WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fruit Of The Loom, Inc. v. Perfect Privacy, LLC / Ron Haskins, Ron Haskins

Case No. D2020-2997

1. The Parties

Complainant is Fruit Of The Loom, Inc., United States of America, represented by CSC Digital Brand Services Group AB, Sweden.

Respondent is Perfect Privacy, LLC, United States of America / Ron Haskins, Ron Haskins, United States of America.

2. The Domain Name and Registrar

The disputed domain name <jerzeez.com> is registered with Register.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 11, 2020. On November 11, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 12, 2020, 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 November 16, 2020 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 November 17, 2020.

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 November 25, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 15, 2020. Respondent sent two email communications to the Center on November 25 and December 9, 2020. Respondent did not submit any further response. Accordingly, the Center informed the Parties that it would proceed to appoint a panel on December 16, 2020.

The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on January 5, 2021. 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 an American manufacturer of underwear and casual clothing. Complainant, through its wholly-owned subsidiary, Russell Brands LLC, is the proprietor of numerous trademark registrations for the JERZEES mark, including the following:

- United States Trademark No. 1683032 for JERZEES (word mark), registered on April 14, 1992 for goods in class 25;
- Canadian Trademark No. TMA452293 for JERZEES (word mark), registered on December 29, 1995 for goods in class 25;
- Australian Trademark No. 529374 for JERZEES (device mark), registered on February 23, 1990 for goods in class 25.

Complainant has registered numerous domain names comprising the JERZEES mark, including <jerzees.com>, which was registered on September 15, 1999 and is used for Complainant’s primary business website for the JERZEES brand.

The disputed domain name was registered on November 30, 1999. It currently resolves to a website featuring pay-per-click links related to clothing and footwear.

The record contains Complainant’s cease-and-desist letters to Respondent dated August 12, 2020 and follow-up letters dated August 24, 2020 and September 4, 2020. The record does not contain responses to these letters.

5. Parties’ Contentions

A. Complainant

Complainant’s contentions may be summarized as follows:

Under the first element, Complainant states that it has a history dating to 1851, and today is a global underwear and casualwear business operating in 44 countries, employing more than 32,400 people worldwide. Complainant is active in social media networks and owns more than 600 domain names, 16 of which include the term “Jerzees”. Complainant has made significant investment to advertise, promote and protect its trademark. The disputed domain name varies from Complainant’s mark by only one letter – Respondent has replaced the letter “s” with the letter “z”. The disputed domain name is an example of typosquatting. The disputed domain name is confusingly similar to Complainant’s JERZEES mark in both sight and sound.

Under the second element, Complainant states that Respondent is not sponsored by nor affiliated with Complainant in any way. Complainant has not given Respondent permission to use Complainant’s trademarks in any manner, including in domain names. Respondent is not commonly known by the disputed domain name. Respondent is using the disputed domain name to redirect users to a website featuring links to third-party websites, some of which directly compete with Complainant’s business. One of the links features “Russell Hoodies”, which directly references Complainant and its business. Respondent presumably receives pay-per-click fees from the linked websites. Further, the disputed domain name is being offered for sale. Complainant first used its JERZEES mark in commerce on August 19, 1982, and registered its <jerzees.com> domain name on September 15, 1995, significantly predating Respondent’s registration of the disputed domain name on November 30, 1999.

Under the third element, Complainant states that, at the time of registration of the disputed domain name, Respondent knew or should have known of the existence of Complainant’s trademarks. Registration of domain names containing well-known trademarks constitutes bad faith per se. In 2019, Complainant reported revenues of USD 2 billion from its operations in over 40 countries. Complainant was listed as No. 49 in the top 100 Global Brand Ranking. Internet searches for “Jerzeez” returns multiple links referencing Complainant and its business. Typosquatting itself has been taken as evidence of bad faith registration by previous UDRP panels. Respondent has demonstrated a nefarious intent to capitalize on the fame and goodwill of Complainant’s trademarks to increase traffic to Respondent’s website for pecuniary gain. There is no plausible good-faith reason or logic for Respondent to have registered the disputed domain name. Rather, it is indicative of an intention to hold the disputed domain name for some future use that would be detrimental to Complainant. Respondent is currently offering to sell the disputed domain name. Respondent employed a privacy service to hide its identity, and ignored Complainant’s attempts to resolve this dispute outside this administrative proceeding.

Complainant requests transfer of the disputed domain name.

B. Respondent

Respondent’s first email to the Center may be quoted in its entirety:

“I do not understand what this is. I need more information. I have had this domain for many years and all the information is correct. Please tell me what the issue seems to be and let it be known that I am officially contesting any and all complaints.”

Respondent’s subsequent email contends that Complainant never patented or copyrighted the name “jerzeez.com” but rather “Jersees.com”. Respondent further notes that it performed the corresponding due diligence when the disputed domain was purchased and discovered no patent or copyright infringements at that time.

