WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Affliction Holdings LLC v. Private Whois Service

Case No. D2011-0229

1. The Parties

The Complainant is Affliction Holdings LLC, Seal Beach, California, United States of America, represented internally.

The Respondent is Private Whois Service of Nassau, the Bahamas.

2. The Domain Name and Registrar

The disputed domain name <afflictionclothingsale.com> (the “Domain Name”) is registered with Internet.bs Corp.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 3, 2011. On February 4, 2011, the Center transmitted by email to Internet.bs Corp. a request for registrar verification in connection with the disputed domain name. On February 7, 2011, Internet.bs Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 11, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 3, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 7, 2011.

The Center appointed Steven A. Maier as the sole panelist in this matter on March 18, 2011. 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 California limited liability company. It operates numerous retail stores in the United States and abroad and specializes in high quality clothing and accessories.

The Complainant is the owner of numerous United States (“U.S.”) registered trade marks for the mark AFFLICTION. It is also the owner of the domain names <afflictionclothingstore.com> and <afflictionclothing.com> and has operated websites linked to those domain names since 2005 and 2006.

The Respondent registered the Domain Name on December 24, 2008.

5. Parties’ Contentions

A. Complainant

The Complainant is engaged in the business of manufacturing and distributing, throughout the world, high quality apparel, including, t-shirts, jackets, sweatshirts, pants, hats, jewelry and footwear. It does so under numerous U.S. registered trademarks, several of which are for the mark AFFLICTION alone, or otherwise contain the mark AFFLICTION.

The Complainant has spent large sums of money in marketing and promoting its brand and has established very valuable goodwill in its products. In fact, the brand is very popular among many celebrities in sports, music and other entertainment businesses. The Complainant sells its products at high-end department stores, such as Macy's, as well as at its numerous retail stores throughout the United States and abroad. Consumers can also purchase the Complainant’s products at its on-line retail store at its websites “www.afflictionclothing.com” and “www.afflictionclothingstore.com”.

The Respondent is operating a fully interactive commercial website at the Domain Name. Upon information and belief, the Complainant alleges that the Respondent is intentionally redirecting consumers from the website linked to the Domain Name and is selling counterfeit AFFLICTION apparel.

The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant has 29 live pending or registered federal trademarks containing the term "affliction." These include:

1. AFFLICTION, United States Reg. No. 3,747,346, filed February 8, 2008, and registered on the Principal Register on February 9, 2010, for "coats, dress shirts, dress suits, men's suits, overcoats, pants, shirts, shirts for suits, slacks, trousers," in International Class 25.

2. AFFLICTION, United States Reg. No. 3,772,612, filed August 25,2008, and registered on the Principal Register on April 6, 2010, for "retail shops featuring clothing, clothing accessories, leather goods, footwear, bags, jewelry, fragrances, sunglasses; retail store and on-line retail store services featuring clothing, clothing accessories, leather goods, footwear, bags, jewelry, fragrances, sunglasses," in International Class 35.

3. AFFLICTION (stylized), United States Reg. No. 3,790,247, filed November 11, 2009, and registered on the Principal Register on May 18, 2010, for "jewelry, namely, key chains, rings, necklaces, dog tags, bracelets and pendants" in International Class 14; "wallets" in International Class 18; and for "men's and women's clothing, namely shirts, tops, tank tops, baby tees, thermal shirts, long sleeve shirts, short sleeve shirts, dresses, jackets, leather jackets, sports coats, coats, hooded shirts, hooded sweatshirts, sweatshirts, pants, jeans, denim jeans, denim jackets, denim shorts, jean jackets, hats, caps, beanies, shorts, board shorts, belts, footwear, namely, boots" in International Class 25.

4. AFFLICTION (stylized), United States Reg. No. 3,784,810, filed November 24,2009 and registered on the Principal Register on May 4, 2010, for "retail shops, retail stores, and retail apparel stores featuring clothing, clothing accessories, footwear, jewelry, on-line retail store services featuring clothing, clothing accessories, footwear, jewelry" in International Class 35.

5. AFFLICTION, United States Reg. No. 3,706, 917, filed February 8, 2008, and registered on the Principal Register on November 3, 2009 for "jackets and suit coats" in International Class 25.

6. AFFLICTION, Unites States Reg. No. 3,109,069, filed April 27, 2005 and registered on the Principal Register on June 27, 2006, for "clothing, namely shirts, T-shirts, tank tops, jackets, sweatshirts, shorts, pants, sweat pants, hats, caps and footwear" in International Class 25. All rights and interests in this registration were assigned to the Complainant on May 08, 2009.

All of the registrations are in full force and effect, and use of the marks has not been abandoned.

The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Domain Name is virtually identical to the Complainant’s registered trademarks, except that the Respondent has added generic terms representing the Complainant's goods and services (“clothing” and “sale”) and the generic top-level domain ".com." The generic top-level domain does not significantly distinguish the domain name from the mark pursuant to paragraph 4(c) of the Policy. See CSX lA, Inc. v. Registrant [190789]; International Domain Names Inc. v. Registrant [342921], Moniker Privacy Services, WIPO Case No. D2007-0611, "[I]t is also well established that the specific top level domain name is not an element of distinctiveness that can be taken into consideration when evaluating the identity and similarity of the complainant's trademark and the disputed domain name."

The Respondent has no rights or legitimate interests in respect of the Domain Name.

