WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Chapter 4 Corp. d/b/a Supreme v. Dominique Lacroix, Ndiaye Therese, Newbeta, Trani Johanna, geryi wang
Case No. D2017-1902
1. The Parties
The Complainant is Chapter 4 Corp. d/b/a Supreme of New York, United States of America ("United States"), represented by Pryor Cashman, LLP, United States.
The Respondents are Dominique Lacroix of Xiamen, China, Ndiaye Therese, Newbeta of Metz, Japan, Trani Johanna of Shanghai, China, and geryi wang of Xiamen, China.
2. The Domain Names and Registrar
The disputed domain names <fashionsupreme.store>, <jpsupremeshop.asia>, <supeu.online>, <supeu.shop>, <supeu.store>, <supjp.asia>, <supjp.online>, <supjp.shop>, <supjp.store>, <supnew.store>, <suponline.store>, <supremeasia.biz>, <supremeasia.online>, <supremeasia.store>, <supremeasos.com>, <supremeat.shop>, <supremeat.store>, <supremeattokyo.com>, <supremeberlin.store>, <supremebe.store>, <supremeboohoo.com>, <supremebuy.asia>, <supremebuy.biz>, <supremebuyit.com>, <supremebuyma.asia>, <supremebuyma.com>, <supremebuy.store>, <supremebuyusa.com>, <supreme.center>, <supremechothes.asia>, <supremeclothing.asia>, <supremeclub.asia>, <supremeclub.store>, <supremeclubstore.asia>, <supreme.cool>, <supremedeal.shop>, <supremedeals.shop>, <supremedeals.store>, <supremedeal.store>, <supremede.com>, <supremedirect.sale>, <supremediscount.asia>, <supremediscount.store>, <supremeeasyfor.com>, <supremeeasylife.com>, <supremeeasynew.com>, <supremeeasynow.com>, <supremeeasyoff.com>, <supremeesnewshop.com>, <supremeesonline.com>, <supremees.shop>, <supremeesshop.com>, <supremees.store>, <supremeeu.com>, <supremeeuonline.com>, <supremeeuonline.shop>, <supremeeuoutlet.com>, <supremeeur.com>, <supremeeu.shop>, <supremeeushop.com>, <supremeeushop2017.com>, <supreme-eu.store>, <supremeeu.store>, <supremeeustore.asia>, <supremeeustore.com>, <supremeeustore.online>, <supremefanclub.asia>, <supremefanclub.com>, <supremefans.asia>, <supremefans.club>, <supremefansclub.asia>, <supremefans.info>, <supremefans.shop>, <supremefashioneu.com>, <supremefashionjp.com>, <supremefashion.life>, <supremefashion.shop>, <supremefashion.store>, <supremefr.com>, <supremegermany.com>, <supremegoget.com>, <supremegogo.com>, <supremegonew.com>, <supremegonow.com>, <supremegotime.com>, <supreme.guru>, <supremehamburg.com>, <supremehiphop.asia>, <supremehiphop.online>, <supremehk.shop>, <supremehotsell.com>, <supremeintokyo.com>, <supremeisrael.com>, <supremeja.asia>, <supremejapan.asia>, <supremejapan.biz>, <supremejapan.online>, <supremejapanoutlet.com>, <supremejapan.shop>, <supremejapanshop.com>, <supremejapan.store>, <supremejapan.vip>, <supremejapan2017.com>, <supremejapan2017.shop>, <supremejap.asia>, <supremejapn.com>, <supremeja.shop>, <supremejp.asia>, <supremejp.biz>, <supremejp.club>, <supremejp.info>, <supremejp.online>, <supremejponline.asia>, <supremejponline.com>, <supremejpoutlet.asia>, <supremejpsale.online>, <supremejp.shop>, <supremejpshop.asia>, <supremejpshop.com>, <supreme-jp.store>, <supremejp.store>, <supremejpstore.asia>, <supremejpstore.club>, <supremejpstore.com>, <supremejp.vip>, <supremejpvip.com>, <supremejpvip.info>, <supremejp2017.com>, <supremekr.com>, <supremekyo.com>, <supremelondon.shop>, <supremelv.store>, <suprememadrid.com>, <suprememall.asia>, <suprememalls.com>, <supremenewjapan.store>, <supremenewjp.asia>, <supremenewyork-aisa.com>, <supremenewyork.asia>, <supremenewyork-asia.com>, <supremenewyork.club>, <supremenewyork-eu.com>, <supremenewyork-it.com>, <supremenewyork-jp.asia>, <supremenewyork-jp.biz>, <supremenewyork.online>, <supremenewyork-shop.com>, <supremenewyorkstore.biz>, <supremenewyorkstore.com>, <supremenewyork.today>, <supremenewyork-tokyo.com>, <supremenewyork-uk.com>, <supremenewyork-us.com>, <supremenewyork.vip>, <supremenewyork.world>, <supremenihon.asia>, <supremenihon.biz>, <supremenihon.co>, <supremenihon.com>, <supremenihon.online>, <supremenihon.org>, <supremenihon.sale>, <supremenihon.shop>, <supremenihon.shopping>, <supremenihon.store>, <supremeninkisell.com>, <supremeonline.asia>, <supremeonline.biz>, <supremeonline.club>, <supremeonlinejp.asia>, <supremeonlinejp.com>, <supremeonlinesale.com>, <supremeonline.shop>, <supremeonline.store>, <supremeonlinestore.asia>, <supreme-onlinestore.com>, <supremeonlinestore.com>, <supremeonsale.com>, <supremeonsale