WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Dazzle Up, LLC v. Lam Hoang Phuc, Cheap Zone
Case No. D2018-0386
1. The Parties
Complainant is Dazzle Up, LLC of Greensboro, North Carolina, United States of America (“USA” or “U.S.”), represented by Brooks, Pierce, McLendon, Humphrey & Leonard, L.L.P., United States of America.
Respondent is Lam Hoang Phuc, Cheap Zone of Cai Be, Tien Giang, Viet Nam.
2. The Domain Name and Registrar
The disputed domain name <simplysoutherntee.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 20, 2018. On February 21, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 21, 2018, 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 Complainant on February 23, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on February 26, 2018.
The Center verified that the Complaint together with the amendment to 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 March 2, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 22, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 23, 2018.
The Center appointed Roberto Bianchi as the sole panelist in this matter on March 28, 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
Complainant is a retailer of t-shirts and apparel. It operates twelve stores in North Carolina, South Carolina and Virginia, USA, through which it sells its SIMPLY SOUTHERN branded products and other merchandise. The company also manufactures and wholesales or distributes SIMPLY SOUTHERN t-shirts and other products to over 3,000 stores in the USA.
Complainant owns the following U.S. trademark registrations for SIMPLY SOUTHERN:
- Registration No. 3335887, Registration Date November 13, 2007, filed on February 23, 2004, covering retail and computerized online ordering services featuring home furnishings, wall accessories, candles, tableware, housewares, glasswares, floral wreaths, wall shelves, benches, chairs, upholstered furnishings, clocks, wall artwork, primitive notecards, stationery, primitive dolls, wood figurines, pottery, baskets, pillows, rugs, dried florals, in international class 35. First use in commerce: February 24, 2004.
- Registration No. 4167424, Registration Date July 3, 2012, filed on November 2, 2011, covering caps; hats; hooded sweat shirts; jackets; shirts; short-sleeved or long-sleeved t-shirts; shorts; sweat shirts; T-shirts, in international class 25. First use in commerce: October 26, 2011.
- Registration No. 4916829, Registration Date March 15, 2016, filed on November 11, 2014, covering eyewear retainers, in international class 9. First use in commerce: July 25, 2014.
Complainant operates the website “www.simplysoutherntees.com”, from which it sells its SIMPLY SOUTHERN t-shirts to retailers.
The disputed domain name was registered on June 14, 2017. According to the evidence provided by Complainant the disputed domain name resolved to a website offering t-shirts for sale.
Presently, the website at the disputed domain name displays an initial page entitled “Shopify”, and stating, “Sorry, this shop is currently unavailable.”
5. Parties’ Contentions
Complainant contends as follows:
The disputed domain name is confusingly similar to Complainant’s mark since it incorporates the entirety of the SIMPLY SOUTHERN mark. The disputed domain name only adds the term “tee,” which is a reference to t-shirts, one of the goods covered by Complainant’s 2012 trademark registration.
The disputed domain name is also nearly identical to the domain name for Complainant’s commercial website <simplysoutherntees.com>. Respondent’s website sells t-shirts with the SIMPLY SOUTHERN brand, even though it does not have permission from Complainant.
Respondent has no rights to the SIMPLY SOUTHERN mark and has no legitimate interests for using it in the disputed domain name. A check of the United States Patent and Trademark Office (“USPTO”) database shows that Respondent has no U.S. trademark registrations in the brand, although its website purports to provide an address in New York, USA. The disputed domain name was not registered until June 14, 2017 and, according to the Internet Archive’s Wayback Machine, the website at the disputed domain name had no activity until November 17, 2017. Both of those times are long after Complainant’s brand had achieved prominence, years after Complainant’s 2012 and 2016 trademark registrations.
The products offered on the website at the disputed domain name as SIMPLY SOUTHERN t-shirts are not genuine products from Complainant. In the disputed domain name Complainant’s mark is being intentionally used to offer counterfeit and/or infringing goods. Furthermore, Complainant has not authorized Respondent to use the SIMPLY SOUTHERN mark. Respondent has absolutely no right to use the SIMPLY SOUTHERN mark to sell t-shirts or apparel, and has no legitimate interests for using the mark in the disputed domain name. UDRP panels have consistently found respondents to have no legitimate interest based on the sale of counterfeit or intentionally infringing goods. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) section 2.13.1.
