WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

13 Rattles, Inc. v. Jonathan Bernal

Case No. D2019-0056

1. The Parties

Complainant is 13 Rattles, Inc. of New York, New York, United States of America (“United States”), represented by Tucker & Latifi, LLP, United States.

Respondent is Jonathan Bernal of Albuquerque, New Mexico, United States.

2. The Domain Name and Registrar

The Disputed Domain Name <r13clothing.com> is registered with AlpNames Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 9, 2019. Complainant filed an amended Complaint on January 10, 2019. On January 10, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 11, 2019, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on January 14, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 3, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 6, 2019.

The Center appointed Richard W. Page as the sole panelist in this matter on February 15, 2019. 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

In February 2009, Complainant began marketing its products and is the worldwide owner of the R13 trademarks (the “R13 Mark”) in connection with various good and services including, but not limited to, handbags, clothing, footware and online retail services.

Complainant is the brainchild of its founder, designer Chris Leba, who spent over 20 years cultivating his craft under the tutelage of Ralph Lauren.

Complainant’s products are now sold in over 300 stores worldwide and online, including but not limited to: Barneys New York, Match, Totokaelo, Net-a-Porter and Tom Greyhound. Registrations for the R13 Mark date back to as early as February 2009 (i.e., United States Reg. No. 3771061, registered on April 6, 2010).

On February 16, 2017, long after Complainant established its rights in and to the R13 Mark, Respondent registered the Disputed Domain Name which incorporates the entirety of the R13 Mark, adding the word “clothing”. The Disputed Domain Name resolves to a website advertising and selling products that are seemingly the same as Complainant’s products.

5. Parties’ Contentions

A. Complainant

Complainant contends that it is the owner of numerous registrations for the R13 Mark and that the Disputed Domain Name is confusingly similar.

Complainant further contends that the Disputed Domain Name resolves to an online store at “www.r13clothing.com” which is confusingly similar to Complainant’s genuine online retail store which operates at the website “www.r13denim.com”. Also, Respondent is offering substantially similar products to Complainant. Respondent’s entire website makes it appear that Respondent is selling Complainant’s products at a severe discount.

Complainant alleges that Respondent’s scheme is to pretend to offer genuine R13 goods to customers from its website, collect money for the goods sold and then send the purchaser a cheap garment that bears no relationship to genuine R13 merchandise.

Complainant further alleges that it has not authorized nor licensed Respondent to use the R13 Mark and Respondent has no legitimate right to use the R13 Mark.

Complainant avers that Respondent is not commonly known by the Disputed Domain Name and there can be no legitimate business reason for Respondent to own and/or use the Disputed Domain Name other than to pretend Respondent’s website is associated with, authorized by or sponsored by Complainant. Complainant further avers that there can be no legitimate business reason provided by Respondent for using the R13 Mark for the Disputed Domain Name.

Complainant argues that by using the Disputed Domain Name, Respondent is intentionally attempting to attract for commercial gain Internet users to Respondent’s website “www.r13clothing.com” by creating a likelihood of confusion with the R13 Mark and by falsely creating the impression that Respondent’s website offers genuine R13 goods at a substantial discount. Complainant further argues that Respondent is trying to fool the marketplace into believing that its website is actually that of Complainant or somehow affiliated with Complainant.

Complainant states that an Internet user entering Respondent’s website and finding Respondent’s website advertising and selling products that are seemingly the same as Complainant’s products may cease searching for Complainant’s own website, to Complainant’s detriment, which is an act of bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”

Respondent is not obliged to participate in this UDRP proceeding, but when it fails to do so, asserted facts that are not unreasonable are to be taken as true and Respondent is subject to the inferences that flow naturally from the information provided by Complainant. See Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441.

Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:

i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to the R13 Mark; and

ii) that 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.

A. Identical or Confusingly Similar

Complainant contends that it has numerous registrations of the R13 Mark. Prior UDRP decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption. See, EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047.

Respondent has not contested the validity of the R13 Mark.

The Panel hereby finds that, for purposes of this proceeding, Complainant has enforceable rights in the R13 Mark.

Complainant further contends that the Disputed Domain Name is identical with and confusingly similar to the R13 Mark pursuant to paragraph 4(a)(i) of the Policy. Complainant notes that the Disputed Domain Name incorporates the entirety of the R13 Mark, adding the word “clothing.”

When a Disputed Domain Name incorporates an entire trademark with only the addition of a common or descriptive word, it is still confusingly similar to the trademark and does not prevent a finding of confusing similarity. See, Hoffmann-LaRoche AG v. P Martin, WIPO Case No. D2009-0323; Dixons Group Plc. v. Mr. Abu Abdullaah, WIPO Case No. D2001-0843; V&S Vin & Sprit AB v. Ooar Supplies, WIPO Case No. D2004-0962; Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227; Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206; SoftCom Technology Consulting Inc. v. Olariu Romeo/Orv Fin Group S.L., WIPO Case No. D2008-0792.

The Panel finds that the Disputed Domain Name is confusingly similar to the R13 Mark and that Complainant has made the necessary showing under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy.

Section 2.1 of the WIPO Overview 3.0 states that once a Complainant makes a prima facie case in respect of the lack of rights or legitimate interests of Respondent, Respondent carries the burden of demonstrating it has rights or legitimate interests in the Disputed Domain Name. Where Respondent fails to do so, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

Respondent has no relationship with or permission from Complainant for the use of the R13 Mark.

Paragraph 4(c) of the Policy allows three non-exclusive methods for the Panel to conclude that Respondent has rights or a legitimate interests in the Disputed Domain Name:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Disputed Domain Name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the R13 Mark at issue.

Complainant made a prima facie case refuting each of three non-exclusive methods for showing rights or legitimate interest in Respondent.

Respondent has not contested Complainant’s contentions.

Based upon the arguments of Complainant and the facts in this file, the Panel finds that Complainant has proven the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of paragraph 4(a)(iii) of the Policy.

Paragraph 4(b) of the Policy sets forth four non-exclusive criteria for Complainant to show bad faith registration and use of the Disputed Domain Name:

(i) circumstances indicating that you [Respondent] have registered or you have acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to Complainant who is the owner of the R13 Mark or to a competitor of Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Disputed Domain Name; or

(ii) you [Respondent] have registered the Disputed Domain Name in order to prevent the owner of the R13 Mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you [Respondent] have registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Disputed Domain Name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the R13 Mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product.

Complainant asserts Respondent is trying to fool the marketplace into believing that its website is actually that of Complainant or somehow affiliated with Complainant.

Complainant further states that an Internet user entering Respondent’s website and finding Respondent’s website advertising and selling products that are seemingly the same as Complainant’s products may cease searching for Complainant’s own website, to Complainant’s detriment, which is indicative of bad faith.

The Panel finds that Complainant has proven the requirements of paragraph 4(b)(iv) of the Policy and in doing so has also proven the elements of paragraph 4(a)(iii).

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 <r13clothing.com> be transferred to Complainant.

Richard W. Page
Sole Panelist
Date: February 25, 2019