.online>, <supremeonsale.store>, <supremeonsell.com>, <supremeonselling.com>, <supremeontokyo.com>, <supremeoutlet.asia>, <supremeoutlet.biz>, <supremeoutlet.club>, <supremeoutleteu.com>, <supremeoutletjp.asia>, <supremeoutletjp.com>, <supremeoutlet.online>, <supremeoutletonline.biz>, <supremeoutletonline.com>, <supremeoutlets.com>, <supremeoutlet.shop>, <supremeoutletshop.com>, <supremeoutlet.store>, <supremeoutletstore.com>, <supremeoutletus.com>, <supremeoutletvip.com>, <supremeoutletvip.store>, <supremeoutsale.com>, <supremeoutsell.com>, <supremepalace.asia>, <supreme.place>, <supremerock.store>, <supremesale.asia>, <supremesaleit.com>, <supremesalejp.asia>, <supremesalejp.store>, <supremesale.online>, <supremesaleonline.asia>, <supremesaleonline.com>, <supremesales.store>, <supremesale.store>, <supremesaleus.com>, <supremes.asia>, <supremes.club>, <supremesell.asia>, <supremeselling.com>, <supremesellit.com>, <supremesellnewyork.asia>, <supremesellnewyork.shop>, <supremesellnewyork.store>, <supremesell.shop>, <supremesell.store>, <supremesellusa.com>, <supremesgoods.com>, <supremeshirt.store>, <supremeshoe.com>, <supremeshoes.store>, <supremeshop.asia>, <supremeshop.biz>, <supremeshop.club>, <supremeshopeu.com>, <supremeshop.online>, <supremeshopper.asia>, <supremeshopperjp.com>, <supremeshopper.online>, <supremeshopusa.com>, <supremeslondon.com>, <supremesnewyork.com>, <supremes.online>, <supremes.shop>, <supremes.space>, <supremes.store>, <supremes.tokyo>, <supremestore.asia>, <supremestore.biz>, <supremestore.info>, <supremestorejp.com>, <supremestore.online>, <supremestore.shop>, <supremestore.vip>, <supremestreetwear.biz>, <supreme.style>, <supremestyle.asia>, <supremestyle.biz>, <supremestyle.club>, <supremestyleclub.asia>, <supremestyle.life>, <supremestyle.online>, <supremestyle.shop>, <supremestyleshop.com>, <supremestyle.store>, <supremesuk.com>, <supremesupremevipstyle.com>, <supremesweat.com>, <supremesweatshirt.com>, <supremetake.com>, <supremetakeit.com>, <supreme.today>, <supremetokyo.asia>, <supremetokyo.biz>, <supremetokyo.club>, <supremetokyoclub.asia>, <supremetokyofor.com>, <supremetokyo.info>, <supremetokyoing.com>, <supremetokyo.net>, <supremetokyoof.com>, <supremetokyooff.com>, <supremetokyoon.com>, <supremetokyo.online>, <supremetokyo.sale>, <supremetokyo.shop>, <supremetokyoshop.asia>, <supremetokyoshop.biz>, <supremetokyoshop.club>, <supremetokyoshop.com>, <supremetokyoshop.online>, <supremetokyoshop.world>, <supreme-tokyo.store>, <supremetokyo.store>, <supremetokyostore.asia>, <supremetokyostore.biz>, <supremetokyostore.club>, <supremetokyostore.com>, <supremetokyostore.online>, <supremetokyostore.world>, <supremetokyo.vip>, <supremetokyo2016.com>, <supremetotokyo.com>, <supremeuk.biz>, <supremeuk.sale>, <supremeuksale.com>, <supremeuk.shop>, <supreme-uk.store>, <supremeuk.store>, <supremeuk.vip>, <supremeur.com>, <supremeur.sale>, <supremeur.shop>, <supremeur.store>, <supremeus.biz>, <supremeusdeal.com>, <supremeusnewyork.biz>, <supremeusnewyork.com>, <supremeusnewyork.sale>, <supremeus.sale>, <supremeussale.com>, <supremeussell.com>, <supremeus.shop>, <supremeusshop.com>, <supremeussoho.com>, <supremeus.store>, <supremeus.vip>, <supremevip.asia>, <supremevip.biz>, <supremevipclub.com>, <supremevip.co>, <supremevipeu.shop>, <supremevipfans.asia>, <supremevipfans.club>, <supremevipfans.info>, <supremevipfr.store>, <supremevipjp.asia>, <supremevipjp.com>, <supremevipjp.store>, <supremevipmall.com>, <supremeviponline.store>, <supremevip.org>, <supremevipoutlet.com>, <supremevip.sale>, <supremevipsale.shop>, <supremevip.shop>, <supremevipshop.com>, <supremevip.store>, <supremevipstore.asia>, <supremevipstore.biz>, <supremevipstore.com>, <supremevipstore.online>, <supremevipstyle.asia>, <supremevipstyle.biz>, <supremevipstyle.com>, <supremevipstyle.online>, <supremewholesaler.com>, <supremewholesale.vip>, <supremexvans.com>, <supreme2017.asia>, <supreme2017.store>, <2017supremesell.com>, <2017supremonsell.com>, and <2017supremsell.com> are registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 28, 2017. On September 29, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 29, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 10, 2017 providing the registrant and contact information disclosed by the Registrar. The Complainant filed an amended Complaint on October 12, 2017.
