WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gildan Activewear SRL v. Akhlaq Ahmad, Cyber Hosting
Case No. D2020-2656
1. The Parties
The Complainant is Gildan Activewear SRL, Barbados, represented by Hutchison PLLC, United States of America (“United States”).
The Respondent is Akhlaq Ahmad, Cyber Hosting, Bangladesh.
2. The Domain Name and Registrar
The disputed domain name <alstyleapparelltd.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 12, 2020. On October 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 15, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 16, 2020. On November 10 and 11, 2020, the Center received two email communications from the Respondent.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on December 2, 2020. 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 one of the world’s largest manufacturers of basic apparel, including activewear, underwear, socks, hosiery and legwear. By and through its predecessors in interest and related companies, the Complainant has used some form of the ALSTYLE and ALSTYLE APPAREL & ACTIVEWEAR marks in connection with clothing, such as sweatshirts and tank tops, since at least as early as September 1, 1995.
The Complainant owns a variety of registered trademarks relating to the ALSTYLE and ALSTYLE APPAREL & ACTIVEWEAR marks. For example, the Complainant is the owner of United States registered trademarks No. 3499849 for the word mark ALSTYLE, and No. 3499850 for the word mark ALSTYLE APPAREL & ACTIVEWEAR, both registered on September 9, 2008 in international class 25 (clothing). The Complainant also owns United States registered trademark No. 2867190 for the design and word mark ALSTYLE APPAREL, registered on July 27, 2004 in international class 25, where the design element is a capital letter “A” and the crossbar of the letter is made prominent by being extended to the bottom of the letter. The Complainant describes this as its “stacked A” design. The Complainant lists multiple similar marks which it states that it has filed or registered in multiple territories, including noting that it has filed or registered the ALSTYLE mark in Bangladesh where the Respondent is based. The Panel has no further details regarding the Bangladesh mark, such as for example the date of filing or, if appropriate, the date of grant.
The disputed domain name was registered on August 1, 2018. The associated website is a partially incomplete site in which many links do not work. Insofar as content is present, this promotes activewear under the brand “Alstyle Apparel” using a logo comprising a capital letter “A” where the crossbar of the letter is made prominent by commencing at the bottom of the letter, running at 45 degrees from left to right and being underscored with a differently colored flash.
The Respondent has not filed a formal Response in this proceeding, although two emails described below have been received by the Center along with what appear to be copies of ten formal documents which were unaccompanied by any commentary. The documents bear no relationship to the Respondent as named in the Complaint and verified by the Registrar as the holder of the disputed domain name. However, they indicate that the disputed domain name may have been registered on behalf of, and may be operated by, a limited company registered in Bangladesh named Alstyle Apparel Ltd.
A certificate of incorporation for a company named Alstyle Apparel Ltd. indicates that said company was incorporated in Bangladesh on September 14, 2017, when particulars of the directors and a memorandum and articles of association were supplied to the relevant companies registry. Said company appears to have received a taxpayer identification number on September 19, 2017 and a value added tax registration certificate on February 18, 2018, each from the competent authority in Bangladesh.
Further documentation supplied in the name of Alstyle Apparel Ltd, which bears various dates post-dating the registration of the disputed domain name has also been supplied: a trade license, mostly in a non-Latin script, and which is not accompanied by a translation into the language of the proceeding; a membership certificate for the Bangladesh Garment Buying House Association; a Bangladesh Government Department of Textiles registration certificate; and value added tax and income tax registration certificates.
5. Parties’ Contentions
A. The Complainant
The Complainant contends as follows:
Identical or Confusingly Similar
The disputed domain name is nearly identical with and confusingly similar to the Complainant’s marks. It subsumes the whole of the ALSTYLE mark adding only the descriptive terms “apparel” and “ltd”, and differs from the ALSTYLE APPAREL & ACTIVEWEAR mark only through the substitution of “ltd” for & ACTIVEWEAR. The use of “ltd” in the disputed domain name does nothing to distinguish it from the Complainant’s marks as this merely suggests a corporate entity associated with the Complainant’s marks.
Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent’s use of the disputed domain name has no connection with a bona fide offering of goods and services. Despite being created in August 2018, there is no content on the associated website beyond the home page. Other links respond with a “404 Error, Page Not Found”. Product images and a factory works video presentation are similarly inactive. There are no legitimate product or service offerings.