The Respondent is not making a legitimate noncommercial or fair use of the Domain Name. The Complainant is informed and believes, and thereupon alleges, that the Respondent is not (either as an individual, business or other organization) known by the name “Affliction”. Nor is “Affliction” legitimately the name of the goods and services promoted on the website to which the Domain Name directs. In fact, Complainant is informed and believes, and thereupon alleges, that Respondent is selling counterfeit AFFLICTION products on the website associated with the Domain Name.

The Complainant further believes and alleges that the Respondent is located in a jurisdiction, the Bahamas, such that it believes that it is shielded from liability and can continue to infringe upon the Complainant's intellectual property rights without penalty.

Furthermore, there is no evidence whatsoever of the Respondent's use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide and non-infringing offering of goods or services.

The Respondent continues to use the Domain Name to redirect Internet users and consumers of the Complainant’s products to its website in order to sell the counterfeit products.

The Respondent is not a licensee of the Complainant, and has not received any permission or consent to use the trademark AFFLICTION or use the Domain Name. See Telstra Corp. v. Nuclear Marshmallow, WIPO Case No. D2000-0003. Similarly, “Affliction” is not a term that traders/merchants would legitimately choose in connection with the sale of clothing and related products unless they sought to create an impression of an association with the Complainant.

The Domain Name was registered and is being used in bad faith.

The Respondent acquired the infringing Domain Name on December 24, 2008, after several of the applications for the Complainant’s registered trade marks had been filed, and well over two years after the AFFLICTION Mark (U.S. Reg. No. 3,109,069) had been federally registered.

Further, the Complainant does legitimate business from its websites located at <afflictionclothingstore.com> and <afflictionclothing.com> that it acquired on May 8, 2005 and December 28, 2006, years before Respondent acquired the Domain Name. A cursory review of the websites associated with Complainant's domain names and the Domain Name reveals that Respondent is using the Domain Name solely to attract Internet users by creating a likelihood of confusion with the Complainant's marks as to the source, sponsorship, affiliation, or endorsement of Respondent's website. The products sold on Respondent's website are intended to generate commercial gain. It is obvious that Respondent is using the Domain Name for a URL which almost identical to Complainant's trademarks and own websites for the purpose of redirecting Complainant's customers to the infringing website.

The Complainant requests a transfer of the Domain Name.

B. Respondent

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

6. Discussion and Findings

In order to succeed in its Complaint, the Complainant is required to prove that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:

(i) that the 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 Domain Name; and

(iii) that the Domain Name has been registered and is being used in bad faith.

The Panel observes that, although the Respondent has failed to file a Response, it is still for the Complainant to prove its case. Further, while the factual assertions made by the Complainant may be uncontradicted by the Respondent, the Panel must nevertheless examine the circumstances that are apparent from the Complaint itself in arriving at its conclusions.

A. Identical or Confusingly Similar

The Complainant is the owner of various United States registered trademarks AFFLICTION for (inter alia) clothing and related articles. The Complainant has also established to the satisfaction of the Panel that it has unregistered trademark rights in the mark AFFLICTION in the field of clothing and related products. Such unregistered rights arise, for example, by its use since 2005 or 2006 of websites at “www.afflictionclothing.com” and “www.afflictionclothingstore.com” for the purposes of its retail business.

The Panel finds that the Domain Name is confusingly similar to the Complainant’s registered and unregistered AFFLICTION trademarks. The Complainant has established that (ignoring the top-level suffix) the Domain Name comprises the Complainant’s mark AFFLICTION with the addition of the terms “clothing” and “sale”, which are generic and do not serve to distinguish the Domain Name from the Complainant’s mark. On the contrary, in the view of the Panel, the additions suggest a connection with the Complainant’s mark.

In the circumstances, the Panel finds that the Domain Name is confusingly similar to a mark in which the Complainant has rights.

B. Rights or Legitimate Interests

Other than by its use of the Domain Name for the purpose of the website, referred to below, there is no evidence that the Respondent has ever traded under the Domain Name or a name similar to it or that it has rights in any such name. Nor is there any evidence that the Complainant has ever licensed or authorised the Respondent to use its mark AFFLICTION or the Domain Name.

The Panel finds that, by virtue of its selection and use of the Domain Name, the Respondent is using the Domain Name in a manner that is liable to cause “initial interest confusion”, i.e., that Internet users will be drawn to the Respondent’s site in the expectation that it is a website operated or authorised by, or in some way affiliated with, the Complainant.

Further, the Respondent has not challenged the Complainant’s evidence that the Respondent is using the Domain Name to connect to a website selling apparently counterfeit copies of the Complainant’s products. Such use plainly does not give rise to any rights or legitimate interests in the Domain Name.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.

C. Registered and Used in Bad Faith

There is a significant area of overlap between the question of “rights or legitimate interest” and that of registration and use in bad faith.

The Panel accepts the Complainant’s evidence that the Respondent is using the Domain Name to resolve to a website unconnected with the Complainant from which it sells apparently counterfeit copies of the Complainant’s products. The Respondent has offered no explanation for its registration and use of the Domain Name. The Panel infers from the Respondent’s choice of the Domain Name and its use that the Respondent was aware of the Complainant’s mark at the date of registration.

In the circumstances, the Panel finds that the Domain Name has been registered and used in bad faith, namely, 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 that website, or location, or of a product or service on that website or location. Paragraph 4(b)(iv) of the Policy.

The Panel therefore finds that the Respondent registered and has used the Domain Name in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <afflictionclothingsale.com> be transferred to the Complainant.

Steven A. Maier
Sole Panelist
Dated: April 5, 2011