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 the Respondents of the Complaint, and the proceedings commenced on October 27, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 16, 2017. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on November 23, 2017.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on December 4, 2017. 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.
On December 20, 2017, at the request of the Panel, the Center issued Procedural Order No. 1 to the Parties terminating the proceeding insofar as relating to one domain name on the grounds that it was not competent to dispute that particular domain name under the Policy and that, to that extent, the Panel did not have jurisdiction to entertain the Complaint.
4. Factual Background
The Complainant is a fashion company created in 1994 in downtown Manhattan, New York City, United States, specializing in the sale of high-end fashion products and others displaying the SUPREME and SUP marks. The Complainant opened its first store in 1994 and now owns and operates SUPREME branded stores in various cities around the world, including London, Los Angeles, Paris and Tokyo. The Complainant sells its goods exclusively through its stores and on its website located at "www.supremenewyork.com". It has used this website since as early as 2006. The Complainant works with various celebrities and its activities have been featured in both fashion and mainstream media.
The Complainant is in its own right and via its various affiliate companies the owner of numerous registered trademarks for its SUPREME and SUP marks. For example, it is the owner of United States registered trademark no. 4157110 for the word mark SUPREME, registered on June 12, 2012 in international class 25 (clothing). The Complainant's affiliate company, Supreme Japan, is the owner of Japanese registered trademark no. 5848449 for a figurative mark consisting of a red rectangle containing the letters "Sup" in white, registered on May 13, 2016 in international class 25.
Nothing is known regarding the Respondents other than that the vast majority of the disputed domain names, some 329 in number, have been configured to point to the same or at least highly similar websites. These websites feature a representation of the Complainant's brand and logotype, together with what the Complainant says is likely to be counterfeit product. This assertion is based upon the fact that the Complainant does not authorize the sale of products bearing the SUPREME or SUP marks through third party websites, the images and wording on the sites give no indication of any affiliation with the Complainant and, on the contrary, give the impression that they are official outlets of the Complainant, together with the fact that the products on the Respondents' websites are notably priced more cheaply than the Complainant's products could be expected to be priced by a retailer.
The Complainant issued a cease-and-desist letter on July 13, 2017, to the Respondent Dominique Lacroix stating that the Respondent was engaged in trademark infringement and counterfeiting. No reply was received to that letter.
5. Parties' Contentions
A. Complainant
The Complainant contends that the disputed domain names are identical or confusingly similar to trademarks in which the Complainant has rights, that the Respondents have no rights or legitimate interests in the disputed domain names and that the disputed domain names have been registered and are being used in bad faith.
The Complainant contends that its SUPREME and SUP marks are strong source identifiers of the Complainant's goods and services as demonstrated by the Complainant's popularity and success in the marketplace. The Complainant provides links to online fashion media coverage of the Complainant and its marks.
The Complainant asserts that it has both registered and common law rights in its SUPREME and SUP marks and that the disputed domain names wholly incorporate such marks and are confusingly similar thereto. The Complainant notes that the addition of other words, whether descriptive or geographic, to the Complainant's marks or the presence of the top-level domain name in the disputed domain names does not serve to distinguish the disputed domain names from the Complainant's marks.
The Complainant submits that the Respondents have never been authorized representatives of the Complainant, that they have not used the disputed domain names in connection with a bona fide offering of goods and services, that they are concerned in the sale of counterfeit clothing bearing the Complainant's marks, that their actions are meant to confuse and divert Internet users to unaffiliated third party commercial websites and that none of their activities regarding the disputed domain names are legitimate under the Policy.
The Complainant asserts that the Respondents registered the disputed domain names with full knowledge of the Complainant's rights because the disputed domain names incorporate the Complainant's trademarks, are used in connection with the sale of counterfeit goods bearing the Complainant's marks and contain generic terms such as "streetwear," "club," "shopper," and "fans" which were not selected through mere coincidences. The Complainant submits that the Respondents knew that the diversion of traffic to websites at which counterfeit goods might be obtained would be disruptive and adds that the Respondents intended it to be so.
