WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Seven For All Mankind, LLC v. Huan Song

Case No. D2012-1357

1. The Parties

The Complainant is Seven For All Mankind, LLC of Vernon, California, United States of America, represented by Davis Wright Tremaine LLP, United States of America.

The Respondent is Huan Song of Putian, Fujian, China.

2. The Domain Name and Registrar

The disputed domain name <sevenjeansmankind.com> is registered with Xin Net Technology Corp.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 3, 2012. On July 4, 2012, the Center transmitted by email to Xin Net Technology Corp. a request for registrar verification in connection with the disputed domain name. On July 5, 2012, Xin Net Technology Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On July 12, 2012, the Center transmitted an email to the parties in both the Chinese and English languages regarding the language of proceedings. On July 12, 2012, the Complainant requested that English be the language of proceeding. The Respondent did not comment on the language of proceedings by the specified due date.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 18, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 7, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 8, 2012.

The Center appointed Jonathan Agmon as the sole panelist in this matter on August 16, 2012. 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 Seven For All Mankind, LLC, a California based company that engages in manufacturing and distributing clothing and accessories, largely of jeans.

The Complainant is the owner of multiple worldwide trademark registrations for the mark 7 FOR ALL MANKIND. For example: United States trademark Registration No. 2842072 - 7 FOR ALL MANKIND, with the registration date of May 18, 2004; United States trademark Registration No. 3344587 - 7 FOR ALL MANKIND, with the registration date of November 27, 2007; United States trademark Registration No. 3907104 - 7 FOR ALL MANKIND (logo), with the registration date of January 18, 2012; Community trademark registration No. 4560348 – 7 FOR ALL MANKIND, with the registration date of September 11, 2006; Community trademark registration No. 4565818 – 7 FOR ALL MANKIND, with the registration date of September 14, 2006, and many others.

The Complainant also developed its presence on the Internet and is the owner of several domain names consisting of its mark. For example: <7forallmankind.com> and <sevenforallmankind.com>.

The disputed domain name <sevenjeansmankind.com> was registered on May 10, 2011.

The disputed domain name <sevenjeansmankind.com> leads Internet users to a website that markets jeans, while using the Complainant’s mark.

5. Parties’ Contentions

A. Complainant

The Complainant argues that its 7 FOR ALL MANKIND mark has become famous under the laws of the United States. The Complainant further contends that its trademark obtained the status of a notorious mark and therefore enjoys liberal protection under the Paris Convention.

The Complainant further argues that the Complainant has continuously and extensively used the Complainant’s mark in connection with its products.

The Complainant further argues that it spent millions of dollars in advertising and promoting the Complainant’s products.

The Complainant further argues that it generates hundreds of millions of dollars in sales each year.

The Complainant further argues that through worldwide sales and promotional activities, its mark has generated valuable goodwill and has become inherently distinctive of the Complainant’s products.

The Complainant further argues that the disputed domain name was registered more than 9 years after the Complainant registered its trademark.

The Complainant further argues that the disputed domain name is confusingly similar to the Complainant’s mark. The Complainant contends that the disputed domain name combines the Complainant’s mark with the word “jeans”, which refers to a major category of the Complainant’s products.

The Complainant further argues that the Respondent is offering for sale on the website under the disputed domain name, products that appear to be of the Complainant’s, but are counterfeit products.

The Complainant further argues that the website under the disputed domain name is designed to appear as the Complainant’s official website or a website that is authorized by the Complainant. The Complainant contends that the Respondent’s intention is to mislead Internet users as to the source of the website in order to create revenue.

The Complainant further argues that the Respondent lacks any rights or legitimate interests in respect to the disputed domain name. The Complainant contends that registering a domain name that incorporates the Complainant’s famous mark, well after the registration of the Complainant’s trademark, cannot be considered legitimate.

The Complainant further argues that the Respondent knew of the Complainant and the Complainant’s mark when registering the disputed domain name.

The Complainant further argues it has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to use the Complainant’s trademark in any manner.

The Complainant further argues that the Respondent registered and is using the disputed domain name in bad faith. The Complainant contends that registering such a well-known mark, such as the Complainant’s mark, suggests of opportunistic bad faith.

The Complainant further argues that using the website under the disputed domain name to sell counterfeit products is another indication of the Respondent’s bad faith.

For all of the above reasons, the Complainant requests the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

A. Preliminary Issue – Language of the Proceedings

Paragraph 11(a) of the Rules provides that:

“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

The language of the Registration Agreement for the disputed domain name is Chinese.

The Complainant requested that the language of proceedings should be English.

The Panel cites the following with approval:

“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004).

Upon deciding on the language of the proceeding, the Panel takes the following into consideration:

a) The disputed domain name <sevenjeansmankind.com> consists solely of the English words: “seven”, “jeans” and “mankind”;

b) The website under the disputed domain name resolves to an online marketplace, which operates using the English language;

c) The Respondent did not object to the Complainant’s request that English be the language of proceeding.

Upon considering the above, the Panel concludes, according to the Rules, paragraph 11(a), that there is no prejudice or unfairness to the Respondent for these proceedings to be conducted in English and for its Decision to be rendered in English. Accordingly, the Panel determines that the language of this administrative proceeding should be English.

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.