The website at the disputed domain name uses the SIMPLY SOUTHERN mark without permission as part of its URL, as the website title in the upper left corner of the home page, and as the purported name of the company operating the website. This website repeats the SIMPLY SOUTHERN mark multiple times as part of product descriptions for t-shirts. Clicking on these infringing product descriptions takes Internet users to a page for ordering the counterfeit t-shirts, including drop down boxes for selecting size, color, quantity and a link to “Add to Cart”.
Respondent has clearly copied the logo from Complainant, which shows intent to deceive customers into thinking that the website at the disputed domain name sells genuine SIMPLY SOUTHERN apparel.
Another factor for finding illegitimate use includes evidence that “respondent has improperly masked its identity to avoid being contactable.” WIPO Overview 3.0, section 2.13.2. Here, Respondent’s “Contact Us” link on the website at the disputed domain name lists an address in New York City as a physical address. The United States Postal Service has no record of this address, nor does the commercial mapping service Google Maps. Misleading consumers about the source of counterfeit and/or infringing products and masking the location of the seller further confirm that Respondent has no legitimate basis for infringing Complainant’s rights. In short, Respondent’s commercial website does not make any bona fide or fair use of the registered mark.
Respondent registered and uses the disputed domain name in bad faith. The disputed domain name combines the entirety of the registered SIMPLY SOUTHERN mark with “tee,” a reference to the t-shirts for which the registered mark is famous. Incorporating Complainant’s well-known mark into the disputed domain name in this way to sell t-shirts shows that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark for t-shirts sold on the website at the disputed domain name.
Respondent knew about Complainant’s mark before registering the disputed domain name. Complainant has conspicuously used its mark in connection with t-shirts and apparel for many years. Since receiving the 2012 trademark registration, Complainant has used the “®” symbol with this mark, including on the upper left portion of its commercial website. This extensive use provided notice of Complainant’s rights in the mark, as did its 2012 and 2016 trademark registrations.
The evidence shows that Respondent had actual knowledge of Complainant’s use of the mark. Significantly, Respondent blatantly copied Complainant’s logo and used it as a logo on the website at the disputed domain name to sell counterfeit and/or infringing goods. In addition, Respondent incorporated Complainant’s mark in its entirety as part of the disputed domain name and featured it prominently all over the corresponding website, along with a copy of Complainant’s logo. These circumstances demonstrate that Respondent registered the disputed domain name in bad faith, with full knowledge of Complainants’ famous mark.
Additional circumstances establish bad faith where they show Respondent targeted the business of Complainant. See, e.g., WIPO Overview 3.0 at section 3.2.1. Here, Respondent unmistakably targeted the very popular, growing and successful business of Complainant by:
(a) targeting a very popular, successful and growing brand;
(b) registering a domain name that is only one letter different from Complainant’s (“tee” vs. “tees”);
(c) using the SIMPLY SOUTHERN mark without permission not only as part of the disputed domain name, but also as the title for the corresponding website, in the upper left corner of the home page of the website, and as the purported name of the company operating the website;
(d) using the SIMPLY SOUTHERN mark on the corresponding website multiple times as part of product descriptions that link to orders for competing t-shirts; and
(e) blatantly copying Complainant’s logo and using it on the corresponding website to further confuse potential customers.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
By submitting printouts from the USPTO database, Complainant has shown to the satisfaction of the Panel that it has trademark rights in the SIMPLY SOUTHERN mark. See section 4 above.
The Panel notes that in the disputed domain name the SIMPLY SOUTHERN mark has been incorporated in its entirety – without the space between its two elements - and adding the term “tee”, a phonetic equivalent of the letter “t” (as in “t-shirt”, one of the products covered by Complainant’s trademark registrations). In any case, the addition of this descriptive term is inapt to distinguish the disputed domain name from Complainant’s mark. See WIPO Overview 3.0 (“Section 1.8 Is a domain name consisting of a trademark and a descriptive or geographical term confusingly similar to a complainant’s trademark? Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements.”)
Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark SIMPLY SOUTHERN.
B. Rights or Legitimate Interests
Complainant contends that Respondent lacks any rights or legitimate interests in the disputed domain name. To prove this, Complainant has shown that on the website at the disputed domain name Respondent has been selling t-shirts with slogans and expressions that resemble Complainant’s original SIMPLY SOUTHERN t-shirts, without any authorization by Complainant. Printouts of the website at the disputed domain name were provided as Annex 9 to the Complaint. Complainant also has shown that on the website at the disputed domain name, Respondent was using a logo blatantly imitating Complainant’s original “SS Simply Southern” logo. Annex 8 to the Complaint.
In the view of the Panel, the evidence on the case file is sufficient to show that on the website at the disputed domain name counterfeit “Simply Southern” t-shirts are being sold, while using a slavish copy of Complainant’s logo without any authorization by Complainant. This is neither a use in connection with a bona fide offering of products under Policy paragraph 4(c)(i), nor a fair or legitimate noncommercial use, without intent for commercial gain to misleadingly divert consumers, according to Policy paragraph 4(c)(iii). In addition, the Panel considers that the website at the disputed domain name is currently inactive, which suggests that Respondent does not contemplate any use of the disputed domain name other than selling presumably non-authentic goods. See WIPO Overview 3.0, section 2.13 (“How do panels treat complainant claims of illegal (e.g., counterfeit) activity in relation to potential respondent rights or legitimate interests? 2.13.1 Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent. Particularly in the case of counterfeits and pharmaceuticals, this is true irrespective of any disclosure on the related website that such infringing goods are “replicas” or “reproductions” or indeed the use of such term in the domain name itself.”)
The Panel also notes that according to the relevant WhoIs data, the registrant of the disputed domain name is “Lam Hoang Phuc”, while the registrant organization is “Cheap Zone”, and there is no evidence indicating that Respondent might be known, commonly or otherwise, by the disputed domain name, pursuant to Policy paragraph 4(c)(ii).
The Panel concludes that Complainant has made out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name.
Since Respondent failed to explain any of these facts, and to provide the Panel with any evidence indicating that it might have at least some right or legitimate interest for registering and using the disputed domain name, the Panel finds that Respondent does not have any rights or legitimate interests in the disputed domain name. See WIPO Overview 3.0, section 2.1 (“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”)
The second element of the Policy is thus met.
C. Registered and Used in Bad Faith
Complainant has shown that at least one of its registrations for the mark SIMPLY SOUTHERN - covering t-shirts - predates the registration of the disputed domain name by almost five years. See section 4 above. In addition, on its website at the disputed domain name Respondent has been selling presumably non-authentic “Simply Southern” t-shirts, by using an imitation of Complainant’s “SS-Simply Southern” logo. In the view of the Panel, this shows that Respondent was actually aware of, and targeted, Complainant’s mark and products at the time of registering the disputed domain name, and demonstrates that the registration of the disputed domain name was in bad faith.
Complainant also has shown that Respondent used the website at the disputed domain name to market competing t-shirts under the SIMPLY SOUTHERN trademark, without any authorization by Complainant. In so doing, Respondent has used Complainant’s mark on the home page of the website at the disputed domain name, and as the purported name of the company operating the website. In other words, by using the disputed domain name, 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 Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location. This is a circumstance of registration and use in bad faith pursuant to Policy paragraph 4(b)(iv).
The Panel also considers that the website at the disputed domain name presently is displaying an initial page merely entitled “Shopify” and stating, “Sorry, this shop is currently unavailable.” In the opinion of the Panel, this clearly indicates that Respondent does not contemplate any use if the disputed domain name other than as shown above, i.e., in bad faith. Lastly, the Panel notes that Respondent failed to provide any explanation for its registering and using the disputed domain name as shown.
For these reasons, the Panel finds that the disputed domain name was registered and is being used in bad faith.
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 <simplysoutherntee.com> be transferred to Complainant.
Date: April 9, 2018