The Complainant contends that the Respondents registered the disputed domain names for the purpose of intentionally attracting Internet users for commercial gain to websites linked to the disputed domain names by creating confusion as to source, sponsorship, affiliation or endorsement by the Complainant. The Complainant adds that registration and use of the disputed domain names in bad faith is undeniable due to the volume of disputed domain names registered, the worldwide reputation of the Complainant's marks, the use of the disputed domain names to divert visitors searching for the Complainant's official website, the usurping of the Complainant's marks without authorization and the combination of such marks with generic terms. The Complainant asserts that it is more likely than not that the Respondents registered the disputed domain names to attract, for commercial gain, Internet users to websites that promote counterfeit goods which are not sponsored by or associated with the Complainant, adding that the registration of hundreds of domain names incorporating the SUP and SUPREME marks by the Respondents and the use of these in connection with counterfeit product undisputedly constitutes bad faith.
The Complainant submits that the use of false contact information by the Respondents further indicates bad faith, as does the fact that the Respondent Dominique Lacroix failed to respond to the Complainant's cease-and-desist letter, given that prior panels have held that such conduct is not consistent with what would reasonably be expected from a good faith registrant accused of cybersquatting. The Complainant also notes that panels under the Policy have previously held three of the present Respondents in bad faith in previous cases, namely Moncler S.p.A. v. Ndiaye Therse and Ndiaye Therese, Newbeta,
WIPO Case No. D2017-0346, Moncler S.p.A. v. Trani Johanna, newbeta,
WIPO Case No. D2017-0547, Omega SA v. Ndiaye Therese,
WIPO Case No. D2017-1296 and Moncler S.p.A. v. Geryi Wang, et al.,
WIPO Case No. D2015-2244. The Complainant asserts that the Respondents Ndiaye Therese, Trani Johanna and Geryi Wang have a history of registering and using in bad faith domain names that usurp well-known registered marks owned by popular fashion brands to sell counterfeit goods.
B. Respondents
The Respondents did not reply to the Complainant's contentions.
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 names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondents have no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
A. Preliminary issue: Addition of Domain Names prior to Complaint Notification
By way of its amended Complaint, the Complainant added certain domain names and removed certain others from the list of disputed domain names before the Complaint was notified. Section 4.12.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") deals with the addition of domain names prior to complaint notification, noting that as a general rule, such domain names if held by the same registrant(s) may be added to a complaint before notification to the respondent(s) and formal commencement of the administrative proceeding. The Panel is content to follow this general rule in the present case.
The Panel has verified that all 363 disputed domain names which are the subject of this proceeding were contained in the Center's notification of the Complaint to the Respondents in the present case.
B. Preliminary issue: Consolidation of Complaint against Multiple Registrants
The Complainant requests consolidation of its Complaint against multiple registrants, namely Dominique Lacroix, Geryi Wang, Ndiaye therese and Trani Johanna. Dominique Lacroix is the registrant of 173 of the disputed domain names, each having creation dates between May 5, 2017 and August 30, 2017. Geryi Wang is the registrant of 22 of the disputed domain names, each having creation dates between May 15, 2017 and September 29, 2017. Ndiaye therese is the registrant of 115 of the disputed domain names, each having creation dates between December 20, 2016 and April 27, 2017. Trani Johanna is the registrant of 53 of the disputed domain names, each having creation dates between December 16, 2016 and May 8, 2017. Each registrant has listed a single email address (one email address per registrant) against all of their respective disputed domain names although each registrant exhibits a small number of different postal addresses across their respective portion of the disputed domain names. No opposition has been raised by any of the Respondents to the Complainant's consolidation request.
Section 4.11.2 of the WIPO Overview 3.0 discusses the issue of a complaint which has been filed against multiple respondents, noting that where this occurs, panels look at whether the domain names or corresponding websites are subject to common control and whether the consolidation is fair and equitable to all parties. The section adds that procedural efficiency would underpin panel consideration of this scenario and goes on to list a range of factors which panels have considered, typically present in some combination, as useful to determining whether consolidation is appropriate, such as similarities in or relevant aspects of (i) the registrants' identity(ies) including pseudonyms, (ii) the registrants' contact information including email address(es), postal address(es), or phone number(s), including any pattern of irregularities, (iii) relevant IP addresses, name servers, or webhost(s), (iv) the content or layout of websites corresponding to the disputed domain names, (v) the nature of the marks at issue (e.g., where a registrant targets a specific sector), (vi) any naming patterns in the disputed domain names (e.g., <mark-country> or <mark-goods>), (vii) the relevant language/scripts of the disputed domain names particularly where they are the same as the mark(s) at issue, (viii) any changes by the respondent relating to any of the above items following communications regarding the disputed domain name(s), (ix) any evidence of respondent affiliation with respect to the ability to control the disputed domain name(s), (x) any (prior) pattern of similar respondent behavior, or (xi) other arguments made by the complainant and/or disclosures by the respondent(s).
