WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Thom Browne, Inc. v. Registration Private, Domains by Proxy LLC / xunli liu
Case No. D2017-0780
1. The Parties
The Complainant is Thom Browne, Inc. of New York, New York, United States of America (“USA” or “US”), represented by Seyfarth Shaw, USA.
The Respondent is Registration Private, Domains by Proxy LLC of Scottsdale, Arizona, USA / xunli liu of Beijing, China.
2. The Domain Name and Registrar
The disputed domain name, <thom-browne.net> (the “Domain Name”), is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 18, 2017. On April 19, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 19, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 24, 2017 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 amended Complaint on April 26, 2017.
The Center verified that the Complaint together with 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 May 4, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 24, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 26, 2017.
The Center appointed Tony Willoughby as the sole panelist in this matter on May 31, 2017. 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.
The Center’s invitation to the Complainant to amend the Complaint was prompted by the fact that the underlying registrant of the Domain Name at the time of filing of the Complaint, xunli liu, the second above-named Respondent, had made use of a privacy service, Registration Private, Domains by Proxy LLC, the first above-named Respondent. For the purposes of this proceeding the Panel treats the underlying registrant at the time of filing of the Complaint as the substantive Respondent and henceforth all references to the Respondent are references to xunli liu.
As noted above, the Respondent failed to submit a response to the Complaint. The Panel believes it possible that none of the communications from either the Complainant or the Center actually got through to the Respondent as the notification emails bounced back and the couriered communications proved undeliverable and had to be destroyed. In the Complaint the Complainant asserts that it has investigated the Respondent’s contact details and believes them to be inaccurate. If that is so, the Respondent has only himself/herself to blame for the lack of any actual notification from the Complainant and the Center.
Paragraph 2(a) of the Rules provides as follows:
“When forwarding a complaint, including any annexes, electronically to the Respondent, it shall be the Provider’s responsibility to employ reasonably available means calculated to achieve actual notice to Respondent. Achieving actual notice, or employing the following measures to do so, shall discharge this responsibility:
(i) sending Written Notice of the complaint to all postal-mail and facsimile addresses (A) shown in the domain name’s registration data in Registrar’s Whois database for the registered domain-name holder, the technical contact, and the administrative contact and (B) supplied by Registrar to the Provider for the registration’s billing contact; and
(ii) sending the complaint, including any annexes, in electronic form by e-mail to:
(A) the e-mail addresses for those technical, administrative, and billing contacts;
(B) postmaster@<the contested domain name>; and
(C) if the domain name (or “www.” followed by the domain name) resolves to an active web page (other than a generic page the Provider concludes is maintained by a registrar or ISP for parking domain-names registered by multiple domain-name holders), any e- mail address shown or e-mail links on that web page; and
(iii) sending the complaint, including any annexes, to any e-mail address the Respondent has notified the Provider it prefers and, to the extent practicable, to all other e-mail addresses provided to the Provider by Complainant under Paragraph 3(b)(v).”
The Panel has reviewed the file and is satisfied that the Center has sought to notify the Respondent by all reasonably available means. Moreover, the Center’s notifications to the privacy service used by the Respondent certainly got through and the Panel is satisfied on the balance of probabilities that the Respondent will have had actual notice via the privacy service of all the Center’s notifications.
On June 12, 2017 the Panel issued a procedural order to the Parties, the background to which is dealt with as a procedural issue under section 6B below. The Complainant filed a response to the Panel Order on June 13, 2017. The Respondent did not comment on the Panel Order.
4. Factual Background
The Complainant is Thom Browne, Inc., a clothing company with an address in New York City, USA.
A Japanese company, Cross Company Inc. with an address in Okayama, Japan is the registered proprietor identified on the two trade mark certificates annexed to the Complaint, namely:
(i) US Registration No. 4,560,533 THOM BROWNE (word mark) registered July 1, 2014 (filed May 17, 2010) in class 25 for a wide variety of clothing; and
(ii) Chinese Registration No. 5845353 THOM BROWNE (word mark) registered on January 21, 2010 in class 25 for various items of clothing.
In the absence of any indication in the Complaint as to the relationship (if any) between the Complainant and the Japanese company identified on the trade mark documentation annexed to the Complaint, the Panel issued a procedural order seeking clarification. By its response to that procedural order the Complainant satisfied the Panel that the Complainant does indeed have the trade mark rights that it claims in respect of the name “Thom Browne”.1
The Domain Name was registered on December 18, 2014. The Domain name previously resolved to a website selling products under the Complainant’s trade mark. The Panel was unable to reach any website connected to the Domain Name at the time of this decision.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith. It contends that the Domain Name is being used to sell counterfeit goods.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
B. Identical or Confusingly Similar
The Domain Name <thom-browne.net> is clearly identical or confusingly similar to the Complainant’s registered trade mark THOM BROWNE.
The Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights.
C. Rights or Legitimate Interests
The unchallenged evidence of the Complainant is that the Respondent’s website is so set up as to be accessible locally in China, but inaccessible to Internet users seeking to visit the website from elsewhere and in particular the USA. It has conducted investigations in China and has ordered clothing through the website, which it has verified as being counterfeit, albeit sold at prices not so very different from the Complainant’s process. The Complainant investigated the premises from which the goods it purchased were shipped, but has been unable to identify the people behind the fraud.
In the face of that evidence and the absence of any response from the Respondent, the Panel finds on the evidence before him that the Respondent has no rights or legitimate interests in respect of the Domain Name.
D. Registered and Used in Bad Faith
The evidence establishes to the satisfaction of the Panel that the Respondent registered the Domain Name for the purpose for which it is being used, namely to sell counterfeit versions of the Complainant’s “Thom Browne” clothing.
The Panel finds that the Domain Name has been registered in bad faith and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <thom-browne.net>, be transferred to the Complainant.
Date: June 16, 2017
1 The Respondent was given an opportunity to file a further submission following receipt of the Complainant’s response to the procedural order, but did not do so.