WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
HBI Branded Apparel Enterprises, LLC v. Registration Private, Domains By Proxy, LLC / Diego Hare
Case No. D2017-1855
1. The Parties
The Complainant is HBI Branded Apparel Enterprises, LLC of Winston Salem, North Carolina, United States (“United States”), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States / Diego Hare of Lima, Peru.
2. The Domain Name and Registrar
The disputed domain name <baliclothingstore.com> 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 September 22, 2017. On September 25, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 26, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 27, 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 September 28, 2017.
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 September 29, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 19, 2017. On September 27, 2017, the Respondent sent an email communication to the Center. The Respondent did not submit a formal Response.
The Center appointed James A. Barker as the sole panelist in this matter on November 1, 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.
4. Factual Background
The Complainant is the owner of trademark registrations for BALI in various jurisdictions. These include registrations in the United States, Canada and the European Union. Among these, the Complainant holds the United States trademark registration for BALI, registered on November 26, 1968 with trademark registration number 0861054.
The Complainant is a subsidiary of Hanesbrands Inc. (referenced as “Hanes” in the Complaint), a clothing company based in North Carolina, United States. Hanes is a manufacturer and marketer of “everyday basic apparel brands in the Americas, Europe and Asia, as well as in Australia and South Africa.” Hanes was established in 1901 and is ranked No. 432 on the Fortune 500 list of largest companies in the United States by sales. In 2016, Hanes posted net sales of USD 6.03 billion. Hanes has approximately 68,000 employees in more than 40 countries. The body of the Complaint apparently references Hanes as a joint Complainant. As such, further references in this decision to “the Complainant” are taken to be references to both Hanes and HBI Branded Apparel Enterprises, LLC.
Under the BALI trademark, the Complainant offers a wide range of products related to women’s apparel. These products include lingerie, brassieres, girdles, foundation garments and swimsuits and retail store services featuring to relating to the above mentioned products. The Complainant says that “BALI” has been used by Hanes in connection with women’s apparel since 1967.
The Complainant promotes the BALI brand through its websites. The Complainant is the owner of <hanes.com>, which received an average 1.94 million unique visitors between March 2017 and August 2017 and is the 7,153rd most popular website in the United States and ranked 30,707 globally.
The disputed domain name was registered on March 9, 2017.
At September 29, 2017, the disputed domain name reverted to a basic website, which included some text stating “Promoters and Models Wanted” and providing contact details “If you are interested in joining us”. The website also appeared to offer variously designed t-shirts and women’s clothing items for sale, with associated photos and pricing.
As evidenced in the Complaint, the Complainant’s search of the WhoIs record indicated that the disputed domain name was listed for sale.
5. Parties’ Contentions
The Complainant asserts that the disputed domain name is confusingly similar to its BALI trademark. The Respondent has added the descriptive terms “clothing” and “store” to the Complainant’s BALI trademark, thereby making the disputed domain name confusingly similar to the Complainant’s trademark. The fact that such term is closely linked and associated with the Complainant’s brand and trademark only serves to underscore and increase the confusing similarity between the disputed domain name and the Complainant’s trademark.
The Complainant says that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not sponsored by or affiliated with the Complainant in any way. The Complainant has not given the Respondent permission to use the Complainant’s trademarks in any manner, including in domain names. The Respondent is not commonly known by the disputed domain name. The Respondent is making neither a bona fide offering of goods or services nor a legitimate, noncommercial or fair use of the disputed domain name. On the website available at the disputed domain name, the Respondent offers and attempts to sell products of the Complainant’s competitors, which directly compete with the Complainant’s own offerings. Past Panels have consistently held that selling competing goods, coupled with the unauthorized use of a complainant’s trademarks in a confusingly similar domain name, does not qualify as a bona fide offering of goods or services under the Policy, paragraph 4(c)(iii).
The Complainant also contends that the disputed domain name was registered and is being used in bad faith. The Complainant and its BALI trademark are known internationally, with trademark registrations in numerous jurisdictions. The Complainant has marketed and sold its goods and services using this trademark since 1967, which is well before the Respondent’s registration of the disputed domain name on March 9, 2017. At the time of registration of the disputed domain name, the Respondent knew, or at least should have known, of the existence of the Complainant's trademarks and that registration of domain names containing well-known trademarks constitutes bad faith. The Respondent is currently offering to sell the disputed domain name, which constitutes bad faith under paragraph 4(b)(i) of the Policy. The Respondent, at the time of initial filing of the Complaint, had employed a privacy service to hide its identity, which past UDRP panels have held, serves as further evidence of bad faith registration and use.
