The Complainant is Fruit of the Loom International Ltd., Ireland, represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Name Redacted1 .
2. The Disputed Domain Name, Registry and RegistrarThe Registry of the disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 28, 2021. On October 28, 2021, the Center transmitted by email to the Registry a request for registrar verification in connection with the disputed domain name. On November 5, 2021, the Registry 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 .eu Alternative Dispute Resolution Rules (the “ADR Rules”) and the World Intellectual Property Organization Supplemental Rules for .eu Alternative Dispute Resolution Rules (the “Supplemental Rules”).
In accordance with the ADR Rules, Paragraph B(2), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 15, 2021. In accordance with the ADR Rules, Paragraph B(3), the due date for Response was December 15, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 16, 2021, however the Center received on the same date a communication claiming identity theft.
The Center appointed Marilena Comănescu as the sole panelist in this matter on January 4, 2022. 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 ADR Rules, Paragraph B(5).
The language of the proceeding is English, as decided in a previous decision related to the request to change the language of the ADR Proceeding.
4. Factual BackgroundThe Complainant, a company established in 1851 in Ireland, is a wholly owned subsidiary of Fruit of the Loom, Inc. Another wholly owned subsidiary of Fruit of the Loom, Inc., Russell Brands, LLC, is the owner of JERZEES trademark registrations worldwide.
The Complainant is active in the global underwear and casualwear business and currently is operating in 44 countries worldwide and it has received numerous accolades and recognitions in its field.
The Complainant submits that the JERZEES brand has over 100 years expertise in manufacturing quality apparel and that it has built up a huge amount of goodwill in the name JERZEES in conjunction with underwear, panties, bras, t-shirts, sweats, sweatshirts, socks, thermals and more.
The Complainant (through its group of companies) owns trademark rights for JERZEES, as follows:
- the Spanish Trademark registration number M1226999 for JERZEES (stylised), filed on December 29, 1987 and registered on February 20, 1989, covering goods in Nice Class 25; and
- the European Union Trademark registration number 015966658 for the mark JERZEES (word), filed on October 21, 2016, and registered on March 22, 2017, covering goods and services in Nice Classes 18, 25 and 35.
The Complainant (directly or through its group of companies) owns 16 domain names comprising the mark JERZEES, the principal,
The disputed domain name was registered on April 7, 2006, and, at the time of filing the Complaint, it was used to redirect Internet users to a third party website where products similar to those of the Complainant were promoted.
When the Panel visited the website under the disputed domain name, an error page was linked to the disputeddomain name.
Before commencing this proceeding, on June 30, 2021, July 13, 2021 and July 22, 2021, the Complainant send Cease and Desist letters to the Respondent. No response was received.
5. Parties’ Contentions A. ComplainantThe Complainant requests the transfer of the disputed domain name to it and contends the following: the disputed domain name is identical or confusingly similar to its domain name
The Respondent did not formally reply to the Complainant’s contentions.
On December 16, 2021 the Center received an email communication from the Name Redacted stating that it does not hold the disputed domain name.
6. Discussion and FindingsAccording to Article 22(1)(a) of the Commission Regulation (EC) No. 874/2004 (hereinafter, the “Regulation”), an ADR procedure may be initiated by any party where the registration is speculative or abusive within the meaning of Article 21. Article 21(1) of the Regulation, provides that a registered domain name shall be subject to revocation where it is identical or confusingly similar to a name in respect of which a right is recognized or established by national and/or European Union law and where it:
(a) has been registered by its holder without rights or legitimate interests in the name; or
(b) has been registered or is being used in bad faith.
In the present ADR proceeding, the Complainant has pleaded the cumulative existence of the circumstances provided by the Regulation and ADR Rules (points (a) and (b) above). The Panel notes that the Regulation and ADR Rules list the issues under points (a) and (b) in the alternative, but nevertheless the Panel will examine both of these issues in order to reach its decision in the present ADR proceeding.
A. Preliminary Procedural Issue. Respondent and Redaction of Respondent’s IdentityAs noted above, the Name Redacted company has been confirmed by the Registrar as the listed registrant of record for the disputed domain name.
Name Redacted claims in its email sent to the Center on December 16, 2021 that it is not the holder of the disputed domain name and thus, it may be possible that Name Redacted has been the victim of identity theft, and if so the Panel notes there would be no benefit in Name Redacted being formally considered the Respondent in this proceeding.
The Panel will refer to the entity registered in the WhoIs as the registrant of the disputed domain name as Name Redacted, and to the individual or entity which registered (and used) the disputed domain name as the Respondent.
The Panel is satisfied that the Center, by sending communications to the registrant revealed by the Registry to its listed WhoIs postal address, email addresses and to another postal address indicated in the Complaint and in the Registry’s verification response, has exercised extreme care and discharged its responsibility under paragraph A 2 of the ADR Rules to employ all reasonably available means to serve actual notice of the Complaint upon the Respondent.
This situation gives rise to the question whether there should be a redaction from the decision to protect the privacy of Name Redacted, even if not explicitly requested.
The Panel notes that there is not conclusive evidence to ascertain in this proceeding whether Name Redacted has been a victim of identity theft or not, but noting all the circumstances of this exceptional case, the Panel will proceed redacting the registrant’s name and information from the Panel’s decision.
See similarly Lutosa v. Name Redacted,WIPO Case No. D2021-0809; Accenture Global Services Limited v. Domains by Proxy, LLC / Name Redacted,WIPO Case No. D2013-2099; Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted,WIPO Case No. D2009-1788.2
B. Identical or Confusingly Similar to a name in respect of which a right or rights are recognized or established by national law of a Member State and/or European Union lawArticle 10(1) of the Regulation contains a list of rights which may fulfill the definition of “name in respect of which a right is recognized or established” provided in Article 21(1) of the Regulation. Said list includes, inter alia: “registered national and community trademarks, geographical indications or designations of origin, and, in as far as they are protected under national law in the Member-State where they are held: unregistered trademarks, trade names, business identifiers, company names, family names, and distinctive titles of protected literary and artistic works.”
