WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Simply Southern Holdings, LLC v. WhoisGuard, Inc. / Lam Hoang Phuc, Cheap Zone

Case No. DCO2020-0003

1. The Parties

The Complainant is Simply Southern Holdings, LLC, United States of America (“United States”), represented by Brooks, Pierce, McLendon, Humphrey & Leonard, L.L.P., United States.

The Respondent is WhoisGuard, Inc., Panama / Lam Hoang Phuc, Cheap Zone, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <simplysoutherntees.co> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 10, 2020. On January 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 13, 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 the Complainant on January 21, 2020 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 amendment to the Complaint on January 22, 2020.

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 the Respondent of the Complaint, and the proceedings commenced on January 24, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 13, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 18, 2020.

The Center appointed Clive Duncan Thorne as the sole panelist in this matter on March 4, 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, Simply Southern Holdings, LLC, is a leading United States retailer of t-shirts, apparel and related products. Until it changed its name on July 15, 2019, it was formerly known as Dazzle Up LLC. The owner of the Complainant, Virginia Aydogdu, began selling t-shirts from a mall cart in the early 2000s.

The Complainant’s sales growth has been remarkably successful. Clothing sold by the Complainant is very popular and the mark SIMPLY SOUTHERN is now one of the top apparel brands in the United States. For example, the May 2019 edition of Gift Beat a trade publication for gift and specialty stores has identified SIMPLY SOUTHERN as the number one nationwide top selling brand for t-shirts and number three for all apparel sold in gift/boutique/specialty stores.

The Complainant employs over 100 people to support its operations. It operates 21 “Simply Southern” retail stores in North Carolina, South Carolina, Georgia, Tennessee and Virginia through which it sells its SIMPLY SOUTHERN branded products. It also manufactures and wholesales or distributes SIMPLY SOUTHERN brand t-shirts and other products to more than 5,000 stores nationwide in the United States.

It operates the commercial website “www.simplysoutherntees.com” and sells a large volume of its t-shirts from that website.

The Complainant has registered the trade mark SIMPLY SOUTHERN in the United States and currently has 12 United States trade mark registrations. These are listed in the Complaint. Copies of the certificates of registration are set out at Annex 5 to the Complaint. The first registration (No. 3335887) for inter alia “Retail and computerized online ordering services featuring home furnishings …” was registered on November 13, 2007.

The second registration (No. 4167424) for inter alia “Caps; Hats; Hooded sweat shirts; Jackets; Shirts; Short-sleeved or long-sleeved t-shirts; Shorts; Sweat shirts; T-shirts” was registered on July 3, 2012. These two registrations have achieved “incontestable” status under United States trade mark law.

In addition, there are two registrations, Nos. 5918079 registered on November 26, 2019 and 5727916 registered on April 16, 2019 for a logo incorporating “simply southern”.

The disputed domain name <simplysoutherntees.co> was registered by the Respondent, Lam Hoang Phuc, Cheap Zone on November 1, 2019. The disputed domain name resolves to a website purportedly offering for sale the Complainant’s products.

In the absence of a Response the Panel finds the evidence of the facts adduced by the Complainant to be true and proceeds to decide the Complaint on the basis of that evidence.

5. Parties’ Contentions

A. Complainant

The Complainant submits;

(i) The disputed domain name <simplysoutherntees.co> is confusingly similar to the trade mark SIMPLY SOUTHERN in which the Complainant has rights.

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name. There is no evidence that the Respondent has any relevant trade mark rights. To the contrary the Respondent has offered counterfeit products on its own website using the disputed domain name.

(iii) The disputed domain name was registered and is being used in bad faith. The evidence shows that the Respondent is attempting to attract Internet users to its own website by creating a likelihood of confusion with the Complainant’s mark.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The evidence set out in section 4 above establishes that the Complainant has registered trade mark rights in the mark SIMPLY SOUTHERN which predate the date of registration of the disputed domain name on November 1, 2019.

The Complainant submits that the disputed domain name, <simplysoutherntees.co>, incorporates the mark SIMPLY SOUTHERN in its entirety. This creates a presumption that the “domain name will normally be considered confusingly similar” (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

Apart from that, the incorporation of the word “tees” does not prevent a finding of confusing similarity (see section 1.8 of the WIPO Overview 3.0).

The disputed domain name is identical to the domain name <simplysoutherntees.com> as registered for the Complainant’s own commercial website save for the Top-Level Domain (“TLD”). The Complainant has registered “.com”; the Respondent has registered “.co”.

On the basis of this evidence the Panel finds that the disputed domain name <simplysoutherntees.co> is confusingly similar to the trade mark SIMPLY SOUTHERN in which the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant relies upon the fact that the Respondent has no United States trade mark registrations for the mark SIMPLY SOUTHERN and the disputed domain name was not registered until November 1, 2019 long after the Complainant’s brand had achieved prominence and after the Complainant’s trade mark registrations.

The Complainant at Annex 3 and Annex 6 to the Complaint exhibits screenshots from the Respondent’s website “www.simplysoutherntees.co”. The Complainant submits that the products offered on the website are not genuine products of the Complainant. The Complainant has not authorized the Respondent to use the mark SIMPLY SOUTHERN on t-shirts offered for sale by the Respondent.

The Panel agrees with the Complainant’s submission which is supported by the WIPO Overview 3.0, section 2.13.1 that the use of a domain name for illegal activity can never confirm rights or legitimate interests upon a respondent.

On the evidence, the Respondent’s disputed website features an image that is clearly a copy of the Complainant’s webpage. This is shown by the extracts from both Parties’ websites set out in the Complaint and the copy printouts of the Complainant’s actual website at Annex 7.

The Respondent also features on the website at the disputed domain name an unauthorized copy of the Complainant’s logos. This is demonstrated by the reproduction in a “somewhat blurry form” of the Complainant’s logo incorporating SIMPLY SOUTHERN.

In the absence of a Response and taking into account the above evidence the Panel finds that there is no evidence that the Respondent has any rights or legitimate interests in the disputed domain name <simplysoutherntees.co> within paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant submits that the use of a trade mark with a term for which the trade mark is “unmistakable” in communicating the Respondent’s bad faith. In this case this is shown by the combination within the disputed domain name of the mark SIMPLY SOUTHERN with “tees” i.e., a reference to the t-shirts for which the registered mark is famous. This is evidence that the Respondent has intentionally attempted to attract for commercial gain internet users to its website by creating a likelihood of confusion with the Complainant’s mark.

There is no doubt on the evidence that the Respondent knew about the Complainant’s mark and products before it registered the disputed domain name. The Complainant submits that the Respondent replicated the Complainant’s t-shirt and other images bearing the ® roundel beside its reproduction of the Complainant’s logo on its website. Further as is shown at Annex 6 to the Complaint the Respondent’s listing of “store information” (it called itself “SimplySouthern Tees”) listed the email address “[...]@simplysoutherntees.co” and provided a supposed Arizona address.

The Panel takes into account the submission in the amendment to the Complaint that bad faith was demonstrated in a previous UDRP decision between the same Parties, Dazzle Up, LLC v Lam Hoang Phuc Cheap Zone, WIPO Case No. D2018-0386 in which the panel found bad faith and ordered a transfer of a similar domain name <simplysoutherntee.com> to the Complainant in that dispute.

Taking these submissions into account and in the absence of contrary evidence from the Respondent the Panel finds the disputed domain name was registered and is being used in bad faith within paragraphs 4 (a)(iii) and 4(b) 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 <simplysoutherntees.co> be transferred to the Complainant.

Clive Duncan Thorne
Sole Panelist
Date: March 15, 2020