The Respondent is attempting to create an association with the Complainant and with its registered marks. The Respondent makes repeated uses of the Complainant’s marks throughout its website and uses a logo that mirrors the Complainant’s “stacked A” design.
Registered and Used in Bad Faith
The Respondent registered the disputed domain name in bad faith with the express intent to trade off the goodwill associated with the Complainant’s claimed well-known marks. The disputed domain name was registered well after the Complainant had widely used and established consumer recognition in its marks and almost 23 years after the Complainant began using its marks. Such registration took place more than ten years after the Complainant had registered its marks in many countries outside the United States.
The Complainant is one of the largest manufacturers of basic clothing in the world. The Complainant has a significant manufacturing presence in Dhaka, Bangladesh. The Respondent appears to be based there. It is reasonable to conclude that the Respondent is aware of the Complainant and familiar with its marks. There is no legitimate need for the Respondent to adopt the Complainant’s marks except to trade off the Complainant’s goodwill. “Alstyle” is not a common term used in the course of business and is a truncation specifically adopted by the Complainant and its predecessors to serve as a source identifier. The use of such term with “apparel” can only signify an intent to create an association with the Complainant and its marks.
The disputed domain name is being used in bad faith. It does not provide any information related to an ongoing legitimate business. Links purporting to show the Respondent’s products are non-functional. The disputed domain name is intended to disrupt the Complainant’s business and lead to personal gain for the Respondent by misleading and misdirecting web traffic intended for the Complainant. The Respondent is creating a likelihood of confusion as to source, sponsorship, affiliation or endorsement of the Respondent and the Respondent’s website. The disputed domain name and associated website are likely to lead Internet users to believe, incorrectly, that the Respondent is a local agent or affiliated dealer of the Complainant’s products.
B. The Respondent
The Respondent did not submit a formal Response in this proceeding. However, as noted above, two emails were received by the Center on November 10, 2020 and November 11, 2020 respectively which appeared to be issued by or on behalf of the Respondent. These were relatively brief and can be quoted verbatim:
i have a domain which is alstyleapparelltd.com. alstyleapparelltd is a bangladeshi Company and have company trade licence.
i send these attachment of licence copy. date 2018-08-01 we registered this domain. i and alstyleapparelltd.com company can't want to sale this domain. we already informed our domain Registrar to that issue. That is our cordial request please stop it.
With dew respect and honor refer to your letter on 2nd November through DHL.
Please find attached our company (Alstyle apparel ltd.) valid documents for your perusal.
All the documents are from Bangladesh government.
So that we are the valid owner of the Domian.
So requesting you to solve the issue.
Thanking you in advance for your kind cooperation.
With best regards
Sobahan md Abdus.”
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The second level of the disputed domain name may be split into three readily identifiable elements: “alstyle”, “apparel”, and “ltd”. The first of these elements is identical to the Complainant’s ALSTYLE trademark. The first two of said elements, taken together, also match the first two elements of the Complainant’s ALSTYLE APPAREL & ACTIVEWEAR trademark. In both cases, the Complainant’s mark is substantially reproduced and is recognizable in the disputed domain name despite the addition of the “ltd” element, which is of no special significance, being a common abbreviation for the word “limited”, and the absence of the “APPAREL & ACTIVEWEAR” or of the “& ACTIVEWEAR” portions of the Complainant’s marks respectively.
The Panel notes that the Complainant’s ALSTYLE APPAREL & ACTIVEWEAR mark contains a disclaimer in respect of the APPAREL & ACTIVEWEAR portion of the text. This typically does not affect the assessment of identity or confusing similarity under the Policy (see section 1.2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). The existence of the disclaimer may however be relevant to the second and third element assessments (see section 1.10 of the WIPO Overview 3.0).
The generic Top-Level Domain (“gTLD”), in the case of the disputed domain name, “.com”, is typically disregarded for the purposes of comparison as being generally required for technical reasons only (see section 1.11 of the WIPO Overview 3.0).
In all of these circumstances, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s marks and that the first element under the Policy has been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The consensus of previous UDRP decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in a domain name. Where the panel finds that a complainant has made out such a prima facie case, the burden of production shifts to the respondent to bring forward evidence of such rights or legitimate interests.
