WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

HBI Branded Apparel Enterprises, LLC v. Xu Gueijuan; Rueitao Xiao; Gueijuan Xu

Case No. D2018-2542

1. The Parties

The Complainant is HBI Branded Apparel Enterprises, LLC of Winston Salem, North Carolina, United States of America (“United States”), represented by CSC Digital Brand Services AB, Sweden.

The Respondent is Xu Gueijuan of Shanguan, Guangdong, China; Rueitao Xiao of Shaoguan, Guangdong, China; Gueijuan Xu of Shaoguan, Guangdong, China.

2. The Domain Names and Registrar

The disputed domain names <championjpclothes.com>, <jpchampionoutlet.com> and <jpchampionshops.com> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 9, 2018. On November 9, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 9, 2018, 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. On November 13, 2018, the Center invited the Complainant to amend the Complaint. On November 16, 2018, the Complainant submitted an amended Complaint.

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 November 20, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 10, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 11, 2018.

The Center appointed Dilek Ustun Ekdial as the sole panelist in this matter on December 17, 2018. 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 was founded in 1901 and it is a subsidiary of Hanesbrands Inc. (“Hanes”), a well-known manufacturer and marketer of leading everyday basic apparel brands in the Americas, Europe and Asia, as well as in Australia and South Africa. Under the CHAMPION trademark, the Complainant offers a wide range of products in conjunction with hosiery, clothing, apparel, swimwear, sleepwear, bags and related goods. The Complainant is the owner of <champion.com> which is the 11,481st most popular website in the United States and ranked 35,154 globally.

The Complainant is the exclusive owner of a number of registered trademarks consisting of the word “champion” in various jurisdictions throughout the world, including, inter alia, the United States, Japan and China, as follows:

The Respondent registered the disputed domain name <jpchampionoutlet.com> on March 9, 2018, the disputed domain name <championjpclothes.com> on April 14, 2018 and the disputed domain name <jpchampionshops.com> on September 8, 2018, which are significantly after the Complainant’s registration of its domain name <champion.com> on November 2, 1994. The disputed domain names resolve to websites selling the products bearing the Complainant’s trademark.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain names are confusingly similar to the Complainant’s CHAMPION trademarks since the Respondent added to the disputed domain names generic, descriptive terms such as “shops”, “outlet” and “clothes”. The Complainant further argues that the fact that such terms are closely linked and associated with the Complainant’s brand and trademark only serves to underscore and increase the confusing similarity between the disputed domain names and the Complainant’s trademark.

The Complainant contends that the disputed domain names incorporate the Complainant’s CHAMPION trademark in its entirety while adding the geographically descriptive term “jp” – an abbreviation for the region of Japan – to such trademark, thus rendering the disputed domain names confusingly similar to the trademark. In addition, the Complainant argues that the Respondent’s use of the disputed domain names to advertise the sale of Champion products and imitate the Complainant’s website suggests that the Respondent intended the disputed domain names to be confusingly similar to the Complainant’s trademark as a means of furthering consumer confusion.

The Complainant also argues that it has not given the Respondent permission to use the Complainant’s trademarks in any manner, including in domain names and that the Respondent is not commonly known by the disputed domain names which evidences a lack of rights or legitimate interests. Furthermore, the Complainant argues that it has not licensed, authorized or permitted the Respondent to register domain names incorporating the Complainant’s trademarks and there is no evidence, including the WhoIs record for the disputed domain names, to suggest that the Respondent is commonly known by the disputed domain names hence the Respondent cannot be regarded as having acquired rights or legitimate interests in the disputed domain names. The Complainant further contends that most of the disputed domain names redirect Internet users to websites that copy and attempt to duplicate the Complainant’s official website by copying the design, color scheme, pictures and text found on the Complainant’s website. The Respondent’s attempt to pass off the disputed domain names as being affiliated with the Complainant is in itself evidence of the fact that the Respondent does not have rights and legitimate interests in the disputed domain names.

The Complainant also argues that by registering the disputed domain names that incorporate the Complainant’s trademark combined with descriptive and geographic terms, the Respondent has demonstrated a knowledge of and familiarity with the Complainant’s trademark and business.

According to the Complainant, by copying the Complainant’s logo on its website, the Respondent further indicates knowledge of the CHAMPION trademark and is attempting to cause consumer confusion and to profit from such confusion. The Respondent is using the fame of the Complainant’s trademarks to improperly increase traffic to the websites listed at the disputed domain names for the Respondent’s own commercial gain. The Respondent’s use of the disputed domain names constitutes a disruption of the Complainant’s business and qualifies as bad faith registration and use.

Therefore, the disputed domain names were registered and are being used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1 Preliminary Procedural Issue - Consolidation of Multiple Respondents

Paragraph 5(f) of the Policy and paragraph 10(e) of the Rules allows a panel to consolidate multiple domain name disputes between parties at its sole discretion. In the present case, the Complaint was filed against three Respondents and the Complainant has requested consolidation of the proceedings on the basis that the disputed domain names are all in fact under common control. The Respondents had the opportunity but did not respond to the Complaint.

The panel notes that all the disputed domain names incorporate a variation of the terms “champion” and “jp”; the contact details of the Respondents are the same; and the websites at the disputed domain names contains the same visual effect, and contains commonalities such as the inquiry page and the user guide, which are identical in nature.