The Complainant first tried to contact the Respondent on May 12, 2017, through a cease and desist letter sent by email. The Complainant advised the Respondent that the unauthorized use of the BALI trademark within the disputed domain name violated the Complainant’s rights in that trademark and requested voluntary transfer of the same. The Respondent replied stating “The only way my domain will be transferred is after being paid for. Don't waste my time unless you have a Good offer to make.” When the Complainant advised that they would not pay the Respondent for a domain that clearly takes unfair commercial advantage of Complainant’s trademark rights, the Respondent replied “i just bought www.hanesusa.com and www.shopathanes.com. Tell your client.” (The Complaint attaches evidence of these email communications.) By registering two additional domains that include the Complainant’s well known trademarks, the Respondent clearly demonstrates bad faith and disregard for the Complainant’s intellectual property rights. Since its efforts in trying to solve the matter amicably were unsuccessful the Complainant chose to file a complaint according to the UDRP proceeding.
The Respondent did not reply to the Complaint.
On September 27, 2017, the Center invited the Complainant to amend the Complaint based on the registrant information received from the Registrar. In response to that invitation, the Center received an email from the Respondent on September 28, 2017 which stated only “Hi, what is this about? do you have a USA phone number?”. The Center then provided the Respondent with further information about the proceedings. No further communications were received from the Respondent.
6. Discussion and Findings
For the Complaint to succeed, under paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered in bad faith and is being used in bad faith.
The Complainant must prove each of these three elements, which are discussed in turn below.
A. Identical or Confusingly Similar
There are two elements of paragraph 4(a)(i) which the Complainant must demonstrate to succeed in this proceeding. One is that the Complainant relevantly “has rights” in a trademark or service mark. In this connection, the Complainant has provided evidence of its registered rights for BALI in various jurisdictions. These include marks registered on the principal register of the United States Patent and Trademark Office, including marks registered as early as 1968.
The second element is that the Complainant must demonstrate that the disputed domain name is confusingly similar to its mark (it is self-evidently not identical). In this respect, it is notable that the Complainant’s mark is also a geographic term. Bali is a large island of Indonesia and has a population of over 4 million people.
In this regard, it is relevant to note two separate sections of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Section 1.6 notes that “Geographical terms which are not used solely in a geographically descriptive sense (e.g., ‘Nantucket Nectars’ for beverages) and which are registered as a trademark, would provide standing to file a UDRP case.”
Section 1.7 further notes that:
“While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”
“Issues such as the strength of the complainant’s mark or the respondent’s intent to provide its own legitimate offering of goods or services without trading off the complainant’s reputation, are decided under the second and third elements.”
Applying these approaches, it is evident that the Complainant’s registered rights provide it with standing to file its case. Having registered marks for BALI, the Complainant is entitled to rely on them for the purpose of these proceedings.
The disputed domain name incorporates, as its first-appearing element, the Complainant’s mark entirely and then adds the descriptive terms “clothing store”. Having accepted that the Complainant’s mark is entirely incorporated in this way, the addition of the terms “clothing store” are not sufficient to avoid a finding of confusing similarity. See e.g., The American Automobile Association, Inc. v. Cameron Jackson / PrivacyDotLink Customer 2440314, WIPO Case No. D2016-1671.
The nature of the Complainant’s mark, i.e. insofar as it is also a geographic term, is a matter that the Panel has considered in the analysis to follow. Following the approach articulated under the WIPO Overview 3.0, the nature and strength of the Complainant’s mark is not a matter that the Panel has considered in relation to paragraph 4(a)(i) of the Policy.
For these reasons, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered mark.
B. Rights or Legitimate Interests
As noted in section 2.1 of the WIPO Overview 3.0, although the complainant bears the ultimate burden of proof, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is peculiarly within the knowledge of the respondent. As such, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made out a prima facie case. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The Complainant in this case has made out a prima facie case through its evidence and argument. There is no evidence that would support the Respondent having the kinds of rights or legitimate interests outlined in paragraph 4(c) of the Policy. The Respondent did not contest the allegations against it or provide any evidence contrary to that put forward by the Complainant.
While the Complainant’s BALI trademark is also a geographic term, there is no evidence that the Respondent is using that term in connection with its geographic meaning. Rather, it appears that the Respondent is using that term in the disputed domain name to offer clothing for sale, which directly competes with the Complainant’s business. The Respondent’s website however shows no evidence that the Respondent is using that term to brand the clothing that it offers, or otherwise use the term “Bali” to distinguish the products that it purports to offer for sale. Instead, the Respondent’s only apparent use of the Complainant’s mark is confined to its use in the disputed domain name. Without any evidence to the contrary, this does not suggest that the Respondent is making any real or particular use of the geographic term “Bali”in connection with its business.