In the present case, the Complainant contends that the Respondent’s use of the disputed domain name has no connection with a bona fide offering of goods and services, that there is no content on the associated website apart from the home page, that there are no legitimate product or service offerings on said website, and that the Respondent uses the Complainant’s marks alongside a similar logo to the “stacked A” design. These submissions are sufficient in the Panel’s view to establish the requisite prima facie case. Accordingly, the Panel turns to the Respondent’s case to determine whether it has brought forward evidence of such rights or legitimate interests.
The Respondent has not filed a formal Response in connection with the administrative proceeding. Nevertheless, as noted above, emails dated November 10, 2020 and November 11, 2020 were received by the Center which purport to respond to the Complaint. The Panel considers that it is reasonable to assume that the entity which sent these emails is likely to be the underlying registrant of the disputed domain name, and that the holder verified by the Registrar is in fact some form of proxy, possibly a hosting provider (given the name “Cyber Hosting”) which has registered the disputed domain name in its own name on behalf of said entity for convenience. The Panel must ensure that the Parties have a fair opportunity to present their case in terms of paragraph 10(b) of the Rules and will therefore treat the said emails as though they were sent by or on behalf of the Respondent and/or that they represent the submissions of the true or underlying registrant of the disputed domain name, given that the alternative would be simply to reject these out of hand.
The essence of the case in said emails is merely that the Respondent operates a company matching the name contained in the disputed domain name. This could give rise to rights and legitimate interests under the Policy if the Respondent were able to establish that it was commonly known by that name in terms of paragraph 4(c)(ii) of the Policy. “Commonly known by” is generally interpreted by panels under the Policy as meaning that an entity must have been commonly known by at least some other people than those responsible for the registration of the entity prior to the registration of the disputed domain name and wholly independent of any reference to the complainant. The background to this interpretation is explained by the UDRP panel in Royal Bank of Canada v. RBC Bank, WIPO Case No. D2002-0672 as follows:
“If the intention of the Policy were otherwise, every cybersquatter would be able to avoid the operation of the Policy by the simple expedient of: (i) quietly registering someone else’s trademark as a corporation name (possibly in some jurisdiction having no connection with either the trademark owner or the cybersquatter); (ii) waiting some decent interval of time before registering the corporation name as a domain name; and (iii) resisting the trademark owner’s challenge under the Policy by claiming that the fact of the registration of the corporation proves that the corporation has been ‘commonly known by’ the corporation name/trademark/domain name, and therefore has a legitimate interest in the domain name.”
The evidence accompanying said emails suggests that there may indeed be a limited company registered in Bangladesh whose name corresponds to the disputed domain name. However, importantly, there is little information indicating that the business might have been commonly known to third parties by this name before the disputed domain name was registered, moreover by reference to the Respondent alone, and not by way of trading off of the Complainant’s reputation and notably its presence in the Respondent’s own country. All that the documents produced by or on behalf of the Respondent show is that a company was incorporated some 11 months before the disputed domain name was registered and that this company obtained a taxpayer identification number and a value added tax certificate from the competent authorities. Not until a year after the disputed domain name was registered did this company obtain membership of what may be a trade association for garment buyers and government registration as a textile buyer.
The documentation produced by the Respondent is accompanied by no explanatory information or commentary which might have given the history or background to the selection of said company name – in particular independent of the Complainant – or a description and examples of the way in which said company does business. Furthermore, it is not clear to the Panel in the absence of further explanation whether the certificates could be taken to mean that the entity actually trades or whether it has ever traded since its incorporation, albeit that in some jurisdictions the tax certificates might suggest this. There is simply not enough information here for the Panel to find that the Respondent is likely to have been commonly known as the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy and as further articulated in the Royal Bank of Canada case cited above.
The Respondent’s documentary evidence, limited as it is, must be weighed against the Complainant’s evidence of the lack of any apparently genuine online presence on the Respondent’s part, i.e., no site content beyond a home page, together with its assertion that the Respondent has intentionally duplicated the Complainant’s trading style and adopted a version of the Complainant’s “stacked A” logo on the Respondent’s website. The Complainant’s submissions on these topics go unanswered by the Respondent. The Complainant points out that its ALSTYLE mark does not denote a common term and is a truncation specifically adopted by the Complainant and its predecessors some 25 years ago. It is reasonable to infer from these unchallenged submissions that the Respondent is unlikely to have selected the disputed domain name independently of the Complainant’s rights, whether or not it has incorporated a company to do business under a matching term. The fact that the Complainant’s ALSTYLE APPAREL & ACTIVEWEAR mark contains disclaimed text does not alter that conclusion, given that the term ALSTYLE is not so disclaimed.