Paragraph B(11)(d)(1)(i) of the ADR Rules requires that the disputed domain name be “identical or confusingly similar to a name in respect of which a right is recognized or established by national law of a member State and/or European Union law”.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.4.1 establishes that: “A trademark owner’s affiliate such as a subsidiary of a parent or of a holding company, or an exclusive trademark licensee, is considered to have rights in a trademark under the UDRP for purposes of standing to file a complaint”. The Panel finds that the Complainant (through its group of companies) has rights in the European Union registration for the word trademark JERZEES. See also Yoox Net-a-porter Group v. Josef Huber,WIPO Case No. DEU2020-0004.
The Panel notes that the disputed domain name reproduces the JERZEES trademark exactly together with the “.eu” country code Top-Level Domain (“ccTLD”) which, as stated in the vast majority prior cases, can be disregarded, being a mere technical requirement for registration.
The Panel therefore finds that the disputed domain name is identical to the JERZEES trademark as per the purpose of the Paragraph B(11)(d)(1)(i) of the ADR Rules.
C. Rights or Legitimate InterestsUnder the ADR Rules, the burden of proof for the lack of rights or legitimate interests of the Respondent lies with the Complainant. However, the existence of negative facts is difficult to prove, and the relevant information for the Respondent is mostly in its sole possession. Therefore, the Panel holds that it is sufficient that the Complainant makes a prima facie demonstration that the Respondent lacks rights or legitimate interests in the disputed domain name. The burden of production then shifts to the Respondent to submit appropriate evidence demonstrating rights or legitimate interests in the disputed domain name. If the Respondent fails to come forward with such relevant evidence, the Complainant is deemed to have satisfied the second element.
The Complainant contends that the JERZEES trademark was registered before the registration of the disputed domain name, and its JERZEES products are promoted on the website “www.jerzees.com” since 1995.
Although properly notified with regard to the present procedure, the Respondent failed to provide a Response to invoke any circumstances which could demonstrate any rights or legitimate interests in the disputed domain name.
Example of justification for registering or using the disputed domain name, are listed in Paragraph B(11)(e) of the ADR Rules as follows:
(i) prior to commencing this proceeding the Respondent has used the disputed domain name in connection with the offering of goods or services or that it has made demonstrable preparations to do so;
(ii) the Respondent as an undertaking, organization or natural person has been commonly known by the disputed domain name; or that
(iii) the Respondent is making a legitimate and noncommercial or fair use of the disputed domain name, without intent to mislead consumers or harm the reputation of a name in which a right is recognized or established by national law and/or European Union law.
According to the records before it, the Panel finds that the disputed domain name has been used to fraudulently impersonate the Name Redacted and, also, for redirecting to a domain name displaying a websiteproviding references to products competing to those offered by the Complainant. The Panel notes that there is no reasonable explanation for the selection of the disputed domain name for such use. In this regard, previous panels have categorically held that the use of a domain name for illegal activity (such as swindle, fraud, identity theft, phishing and impersonation) can never confer rights or legitimate interests in a respondent. See section 2.13 of theof the WIPO Overview 3.0.
Accordingly, in the absence of any evidence to support a possible basis on which the Respondent may have rights or legitimate interests in respect of the disputed domain name, and having in view the other circumstance of this case, the Panel accepts the Complainant’s unrebutted prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has satisfied the condition set out at Paragraph B(11)(d)(1)(ii) of the ADR Rules.
D. Registered or Used in Bad FaithUnder Article 21(1) of the Regulation (EC) No. 874/2004 and Paragraph B(11)(d)(1) of the ADR Rules, lack of rights or legitimate interests and registration or use in bad faith are considered alternative requirements for a successful complaint. As the Panel has found that the Respondent lacks rights or legitimate interests in the disputed domain name no further discussion on bad faith registration or use is necessary.
Nevertheless, noting the composition of the disputed domain name, the Panel finds it likely that the Respondent was aware of the Complainant and/or the JERZEES trademark at the registration of the disputed domain name. The Complainant have submitted evidence showing that the Respondent registered the disputed domain name well after the registration of the JERZEES trademark and corresponding website. In addition, the Panel notes that the act of redirecting the disputed domain name to a website displaying brands of third parties (competing with the Complainant’s one), even if the website is not operated directly by the Respondent (and the Respondent only controls the redirection), amounts to use in bad faith.
The Panel therefore finds that the Respondent has both registered and used the disputed domain name in bad faith and that the condition set out at Paragraph B(11)(d)(1)(iii) of the ADR Rules has also been satisfied.
7. DecisionFor the foregoing reasons, in accordance with Paragraph B(11) of the ADR Rules, the Panel orders that the disputed domain name
For purposes of properly executing this order, the Panel also directs the Registrar’s attention to Annex 1 hereto that identifies the entity listed as registrant of the disputed domain name in the formal record of registration, and orders that the disputed domain name,
The Panel directs the Center that Annex 1 shall not be published along with this Decision.
Marilena Comanescu
Sole Panelist
Date: January 21, 2022
1 See comments under section 6.A below
2 Considering the substantive similarities between the ADR Rules and the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Panel also refers to UDRP cases, where appropriate.
3 As the Complainant is established in Ireland, a Member State of the European Union, it satisfies the general eligibility criteria for registration of the disputed domain name set out in Article 4(2)(b) of Regulation (EC) No. 733/2002 as amended by Regulation (EU) 2019/517.