In the circumstances of this case, the Panel considers that the Respondent’s use of the term BALI in the disputed domain name does not provide a foundation for a right or legitimate interest. For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
As also noted in section 3.1 of the WIPO Overview, a finding of bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of a complainant’s mark.
As noted above, the Complainant’s mark is wholly comprised of a geographic term, registered as a mark in a number of jurisdictions. The Panel is aware of “the established principle that a geographical name standing alone is difficult to protect under the UDRP unless there are extraordinary circumstances.” See, Ipiranga Produtos de Petróleo S.A. v. Domain Admin, Mrs. Jello, LLC, WIPO Case No. D2011-0163. Given the variety of legitimate associations that may arise from a geographic term, the Panel considers that there would need to be compelling evidence that the Respondent has sought to take unfair advantage of the Complainant’s mark.
The Panel finds that there is such evidence in this case, for the following reasons:
The Respondent’s emails to the Complainant suggest that the Respondent deliberately registered the disputed domain name because of its connection with the Complainant. For example, in those communications, the Respondent points out that it has also registered the name of the Complainant’s parent company (Hanes). These emails suggest that these registrations occurred deliberately in response to the Complainant sending the Respondent ‘cease and desist’ letters. They suggest that the Respondent had a ready willingness to exploit marks in which the Complainant has an obvious interest.
Secondly, the Respondent has used the disputed domain name in connection with an offering for sale of women’s clothing – the same general area of business as the Complainant. It seems unlikely to the Panel that this, together with the Respondent’s selection of the term “Bali” and the terms “clothing store”, was an accident. It suggests to the Panel that the Respondent was likely to have had some prior awareness of the business of the Complainant which it wished to exploit.
Thirdly, paragraph 4(b) of the Policy enumerates a number of non-exclusive circumstances which, if found by the Panel, may constitute evidence of a respondent’s bad faith. Paragraph 4(b)(iv) of the Policy provides that there is evidence of bad faith where: by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on the respondent’s website or location. As outlined above, the Respondent has pointed the disputed domain name to a website that sells products that compete with those of the Complainant. There is no evidence that the Respondent otherwise has any particular business connection with the term “Bali”.
Finally, the Respondent has offered the disputed domain name for sale both generally and directly to the Complainant in response to the Complainant’s cease and desist letter. Paragraph 4(b)(i) of the Policy provides that a Panel may find bad faith in circumstances indicating that a respondent has registered a domain name primarily for the purpose of selling it to complainant for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name.
There is no direct evidence in this case that the sale of the disputed domain name to the Complainant was the Respondent’s “primary” motivation. Nevertheless, the evidence of the Respondent’s email communications with the Complainant indicate that the Respondent was quickly motivated to offer the disputed domain name for sale to the Complainant, demanding a “good price”. The Respondent made no claim in these emails that it had any prior rights or legitimate interests in the disputed domain name. This suggests to the Panel that the Respondent was primarily motivated by the opportunity to make money from the sale of the disputed domain name once the potential opportunity presented itself. From this, the Panel considers there is a reasonable inference that the Respondent had this potential in mind when it registered and then used the disputed domain name.
There is also no direct evidence that the Respondent was seeking consideration in excess of its out-of-pocket costs. However, this Panel does not consider that this aspect of paragraph 4(b)(i) requires the “consideration” to be precisely quantified. The Respondent’s claim that it would only transfer the disputed domain name for a “good price”, taken together with all the other circumstances of this case, suggest to the Panel that the Respondent was in fact seeking consideration above its out-of-pocket costs. The Respondent made no suggestion that it was only seeking to cover its reasonable costs. The Respondent’s registration of other domain names containing the Complainant’s marks indicate that the Respondent was willing to do so to apply pressure to the Complainant to make some offer for the disputed domain name. In these circumstances, the Panel considers there is a reasonable inference that the Respondent was opportunistically motivated to obtain a price above its out-of-pocket costs.
While the Respondent’s offer for sale was made directly to the Complainant, the Complainant also provided evidence that the disputed domain name was offered for sale in the WhoIs record. “As previous panels have held, the fact that a Respondent’s name or WHOIS information contains what can be construed as an offer to sell the domain name is strong evidence of bad faith.” See, Medtronic, Inc. v. gotdomains4sale.com, WIPO Case No. D2001-1033.
There are further indications of bad faith that support the Panel’s overall conclusions outlined above. The Respondent has used a privacy service to mask its identity. The Respondent has also given apparently incorrect contact details (its physical address) in its WhoIs details.
For all these reasons, the Panel finds that the disputed domain name was registered and used in bad faith, for the purpose of paragraph 4(a)(iii) 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 disputed domain name, <baliclothingstore.com>, be transferred to the Complainant.
James A Barker
Date: November 14, 2017