The Complainant is the owner of multiple worldwide trademark registrations for the mark 7 FOR ALL MANKIND. For example: United States trademark Registration No. 2842072 - 7 FOR ALL MANKIND, with the registration date of May 18, 2004; United States trademark Registration No. 3344587 - 7 FOR ALL MANKIND, with the registration date of November 27, 2007; United States trademark Registration No. 3907104 - 7 FOR ALL MANKIND (logo), with the registration date of January 18, 2012; Community trademark registration No. 4560348 – 7 FOR ALL MANKIND, with the registration date of September 11, 2006; Community trademark registration No. 4565818 – 7 FOR ALL MANKIND, with the registration date of September 14, 2006, and many others.

The disputed domain name <sevenjeansmankind.com> integrates the words “seven” and “mankind” that are dominant elements in the Complainant’s 7 FOR ALL MANKIND mark. The fact that the disputed domain name <sevenjeansmankind.com> incorporates the word “seven” as a written word and not as a number does not result in a distinguishing element (see Cellular One Group v. Digital Communications, Inc.WIPO Case No. D2001-0189).

The disputed domain name differs from the Complainant’s 7 FOR ALL MANKIND by the subtraction of the term “for all” and replacing it with the word “jeans”, and the gTLD suffix “.com”.

Although the disputed domain name <sevenjeansmankind.com> does not incorporate the Complainant’s trademark 7 FOR ALL MANKIND in its entirety, the disputed domain name encompasses the dominant elements of the Complainant’s trademark. Incorporating these dominant elements with the word “jeans” does not change the overall impression that the disputed domain name is connected to the Complainant or the trade mark owned by the Complainant (see PepsiCo, Inc. v. Diabetes Home Care, Inc. and DHC Services, WIPO Case No. D2001-0174).

The word “jeans” itself does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant’s trademark as it is a generic word that is associated with the Complainant’s products. It is clear that the most prominent elements in the disputed domain name are the words “seven” and “mankind” that are dominant elements in the Complainant’s trademark.

Numerous UDRP panels have ruled that the mere addition of a non-significant element does not sufficiently differentiate the domain name from the registered trademark: “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark” (Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505). See also, “the trademark RED BULL is clearly the most prominent element in this combination, and that may cause the public to think that the domain name <redbull-jp.net> is somehow connected with the owner of RED BULL trademark” (RedBull GmbH v. PREGIO Co., Ltd.,WIPO Case No. D2006-0909). In this case the replacement of the word “all” with the word “jeans” does not serve to sufficiently distinguish and differentiate the domain name from the registered mark. This coupled with the facts that the Complainant sells jeans and the combination of words in the registered trademark is appears to be fanciful. Indeed, “[t]he mere addition of a descriptive term to an identical trademark has been repeatedly held by previous panels as not sufficient to avoid confusion between the domain name and the trademark” (Red BullGmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709).

Also, the addition of the gTLD “.com” to the disputed domain name does not avoid confusing similarity (See, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). Thus, the gTLD “.com” is without legal significance since the use of a gTLD is technically required to operate the domain name.

Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to the trademarks in which the Complainant owns rights.

C. Rights or Legitimate Interests

Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1).

In the present case, the Complainant alleged that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the Respondent failed to assert any such rights, or legitimate interests.

The Panel finds that the Complainant established such a prima facie case inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark or a variation of it. The Respondent did not submit a response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name. Thus, the Respondent did not rebut the Complainant’s prima facie case.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

D. Registered and Used in Bad Faith

The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).

The Complainant submitted evidence, which shows that the Respondent registered the disputed domain name after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant owns a registration for the 7 FOR ALL MANKIND trademark at least since the year 2004. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).

Paragraph 4(b)(iv) of the Policy provides that it will be evidence of bad faith registration and use by a respondent, if by using the domain name it had intentionally attempted to attract, for commercial gain, Internet users to the websites or other on-line locations to which the disputed domain name is resolved to, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the websites or locations or of a product or service on the websites or locations to which the domain name resolved to.

The disputed domain name leads Internet users to a website that engages in marketing jeans, while using the Complainant’s trademark and displaying the Complainant’s logo, without the Complainant’s authorization.

The Respondent’s use of the disputed domain name, which resolves to a website that is designed to look like a website associated with the Complainant and promotes goods similar or identical to the goods being offered by the Complainant is clear evidence, in the Panel’s view, that the Respondent registered and is using the disputed domain name with knowledge of the Complainant and of the use the Complainant is making of its trademark and intended to trade off the value of these. The Respondent’s actions therefore constitute bad faith. (See Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith”).

Moreover, the Complainant claims that the goods offered for sale at the website under the disputed domain name are seemingly counterfeit products of the Complainant’s. The Respondent has not rebutted the Complainant’s claims. Offering for sale counterfeit products of the Complainant under the disputed domain names constitutes further evidence of bad faith (see Prada S.A. v. Domains For Life, WIPO Case No. D2004-1019).

Finally, based on the evidence presented to the Panel, including the late registration of the disputed domain name and the Respondent’s use of the disputed domain name, the Panel draws the inference that the disputed domain name was registered and being used in bad faith.

Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) 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 <sevenjeansmankind.com> be transferred to the Complainant.

Jonathan Agmon
Sole Panelist
Dated: August 30, 2012