Accordingly, the Panel finds that the Complainant has established more likely than not that the disputed domain names are subject to common ownership or control and therefore will allow the consolidation request of the Complainant. The Respondents will be referred to collectively as the Respondent hereafter.

6.2 Substantive Matters

Paragraph 4(a) of the Policy provides that the complainant must prove each of the following in order to succeed in an administrative proceeding:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(ii) that the respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

Paragraph 4(c) of the Policy sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name in issue.

Paragraph 4(b) of the Policy sets out circumstances which, again 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.

As stated, the circumstances set out in paragraphs 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and 4(a)(iii) of the Policy.

A. Identical or Confusingly Similar

The disputed domain names contain the Complainant’s well-known trademark CHAMPION with the generic terms “outlet”, “shops” and “clothes”. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The addition of these terms does not avoid the confusing similarity. Additionally, that the disputed domain names incorporate the Complainant’s CHAMPION trademark in its entirety while adding the geographically descriptive term “jp” – an abbreviation for the region of Japan – to such trademark, does not avoid the disputed domain names being confusingly similar to the trademark.

The extensions “.com”, “.net”, and “.org” are generally not to be taken into consideration when examining the identity or confusing similarity between the Complainant’s trademark and the disputed domain name.

Therefore, the Panel finds that the disputed domain names are confusingly similar to the trademark CHAMPION in which the Complainant has rights, satisfying the condition of the Policy paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Respondent has not provided any evidence of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the disputed domain names. It is clear that the Respondent has not demonstrated any bona fide offering of goods and services by its using the disputed domain names. Nor has the Respondent shown that it has been commonly known by the disputed domain names. Rather, the evidence of the Complainant suggests that the Respondent has used the disputed domain names in an attempt to trade off the goodwill associated with the Complainant’s trademark.

The Complainant also showed, inter alia, that the Respondent has neither a license nor any other permission to use the Complainant’s trademark in the disputed domain names or otherwise.

From the evidence put forward by the Complainant, the websites to which the disputed domain names resolve redirect Internet users to websites that copy the Complainant’s official website and are used for selling products under the Complainant’s CHAMPION trademark. As held by previous UDRP panels in similar situations, this is not a bona fide offering of goods and services. See, Cube Limited v. Gueijuan Xu, WIPO Case No. D2017-2514. The Respondent has used the Complainant’s logo and trademark on the websites to which the disputed domain names resolve to imitate the official website of the Complainant. This represents an act of passing off which cannot be bona fide use. See, Philipp Plein v. Gueijuan Xu, WIPO Case No. D2017-2535.

By not submitting a Response, the Respondent has failed to invoke any circumstances which could demonstrate any rights or legitimate interests in the disputed domain names. See for a similar finding Cash Converters Pty Ltd v. Mirriam Musonda-salati, WIPO Case No. D2014-1839.

The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, and the Respondent has failed to demonstrate such rights or legitimate interests.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

C. Registered and Used in Bad Faith

The Panel is of the opinion that when the Respondent registered the disputed domain names it knew that CHAMPION was the trademark of the Complainant, and accordingly finds that the Respondent registered the disputed domain names in bad faith.

The Respondent creates a likelihood of confusion with the Complainant and its trademarks by copying the composition of the Complainant’s website and logo, with the Respondent then attempting to profit from such confusion by selling similar goods on its websites. As such, the Respondent is attempting to cause consumer confusion in a nefarious attempt to profit from such confusion.

The Panel finds that the disputed domain names and the connected websites would cause consumers to believe the Respondent is somehow associated with the Complainant when, in fact, it is not. The Respondent’s actions create a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain names, and the Respondent is thus using the fame of the Complainant’s trademarks to improperly increase traffic to the websites connected with disputed domain names for the Respondent’s own commercial gain.

The Respondent’s use of the disputed domain names constitutes disruption to the Complainant’s business and qualifies as bad faith registration and use under Policy, paragraph 4(b)(iii) because the Respondent’s domain names are confusingly similar to the Complainant’s trademarks and the websites at the disputed domain names are being used to offer goods under the Complainant’s trademark without the Complainant’s authorization or approval. Previous UDRP panels have confirmed that using a confusingly similar domain name to mislead consumers and then offering complainant’s goods or services is evidence of bad faith registration and use.

The Respondent has registered several domain names that each target the Complainant’s CHAMPION trademark. The sheer number of domain names registered by the Respondent demonstrates that the Respondent is engaging in a pattern of cybersquatting, which is evidence of bad faith registration and use.

There is no suggestion that the Respondent had any intention of legitimate use, that it enjoys a legitimate connection to the disputed domain names or that there is conceivable good faith use for the disputed domain names. After examining all circumstances surrounding the registration and use of the disputed domain names, the Panel finds that the Respondent registered and is using the disputed domain names in bad faith.

Accordingly, the Panel finds in favor of the Complainant on the third element of the Policy.

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 names <championjpclothes.com>, <jpchampionoutlet.com> and <jpchampionshops.com> be transferred to the Complainant.

Dilek Ustun Ekdial
Sole Panelist
Date: December 29, 2018