WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Saga Outerwear, LLC v. Domain Whois Privacy Service / Virgil Cunningham
Case No. D2019-0266
1. The Parties
Complainant is Saga Outerwear, of Salt Lake City, Utah, United States of America (the “United States”), represented by Taft, Stettinius & Hollister, LLP, United States.
Respondent is Domain Whois Privacy Service, of Nobby Beach, Queensland, Australia / Virgil Cunningham of Brazito, Alabama, United States.
2. The Domain Name and Registrar
The disputed domain name <sagaouterwearstore.com> is registered with Web Werks India Pvt. Ltd (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 1, 2019. On February 4, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 5, 2019, the Center received the 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 March 12, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on March 12, 2019.
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 Respondent of the Complaint, and the proceedings commenced on March 14, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 3, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 4, 2019.
The Center appointed Jeffrey Samuels as the sole panelist in this matter on April 10, 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
Complainant Saga Outerwear, LLC has continuously used the SAGA and SAGA OUTERWEAR trademarks in connection with wearable garments and clothing since at least 2005. Complainant owns the international registration No. 1226624, issued on May 6, 2014, for the SAGA mark and was the owner of a now-cancelled U.S. trademark registration for the SAGA mark. Complainant recently filed two trademark applications with the United States Patent and Trademark Office for the SAGA and SAGA OUTERWEAR marks, both of which allege a first use date of July 15, 2005. Complainant is the registrant and owner of the <sagaouterwear.com> domain name, as well as other domain names that incorporate the term “sagaouterwear.”
The disputed domain name, <sagaouterwearstore.com>, was registered on May 12, 2017. The disputed domain name reverts to a site that offers for sale various clothing items.
5. Parties’ Contentions
Complainant alleges that it owns common law rights in its SAGA and SAGA OUTERWEAR marks. In support of this assertion, Complainant points out that it has used the marks since at least 2005, that it has a robust social media presence, and that it has earned over USD 23 million in revenue and spent over USD 2.5 million in advertising since 2005.
Complainant further alleges that the disputed domain name is virtually identical and confusingly similar to Complainant’s marks, insofar as it incorporates in full the term “sagaouterwear” and that the addition of the term “store” is irrelevant to the analysis of whether the disputed domain name is confusingly similar.
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name. It points out that Respondent is not authorized by Complainant to use its marks or the domain name. Complainant contends that Respondent’s use of the disputed domain name in connection with its site does not constitute a bona fide offering of goods or services, that there is no evidence that Respondent is commonly known by the disputed domain name, and that Respondent’s use of the disputed domain name is clearly commercial in nature. Complainant suspects that some of Respondent’s clothing is counterfeit or otherwise illegitimate.
With respect to the issue of “bad faith” registration and use, Complainant asserts that Respondent has registered and used the disputed domain name in violation of paragraphs 4(b)(iii) and (iv) of the Policy. According to Complainant, Respondent is using the disputed domain name to operate a business that is misleading and in direct competition with Complainant. In addition, Complainant maintains that “the disputed Domain Name is used to attract consumers to Respondent’s Website. Further, the Website makes it appear that Respondent is somehow affiliated with or sponsored by Complainant. In fact, a consumer is very likely to be confused that the Website is owned and operated by Complainant”.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name <sagaouterwearstore.com>, is confusingly similar to the SAGA and SAGA OUTERWEAR marks. The disputed domain name incorporates in full the marks in issue, adding only non-distinctive matter, i.e., the term “store” and the generic Top Level Domain (“gTLD”) “.com.”
The evidence also establishes that Complainant has rights in the SAGA and SAGA OUTERWEAR marks. As noted above, the SAGA mark is the subject of an international registration. Moreover, the Panel finds that Complainant has met its burden of establishing common law rights in each of its marks. The evidence indicates that Complainant has used its marks continuously since at least 2005, that the marks have been exposed to the general public through social media and otherwise for a substantial period of time, and that Complainant has earned substantial revenue since 2005 in connection with the sale of SAGA and SAGA OUTERWEAR clothing. In short, the Panel concludes that Complainant has shown that its marks have become a distinctive identifier which consumers associate with Complainant’s goods and/or services. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.3.
B. Rights or Legitimate Interests
The Panel finds that Complainant has met its burden in establishing that Respondent has no rights or legitimate interests in the disputed domain name. The evidence establishes that Respondent is using a domain name confusingly similar to Complainant’s marks in connection with a website that offers products that compete with those sold by Complainant. As such, Respondent may not be found to be using the domain name in connection with a bona fide offering of goods or services. See WIPO Overview 3.0, section 2.2 and 2.5.1. Further, there is no evidence that Respondent is commonly known by the disputed domain name in issue or that Respondent is making a noncommercial or fair use of the disputed domain name. Indeed, upon review of the disputed website (see Annexes V & W to the Amended Complaint), it is clear that Respondent is making a commercial use of the disputed domain name, insofar as he is engaged in the sale of clothing.
C. Registered and Used in Bad Faith
Finally, the Panel rules that the disputed domain name was registered and is being used in bad faith. The parties appear from the evidence to be competitors in the clothing industry and the disputed domain name was registered some 12 years after Complainant’s first use of the SAGA and SAGA OUTERWEAR marks, which use appears to be fairly substantial in nature and degree. Under such circumstances, the Panel concludes that Respondent registered the disputed domain name primarily for the purpose of disrupting the business of a competitor, within the meaning of paragraph 4(b)(iii) of the Policy.
The evidence further supports a determination that Respondent, by using the disputed domain name, intentionally attempted to attract, for commercial gain, Internet users to his site by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s site or of the products on such site, within the meaning of paragraph 4(b)(iv) of the Policy. As found above, the disputed domain name is confusingly similar to Complainant’s marks and the disputed domain name reverts to a site that sells the same products offered for sale by Complainant. Thus, in the view of the Panel, an Internet user confronted with disputed domain name could reasonably assume, incorrectly, that such site and the goods found for sale thereon are sponsored by or affiliated with Complainant.
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 <sagaouterwearstore.com> be transferred to Complainant.
Jeffrey M. Samuels
Date: April 22, 2019