Parties on February 7, 2022. The Complainant did not request a suspension of the proceeding for settlement discussion. The Respondents did not submit any formal response. The Center informed the Parties of its commencement of Panel appointment process on March 3, 2022.
The Center appointed Edoardo Fano, Ilhyung Lee, and Luca Barbero as panelists in this matter on April 14, 2022. The Panel finds that it was properly constituted. Each member of 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.
The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties.
Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to the Respondent”. Therefore, the Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of a formal response from the Respondent.
The language of the proceeding is English, being the language of the Registration Agreement, as per paragraph 11(a) of the Rules.
4. Factual BackgroundThe Complainant is Solid Clothing, Inc., a U.S. company operating in the clothing field and owning the following trademark registrations for G-STYLE USA:
- U.S. Trademark No. 5,404,389 for G-STYLE USA, registered on February 20, 2018;
- U.S. Trademark No. 5,716,332 for G-STYLE USA and design, registered on April 2, 2019.
The Complainant operates on the Internet at the website “www.gstyleusa.com”, having registered the domain name
The Complainant provided evidence in support of the above.
According to the WhoIs records, the disputed domain name was registered on August 27, 2021, and it resolves to a website displaying the Complainant’s trademark and offering clothing products for sale. According to the Complainant, these products are counterfeits. From November 10, 2021, the Complainant has received several email complaints from its clients for the purchases they made in the Respondent’s website thinking they were buying Complainant’s products.
On November 11, 2021, the Complainant’s legal representatives wrote a cease-and-desist letter to the Respondent, without receiving any reply. On December 3, 2021, the Complainant’s legal representatives wrote a cease-and-desist letter to the dropship supplier of the Respondent, and the latter responded not to have any claim or ownership over the Respondent’s website.
5. Parties’ Contentions A. ComplainantThe Complainant states that the disputed domain name is identical to its trademark G-STYLE USA, as the disputed domain name wholly contains the Complainant’s trademark.
Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name since it has not been authorized by the Complainant to register the disputed domain name or to use its trademark within the disputed domain name, it is not commonly known by the disputed domain name and it is not making either a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
The Complainant submits that the Respondent has registered the disputed domain name in bad faith, since the Complainant’s trademark G-STYLE USA is distinctive and known in the field of clothing. Therefore, the Respondent targeted the Complainant’s trademark at the time of registration of the disputed domain name and the Complainant contends that the use of the disputed domain name with the purpose of intentionally attempting to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the disputed domain name’s source, sponsorship, affiliation or endorsement, qualifies as bad faith registration and use.
B. RespondentThe Respondent has made no formal reply to the Complainant’s contentions.
A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, reasonable facts asserted by a complainant may be taken as true, and appropriate inferences, in accordance with paragraph 14(b) of the Rules, may be drawn (see, e.g., Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441; Microsoft Corporation v. Freak Films Oy,WIPO Case No. D2003-0109; SSL International PLC v. Mark Freeman,WIPO Case No. D2000-1080; Altavista Company v. Grandtotal Finances Limited et. al.,WIPO Case No. D2000-0848; Confédération Nationale du Crédit Mutuel, Caisse Fédérale du Crédit Mutuel Nord Europe v. Marketing Total S.A.,WIPO Case No. D2007-0288).
In this case, the Respondent submitted three informal email communications on January 10 and 15 and on February 4, 2022, stating the following:
“Dear, The complainant about my domain is the owner of the domain gstyleusa.com I attached their complaint in attachment They say their customers complain and ask me to handle 7 problems Their customers and mine are completely different, unrelated Their customers don't buy my products and my customers don't buy their products either I sell and care for my customers and so do they We do business on 2 different websites, different logos, different brands, different products, different ways of working. I did not violate any commercial law They and their customers have no right to complain and forced me to stop doing business. It would be unfair if you block my domain just because this complaint. Please review help me. I am ready to provide any information you need” (January 10, 2022).
“I choose not to amend the Complaint” (January 15, 2022).
“I would like to suspend the present dispute to explore settlement talks” (February 4, 2022).
6. Discussion and FindingsParagraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:
(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 has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe Panel finds that the Complainant is the owner of the trademark G-STYLE USA both by registration and acquired reputation and that the disputed domain name is identical to the trademark G-STYLE USA.
It is also well accepted that a generic Top-Level-Domain (“gTLD”), in this case “.com”, is typically ignored when assessing the similarity between a trademark and a domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.