Respondent further claims that Complainant is trying to “shake me down and trying to take over my domain without just cause and I will not accept that”.

Respondent did not provide any other information or evidence.

6. Discussion and Findings

Paragraph 4(a) of the UDRP requires Complainant to make out all three of the following:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) Respondent has registered and is using the disputed domain name in bad faith.

A. Identical or Confusingly Similar

Complainant has provided evidence establishing that it has trademark rights in the JERZEES Mark through registrations in several jurisdictions in the name of its wholly-owned subsidiary, thereby satisfying the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview of WIPO Panel Views on Selected UDRO Questions, Third Edition (“WIPO Overview 3.0”), sections 1.2.1 and 1.4.1. Respondent has provided no information or evidence that would challenge Complainant’s evidence.

In comparing Complainant’s JERZEES Mark with the disputed domain name, the Panel finds that the disputed domain name is confusingly similar with the JERZEES Mark. The disputed domain name, <jerzeez.com>, is an obvious misspelling of the JERZEES Mark, which is recognizable within the disputed domain name. See WIPO Overview 3.0, section 1.9.

Section 1.7 of WIPO Overview 3.0 provides: “It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.”

Furthermore, it is the well-established view of UDRP panels that the addition of the generic Top-Level Domain (“gTLD”) to a domain name does not prevent the domain name from being confusingly similar to the complainant’s trademark (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder).

Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, Respondent’s 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) Respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) Respondent is 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 circumstances stated in the Complaint and evidence in support set forth in the Annexes to the Complaint indicate that, at the time that Respondent registered the disputed domain name, Respondent had no rights or legitimate interests in it. The nature of the disputed domain name, which is a misspelling of Complainant’s long-established JERZEES Mark, cannot constitute fair use because Respondent thereby effectively impersonates or suggests sponsorship or endorsement by Complainant, the trademark owner. See WIPO Overview 3.0, section 2.5.1.

The Panel finds that there is no evidence that Respondent is commonly known by the disputed domain name or is using the JERZEES Mark with the permission of Complainant.

There is no evidence of legitimate noncommercial or fair use of the disputed domain name, as it resolves to a website featuring pay-per-click links referencing apparel, which is the industry in which Complainant is active. Such use does not demonstrate a bona fide offering of goods or services. See WIPO Overview 3.0, section 2.9.

The Panel therefore finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.

Pursuant to WIPO Overview 3.0, section 2.1, and cases cited thereunder, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name.

Respondent has not submitted any evidence demonstrating such rights or legitimate interests, nor has it rebutted any of Complainant’s contentions in any way whatsoever, other than to state that he does not agree with the Complaint and that he did not infringe any patent or copyright. On balance, the Panel finds that Respondent has not proved rights or legitimate interests in the disputed domain name.

Accordingly, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the disputed domain name in bad faith:

(i) circumstances indicating that Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the disputed domain name; or

(ii) that Respondent has registered the disputed 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 Respondent has engaged in a pattern of such conduct; or

(iii) that Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel finds bad faith registration under the Policy. Respondent asserts that it checked for [patent and copyright] infringements and found none. However, Complainant’s rights in the JERZEES Mark clearly predate the registration of the disputed domain name in 1999. The JERZEES Mark is distinctive and has been in use since the 1980s. The disputed domain name contains a deliberate misspelling of Complainant’s Mark. The Panel finds that such a registration creates a presumption of bad faith. See WIPO Overview 3.0, section 3.1.4, describing the types of evidence that may support a finding of bad faith.

Having established that the disputed domain name was registered in bad faith, the Panel next turns to the issue of whether Respondent has engaged in bad faith use of the disputed domain name. The Panel finds that Respondent has demonstrated bad faith use in establishing and operating a website at “www.jerzeez.com” that features pay-per-click links including those containing references to Complainant’s industry and products. The evidence demonstrating that the disputed domain name is available for sale is inconclusive on the issue of bad faith, since it is not clear from the record that Respondent registered the domain name in bad faith with the primary purpose of selling it to Complainant or a competitor, or that Respondent has endeavored to sell the disputed domain name for valuable consideration in excess of Respondent’s costs related to the domain name. See WIPO Overview 3.0, section 3.1.1. The Panel finds that using a privacy service to conceal Respondent’s identity, under these circumstances, is additional evidence of bad faith.

Respondent has failed to rebut these allegations or to provide any evidence of actual or contemplated good faith registration or use, past or present, for the Panel to consider. See WIPO Overview 3.0, section 3.2.1. On balance, the Panel finds that Respondent registered and used the disputed domain name in bad faith.

The Panel therefore finds that Complainant has established the third element under paragraph 4(a) of the Policy.

7. Decision

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 <jerzeez.com> be transferred to Complainant.

Ingrīda Kariņa-Bērziņa
Sole Panelist
Date: January 19, 2021