To underscore its point that the Respondent was likely to be aware of its rights at the point of registration of the disputed domain name, the Complainant provides independent evidence showing that in 2010, well before the disputed domain name was registered, the Complainant made a substantial investment of some USD 15 million in a manufacturing facility in Dhaka, Bangladesh, where the Respondent is based. The Respondent purports to do business in the same field as the Complainant. It is reasonable to infer from these facts that the Complainant and its trademarks were likely to have come to the Respondent’s notice and that the reason for its selection of its company name was to benefit unfairly from the goodwill associated with the Complainant’s activities under the ALSTYLE mark. Any offering of goods and services in this context could not be considered to be bona fide within the meaning of paragraph 4(c)(i) of the Policy. Again, these submissions and related evidence have not been subject to any challenge by the Respondent. The Panel notes that the website associated with the disputed domain name, although incomplete (i.e., links to pages beyond the home page go to “404 error” pages), is clearly commercial in nature, in that it seems to be promoting a “hoodies collection”. In these circumstances, the Respondent could not suggest that it is making legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain in accordance with paragraph 4(c)(iii) of the Policy.
In conclusion, although there may be a business by the name of “Alstyle Apparel Ltd” in Bangladesh which is in some way connected with the disputed domain name, on the present record the Panel does not consider that this fact or the Respondent’s supporting documents are sufficient to confer rights and legitimate interests upon it at least in terms of the Policy. In all of these circumstances, the Panel finds that the Respondent has failed to rebut the Complainant’s prima facie case that it does not have rights or legitimate interests in the disputed domain name and that, accordingly, the second element under the Policy has been established.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt 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 its website or location.
The Complainant’s case is that the Respondent has adopted the Complainant’s mark in the disputed domain name with a view to causing confusion to consumers and thereby unfairly obtaining commercial advantage. The Respondent does not directly address this point in its emails, which merely describe the formation of an entity by a name which matches the disputed domain name. Importantly, the Respondent does not deny prior knowledge of the Complainant and its rights and, in the Panel’s view, it would be unlikely that it could have done so credibly, given the longstanding nature of the Complainant’s family of ALSTYLE marks. The Complainant and its predecessors in interest have adopted this mark in a specifically truncated form and have used this in the above-described registered trademarks, among others, since 1995. There is no suggestion before the Panel that this term could have any other meaning than one which is associated with the Complainant. This is the form which the Respondent has adopted, much more recently, in the disputed domain name and it has offered no explanation as to why it did so.
Although the Parties’ logos are not identical, the Panel can see an apparent similarity in the Complainant’s “stacked A” logo and the design of the Respondent’s corresponding graphic, suggesting at least that the one may have influenced the other. This again calls for an explanation that is not forthcoming. The Complainant points out that it has made a substantial investment in a manufacturing facility in the location where the Respondent is based. In the absence of any submissions or evidence to the contrary, the Panel reasonably infers that this investment is likely to have come to the Respondent’s knowledge before it registered the disputed domain name, particularly as the Respondent’s documentation indicates that it is, or proposes to be, in the same or a similar line of business to that of the Complainant.
The Complainant also asserts that the Respondent’s cursory online presence is intended to disrupt the Complainant’s business and that this gives the impression that the Respondent may be a local agent or affiliated dealer of the Complainant’s products. In this way, the Complainant notes, the use of the disputed domain name creates a likelihood of confusion as to source, sponsorship, affiliation, or endorsement of the Respondent’s website. The Panel finds these assertions and corresponding evidence to be reasonable in the circumstances of the case. None of this is addressed to any reasonable extent by the Respondent, nor does it even attempt to deny the apparent association between the disputed domain name and the Complainant’s marks.
The Respondent’s case is restricted to the fact that it has registered a company name corresponding to the disputed domain name. On its own, and in the face of the Complainant’s compelling submissions and evidence, this does not suggest that the disputed domain name has necessarily been registered and used in good faith for a purpose which was not intended to target the Complainant’s rights. In the absence of any substantive rebuttal of the Complainant’s case on this topic, the Panel finds that the disputed domain name has been registered and is being used in bad faith in accordance with paragraph 4(b)(iv) of the Policy. The third element under the Policy has therefore been established.
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, <alstyleapparelltd.com>, be transferred to the Complainant.
Andrew D. S. Lothian
Date: December 16, 2020