The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain name is identical to the Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate InterestsParagraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following circumstances, in particular but without limitation:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
According to paragraph 4(a) of the Policy, the Complainant has the burden of proving the three elements of the Policy. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy is potentially quite difficult, since proving a negative circumstance is always more complicate than establishing a positive one. As such, it is well accepted that it is sufficient for the Complainant to make a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name in order to shift the burden of production on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Complainant in its Complaint, and as set out above, has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. It asserts that the Respondent, who is not currently associated with the Complainant in any way, is not commonly known by the disputed domain name and is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name, but instead in the website at the disputed domain name Complainant’s counterfeited products are offered for sale.
The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain name.
Should the Complainant’s products sold on the website to which the disputed domain name is redirecting Internet users be genuine products, legitimately acquired by the Respondent, the question that would arise is whether the Respondent would therefore have a legitimate interest in using the disputed domain name that is confusingly similar to the Complainant’s trademark in circumstances that are likely to give rise to confusion.
According to the current state of UDRP decisions in relation to the issue of resellers as summarized in the WIPO Overview 3.0, section 2.8.1:
“[...] resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the ‘Oki Data test’, the following cumulative requirements will be applied in the specific conditions of a UDRP case:
(i) the respondent must actually be offering the goods or services at issue;
(ii) the respondent must use the site to sell only the trademarked goods or services;
(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and
(iv) the respondent must not try to ‘corner the market’ in domain names that reflect the trademark.”
This summary is based on the UDRP decision in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903.
On the other hand, should the products offered for sale on the website to which the disputed domain name is redirecting Internet users be counterfeit products, as declared by the Complainant, that would be clear evidence that the Respondent does not have any rights or legitimate interests in the disputed domain name.
In the present case, the Panel is reluctant to accept the unsupported allegation of counterfeiting asserted by the Complainant as based only on mere conclusory statements.
According to the UDRP panel decisions in relation to the issue of a respondent default and a complainant’s unsupported allegations as summarized in the WIPO Overview 3.0, section 4.3:
“Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true. In cases involving wholly unsupported and conclusory allegations advanced by the complainant, or where a good faith defense is apparent (e.g., from the content of the website to which a disputed domain name resolves), panels may find that – despite a respondent’s default – a complainant has failed to prove its case.”
While the Panel takes note of the various client complaints received by the Complainant from users misled by the disputed domain name, the annexed communications centered on the lack of receipt of the goods and requests for refunds, without any clear indication to the Panel that the nature of the goods received (if any) were actually counterfeits of the Complainant’s genuine products. Therefore, the Panel considers that the Complainant’s claim that the goods sold on the website to which the disputed domain name is redirecting Internet users are counterfeited is not adequately supported.
Nevertheless, the Panel does not consider necessary to invite the Complainant to file supplemental submissions in order to prove the above, not only to keep the UDRP as simple and speedy as it should be, but also for the following reasons.
Even if the products sold by the Respondent were the Complainant’s genuine products, from inspection of the Respondent’s website, the Panel finds that the use of the Complainant’s trademark and the lack of any disclaimer would falsely suggest to Internet users, under the Oki Data principles (see above), that the website to which the disputed domain name resolves is owned by the Complainant or at least affiliated to the Complainant, a fact also confirmed by the many email complaints sent to the Complainant by its clients.
The Panel therefore concludes that the disputed domain name is not being used in connection with a bona fide offering of goods or services.
Moreover, the Panel finds that the composition of the disputed domain name carries a high risk of implied affiliation as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See WIPO Overview 3.0, section 2.5.1.
The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy provides that “for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that [the respondent has] registered or has 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 the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) that [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) that [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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”.
Regarding the registration in bad faith of the disputed domain name, the reputation of the Complainant’s trademark G-STYLE USA in the clothing field is clearly established and the Panel finds that the Respondent likely knew of the Complainant and deliberately registered the disputed domain name, especially because the disputed domain name resolves to a website reproducing the Complainant’s trademark and offering for sale various purported Complainant products.
The Panel further notes that the disputed domain name is also being used in bad faith since the Respondent is trying to attract Internet users to its website by creating likelihood of confusion with the Complainant’s trademark in order to sell the same products as the Complainant, an activity clearly detrimental to the Complainant’s business.
The above suggests to the Panel that the Respondent intentionally registered and is using the disputed domain name in order both to disrupt the Complainant’s business, in accordance with paragraph 4(b)(iii) of the Policy, and to attract, for commercial gain, Internet users to its website in accordance with paragraph 4(b)(iv) of the Policy.
Furthermore, the Panel considers that the nature of the disputed domain name, which is identical to the Complainant’s trademark, further supports a finding of bad faith. See, WIPO Overview 3.0, section 3.2.1.
The Panel finds that the Complainant has presented evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain name in bad faith.
The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied.
7. DecisionFor 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
Edoardo Fano
Presiding Panelist
Ilhyung Lee
Panelist
Luca Barbero
Panelist
Date: April 14, 2022