In the present case, the Complainant offers to prove on balance of probabilities that the websites associated with the disputed domain names offer for sale counterfeit SUPREME products. The majority, some 329, of the disputed domain names resolve to websites which are almost identical in design and which appear to offer SUPREME branded products for sale notwithstanding the fact that the domain names concerned have different registrants. For example, the following disputed domain names resolve to an entirely identical website: <supremeus.store>, registered to Dominique Lacroix; <supremeuk.store>, registered to Ndiaye Therese; <supremesaleit.com>, registered to Trani Johanna; and <supreme-uk.store>, registered to Geryi Wang. Indeed, the Panel notes very few differences among the majority of the websites associated with the disputed domain names. The only notable difference is an occasional example of the site in an alternative language such as Japanese, with the bulk of the websites being in English. The remainder of the screenshots of websites associated with the disputed domain names include one site with the appearance of a generic clothing retailer, four sites featuring the Registrar's holding page (indicating that the disputed domain names concerned had not been configured), five sites indicating a server error or that the browser was refused a connection to the web server, 23 sites in which the browser detected security concerns with the relative SSL certificate and one site pointing to a hosting provider's notice that the website concerned had been suspended.
The Panel is satisfied that the very high degree of identity between the vast majority of the associated websites indicates that the Respondents are likely to be commonly controlled. Other indications of common control which the Panel regards as significant in this case include common naming patterns among the disputed domain names despite the individual names concerned being registered to different registrants, examples being domain names with "supremebuy" or "supremeoutlet" elements each being common to three Respondents, and those with a "supremevip" or "supremejp" element each being common to all four Respondents, the sharing of common IP addresses among websites in respect of disputed domain names registered to different Respondents, an identity of telephone contact numbers on the WhoIs records for certain of the disputed domain names despite their being registered to certain different Respondents and a consistency of email addresses and street names on the WhoIs records despite the presence of some variance among other elements of the postal addresses. Finally, the Panel also notes that all of the disputed domain names were registered with the same Registrar and were all created within a relatively short period, namely between December 16, 2016 and September 29, 2017.
In all of the above circumstances, the Panel finds that the disputed domain names and their respective websites are more likely than not to be subject to common control, that consolidation is fair and equitable to all parties and is appropriate in the interests of procedural efficiency. The Panel therefore consolidates the Complaint in respect of all of the disputed domain names.
C. Identical or Confusingly Similar
Based upon the Complainant's submissions, the Panel is satisfied that the Complainant has, in its own right and via an affiliate company, UDRP-relevant rights in registered trademarks for SUPREME and SUP, examples of which are set out in the factual background section above. The Panel notes that the example Japanese registered trademark in respect of SUP is owned by an affiliated company within the Complainant's corporate group named Supreme Japan. Section 1.4.1 of the WIPO Overview 3.0 notes that a trademark owner's affiliate is considered to have rights in a trademark under the UDRP for purposes of standing to file a complaint. Although the Complainant did not expressly provide evidence of authorization to file the present Complaint on behalf of the trademark owner, it provided a list of the Japanese trademarks owned within its group, noting that these were held by Supreme Japan and providing brief details explaining the manner in which such company is connected to the Complainant's parent company. In these circumstances, the Panel is prepared to infer the existence of suitable authorization by Supreme Japan in favor of the Complainant to bring the present Complaint.
The Complainant provided copy certificates relating to its United States registered trademarks in an annex to the declaration by its Chief Financial Officer but, presumably for the sake of brevity, did not provide copies of the more than 40 other trademarks listed therein. The Panel therefore consulted the publicly available Japanese trademark registration database in order to review the full details of the SUP Japanese trademark noted in the factual background section above, in accordance with section 4.8 of the WIPO Overview 3.0.
As the Panel has found that the Complainant has demonstrated that it is able to rely upon suitable registered rights in respect of the SUPREME and SUP trademarks, the Panel need not consider the Complainant's assertions regarding the existence of common law trademarks in respect of either of these marks. The Panel therefore turns to its assessment of identity or confusing similarity by comparing the disputed domain names with the textual components of each mark, noting in passing that the SUP trademark is figurative but that the design elements of that mark neither comprise a dominant portion thereof nor overtake the SUP textual element in prominence, nor is the textual element disclaimed (on this topic, see section 1.10 of the WIPO Overview 3.0).
The various generic Top-Level Domains ("gTLDs") in each of the disputed domain names are commonly disregarded for the purposes of comparison in cases under the Policy on the grounds that they are required for technical reasons only. Having therefore removed the gTLDs from the comparison process, the Panel first notes that 352 of the disputed domain names contain the mark SUPREME in its entirety, either on its own or coupled with one or more of the following: (a) the year 2017, (b) generic words such as "store" or "deal", (c) acronyms such as "vip", (d) country codes such as "jp" or (e) geographic terms such as "newyork". 11 of the disputed domain names contain the SUP mark, coupled with one or more of the following: (a) the year 2017, (b) generic words such as "on sell" or "online", or (c) country codes such as "jp". The Panel is satisfied that none of the generic words, acronyms, country codes or geographic terms which have been added to the marks in the disputed domain names are sufficient to distinguish the disputed domain names from such marks (see section 1.8 of the WIPO Overview 3.0 on this topic). In these circumstances, the Panel finds that these 363 disputed domain names are confusingly similar to the Complainant's SUPREME or SUP trademarks as applicable.
In all of these circumstances, the Panel finds that the requirements of paragraph 4(a)(i) of the Policy have been satisfied in respect of all of the disputed domain names.
D. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondents 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 non-commercial 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 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.
The Panel is of the view that the Complainant has made out a prima facie case that the Respondents have no rights or legitimate interests in respect of the disputed domain names. The Complainant asserts that the Respondents have never been an authorized representative of the Complainant, that they have not used the disputed domain names in connection with a bona fide offering of goods and services, that they are likely to be concerned in the sale of counterfeit clothing bearing the Complainant's marks, that their actions are meant to confuse and divert Internet users to unaffiliated third party commercial websites and that none of their activities regarding the disputed domain names are legitimate under the Policy. These assertions are accompanied by appropriate evidence in the form of the declaration by an officer of the Complainant and examples of the websites associated with the disputed domain names.
Accordingly, the burden of production shifts to the Respondents to bring forward evidence of any rights or legitimate interests in the disputed domain names which they might have. The Respondents have failed to file a Response and have offered neither submissions nor evidence which might be indicative of any rights or legitimate interests in the disputed domain names. The Complainant's allegations regarding the use of the disputed domain names are serious in nature and call for an answer from the Respondents which is notably lacking in this case. The Panel has not identified any possible case which the Respondents might have made on this topic and indeed the circumstances suggest that the Respondents are engaged in a practice of large scale registration of domain names with a view to associating these with a relatively small number of websites, the majority of which are more likely than not to be engaged in the sale of counterfeit product. Such activity cannot confer any rights or legitimate interests in respect of the disputed domain names upon the Respondents.
In these circumstances, the Panel finds that the Respondents have failed to rebut the Complainant's prima facie case on rights and legitimate interests and therefore that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.
E. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location".
The principal thrust of the Complainant's case on this topic is that the disputed domain names have been registered and used in bad faith pursuant to paragraph 4(b)(iv) of the Policy. The Panel notes that the vast majority of the disputed domain names, 329 in number, have been used for identical or very similar websites designed to resemble an official retail site of the Complainant. One disputed domain name, <supremekyo.com>, has been used for a generic unbranded clothing retail site, and the remaining 33 disputed domain names appear to be passively held largely as a result of configuration or hosting errors. Given that these 34 disputed domain names match the structure and format of the majority, it seems to the Panel more likely than not that the Respondents' intent was that these too would be configured to work in the same way as do the majority of the disputed domain names, although errors have evidently been generated during such configuration.
Bearing in mind that the content on the websites associated with the majority of the disputed domain names appears to have been designed specifically to reference the Complainant and its trademarks, and that this significant number of disputed domain names were all registered comparatively recently and within a very short period of nine months, it is clear to the Panel that in registering and using the disputed domain names the Respondents had prior knowledge of the trademark significance of the marks SUPREME and SUP and intended to target those marks in bad faith. The Respondents have failed to file any Response and thus have not taken up the opportunity to provide any alternative explanation for their conduct. Nor, in the absence of such explanation, can the Panel identify any potential good faith motivation on the part of the Respondents in the circumstances of this case. The Panel therefore considers that the Respondents intended to attract visitors to the websites associated with the disputed domain names, for commercial gain, by creating a likelihood of confusion with the Complainant's marks. The Panel finds that this constitutes registration and use in bad faith in respect of each of the disputed domain names pursuant to paragraph 4(b)(iv) of the Policy.
The Panel also finds that the nature of the disputed domain names demonstrate that the Respondents have engaged in a pattern of conduct which constitutes bad faith, pursuant to paragraph 4(b)(ii) of the Policy. Section 3.1.2 of the WIPO Overview 3.0 provides that UDRP panels have held that establishing a pattern of bad faith conduct requires more than one, but as few as two instances of abusive domain name registration and that this may include a scenario where, as here, a respondent has on separate occasions registered trademark-abusive domain names, even where directed at the same brand owner.
The Panel is fortified in this finding by the fact that similar findings have been made in respect of several of the Respondents, all of whom the Panel has found are linked in the present case, in several previous cases under the Policy involving two different rights holders together with a variety of other respondents who were also found to be linked, namely Moncler S.p.A. v. Ndiaye Therse and Ndiaye Therese, Newbeta,
WIPO Case No. D2017-0346, Moncler S.p.A. v. Trani Johanna, newbeta,
WIPO Case No. D2017-0547, Omega SA v. Ndiaye Therese,
WIPO Case No. D2017-1296 and Moncler S.p.A. v. Geryi Wang, et al.,
WIPO Case No. D2015-2244. In those cases, a pattern of conduct on the part of each of the concerned respondents similar to that described in the present case was identified by the panels concerned. The total number of domain names across all of those cases which were found to have been registered and used in bad faith was 399.
In all of these circumstances, the Panel finds on the balance of probabilities that all of the disputed domain names have been registered and are being used in bad faith and therefore that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied.
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 names <fashionsupreme.store>, <jpsupremeshop.asia>, <supeu.online>, <supeu.shop>, <supeu.store>, <supjp.asia>, <supjp.online>, <supjp.shop>, <supjp.store>, <supnew.store>, <suponline.store>, <supremeasia.biz>, <supremeasia.online>, <supremeasia.store>, <supremeasos.com>, <supremeat.shop>, <supremeat.store>, <supremeattokyo.com>, <supremeberlin.store>, <supremebe.store>, <supremeboohoo.com>, <supremebuy.asia>, <supremebuy.biz>, <supremebuyit.com>, <supremebuyma.asia>, <supremebuyma.com>, <supremebuy.store>, <supremebuyusa.com>, <supreme.center>, <supremechothes.asia>, <supremeclothing.asia>, <supremeclub.asia>, <supremeclub.store>, <supremeclubstore.asia>, <supreme.cool>, <supremedeal.shop>, <supremedeals.shop>, <supremedeals.store>, <supremedeal.store>, <supremede.com>, <supremedirect.sale>, <supremediscount.asia>, <supremediscount.store>, <supremeeasyfor.com>, <supremeeasylife.com>, <supremeeasynew.com>, <supremeeasynow.com>, <supremeeasyoff.com>, <supremeesnewshop.com>, <supremeesonline.com>, <supremees.shop>, <supremeesshop.com>, <supremees.store>, <supremeeu.com>, <supremeeuonline.com>, <supremeeuonline.shop>, <supremeeuoutlet.com>, <supremeeur.com>, <supremeeu.shop>, <supremeeushop.com>, <supremeeushop2017.com>, <supreme-eu.store>, <supremeeu.store>, <supremeeustore.asia>, <supremeeustore.com>, <supremeeustore.online>, <supremefanclub.asia>, <supremefanclub.com>, <supremefans.asia>, <supremefans.club>, <supremefansclub.asia>, <supremefans.info>, <supremefans.shop>, <supremefashioneu.com>, <supremefashionjp.com>, <supremefashion.life>, <supremefashion.shop>, <supremefashion.store>, <supremefr.com>, <supremegermany.com>, <supremegoget.com>, <supremegogo.com>, <supremegonew.com>, <supremegonow.com>, <supremegotime.com>, <supreme.guru>, <supremehamburg.com>, <supremehiphop.asia>, <supremehiphop.online>, <supremehk.shop>, <supremehotsell.com>, <supremeintokyo.com>, <supremeisrael.com>, <supremeja.asia>, <supremejapan.asia>, <supremejapan.biz>, <supremejapan.online>, <supremejapanoutlet.com>, <supremejapan.shop>, <supremejapanshop.com>, <supremejapan.store>, <supremejapan.vip>, <supremejapan2017.com>, <supremejapan2017.shop>, <supremejap.asia>, <supremejapn.com>, <supremeja.shop>, <supremejp.asia>, <supremejp.biz>, <supremejp.club>, <supremejp.info>, <supremejp.online>, <supremejponline.asia>, <supremejponline.com>, <supremejpoutlet.asia>, <supremejpsale.online>, <supremejp.shop>, <supremejpshop.asia>, <supremejpshop.com>, <supreme-jp.store>, <supremejp.store>, <supremejpstore.asia>, <supremejpstore.club>, <supremejpstore.com>, <supremejp.vip>, <supremejpvip.com>, <supremejpvip.info>, <supremejp2017.com>, <supremekr.com>, <supremekyo.com>, <supremelondon.shop>, <supremelv.store>, <suprememadrid.com>, <suprememall.asia>, <suprememalls.com>, <supremenewjapan.store>, <supremenewjp.asia>, <supremenewyork-aisa.com>, <supremenewyork.asia>, <supremenewyork-asia.com>, <supremenewyork.club>, <supremenewyork-eu.com>, <supremenewyork-it.com>, <supremenewyork-jp.asia>, <supremenewyork-jp.biz>, <supremenewyork.online>, <supremenewyork-shop.com>, <supremenewyorkstore.biz>, <supremenewyorkstore.com>, <supremenewyork.today>, <supremenewyork-tokyo.com>, <supremenewyork-uk.com>, <supremenewyork-us.com>, <supremenewyork.vip>, <supremenewyork.world>, <supremenihon.asia>, <supremenihon.biz>, <supremenihon.co>, <supremenihon.com>, <supremenihon.online>, <supremenihon.org>, <supremenihon.sale>, <supremenihon.shop>, <supremenihon.shopping>, <supremenihon.store>, <supremeninkisell.com>, <supremeonline.asia>, <supremeonline.biz>, <supremeonline.club>, <supremeonlinejp.asia>, <supremeonlinejp.com>, <supremeonlinesale.com>, <supremeonline.shop>, <supremeonline.store>, <supremeonlinestore.asia>, <supreme-onlinestore.com>, <supremeonlinestore.com>, <supremeonsale.com>, <supremeonsale.online>, <supremeonsale.store>, <supremeonsell.com>, <supremeonselling.com>, <supremeontokyo.com>, <supremeoutlet.asia>, <supremeoutlet.biz>, <supremeoutlet.club>, <supremeoutleteu.com>, <supremeoutletjp.asia>, <supremeoutletjp.com>, <supremeoutlet.online>, <supremeoutletonline.biz>, <supremeoutletonline.com>, <supremeoutlets.com>, <supremeoutlet.shop>, <supremeoutletshop.com>, <supremeoutlet.store>, <supremeoutletstore.com>, <supremeoutletus.com>, <supremeoutletvip.com>, <supremeoutletvip.store>, <supremeoutsale.com>, <supremeoutsell.com>, <supremepalace.asia>, <supreme.place>, <supremerock.store>, <supremesale.asia>, <supremesaleit.com>, <supremesalejp.asia>, <supremesalejp.store>, <supremesale.online>, <supremesaleonline.asia>, <supremesaleonline.com>, <supremesales.store>, <supremesale.store>, <supremesaleus.com>, <supremes.asia>, <supremes.club>, <supremesell.asia>, <supremeselling.com>, <supremesellit.com>, <supremesellnewyork.asia>, <supremesellnewyork.shop>, <supremesellnewyork.store>, <supremesell.shop>, <supremesell.store>, <supremesellusa.com>, <supremesgoods.com>, <supremeshirt.store>, <supremeshoe.com>, <supremeshoes.store>, <supremeshop.asia>, <supremeshop.biz>, <supremeshop.club>, <supremeshopeu.com>, <supremeshop.online>, <supremeshopper.asia>, <supremeshopperjp.com>, <supremeshopper.online>, <supremeshopusa.com>, <supremeslondon.com>, <supremesnewyork.com>, <supremes.online>, <supremes.shop>, <supremes.space>, <supremes.store>, <supremes.tokyo>, <supremestore.asia>, <supremestore.biz>, <supremestore.info>, <supremestorejp.com>, <supremestore.online>, <supremestore.shop>, <supremestore.vip>, <supremestreetwear.biz>, <supreme.style>, <supremestyle.asia>, <supremestyle.biz>, <supremestyle.club>, <supremestyleclub.asia>, <supremestyle.life>, <supremestyle.online>, <supremestyle.shop>, <supremestyleshop.com>, <supremestyle.store>, <supremesuk.com>, <supremesupremevipstyle.com>, <supremesweat.com>, <supremesweatshirt.com>, <supremetake.com>, <supremetakeit.com>, <supreme.today>, <supremetokyo.asia>, <supremetokyo.biz>, <supremetokyo.club>, <supremetokyoclub.asia>, <supremetokyofor.com>, <supremetokyo.info>, <supremetokyoing.com>, <supremetokyo.net>, <supremetokyoof.com>, <supremetokyooff.com>, <supremetokyoon.com>, <supremetokyo.online>, <supremetokyo.sale>, <supremetokyo.shop>, <supremetokyoshop.asia>, <supremetokyoshop.biz>, <supremetokyoshop.club>, <supremetokyoshop.com>, <supremetokyoshop.online>, <supremetokyoshop.world>, <supreme-tokyo.store>, <supremetokyo.store>, <supremetokyostore.asia>, <supremetokyostore.biz>, <supremetokyostore.club>, <supremetokyostore.com>, <supremetokyostore.online>, <supremetokyostore.world>, <supremetokyo.vip>, <supremetokyo2016.com>, <supremetotokyo.com>, <supremeuk.biz>, <supremeuk.sale>, <supremeuksale.com>, <supremeuk.shop>, <supreme-uk.store>, <supremeuk.store>, <supremeuk.vip>, <supremeur.com>, <supremeur.sale>, <supremeur.shop>, <supremeur.store>, <supremeus.biz>, <supremeusdeal.com>, <supremeusnewyork.biz>, <supremeusnewyork.com>, <supremeusnewyork.sale>, <supremeus.sale>, <supremeussale.com>, <supremeussell.com>, <supremeus.shop>, <supremeusshop.com>, <supremeussoho.com>, <supremeus.store>, <supremeus.vip>, <supremevip.asia>, <supremevip.biz>, <supremevipclub.com>, <supremevip.co>, <supremevipeu.shop>, <supremevipfans.asia>, <supremevipfans.club>, <supremevipfans.info>, <supremevipfr.store>, <supremevipjp.asia>, <supremevipjp.com>, <supremevipjp.store>, <supremevipmall.com>, <supremeviponline.store>, <supremevip.org>, <supremevipoutlet.com>, <supremevip.sale>, <supremevipsale.shop>, <supremevip.shop>, <supremevipshop.com>, <supremevip.store>, <supremevipstore.asia>, <supremevipstore.biz>, <supremevipstore.com>, <supremevipstore.online>, <supremevipstyle.asia>, <supremevipstyle.biz>, <supremevipstyle.com>, <supremevipstyle.online>, <supremewholesaler.com>, <supremewholesale.vip>, <supremexvans.com>, <supreme2017.asia>, <supreme2017.store>, <2017supremesell.com>, <2017supremonsell.com>, and <2017supremsell.com> be transferred to the Complainant.
Andrew D. S. Lothian
Sole Panelist
Date: December 18, 2017
