WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

PEI Licensing, Inc. v. Leona Lozada

Case No. D2018-1423

1. The Parties

The Complainant is PEI Licensing, Inc. of Miami, Florida, United States of America (“USA” or “United States”), represented by Fitch, Even, Tabin & Flannery, USA.

The Respondent is Leona Lozada of New York, New York, USA.

2. The Domain Name and Registrar

The disputed domain name <farahtrousers.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 27, 2018. On June 27, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 28, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 25, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 26, 2018.

The Center appointed William R. Towns as the sole panelist in this matter on August 1, 2018. 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 and its predecessors in interest have used the FARAH mark in connection with men’s apparel since as early as 1948. The Complainant owns the following United States trademark registrations for FARAH: Registration No. 558,581 for men’s and boys’ jeans, registered on May 6, 1952; Registration No. 1,009,976 for men’s, young men’s and boys’ jeans, slacks, walk shorts, sport coats, jackets, registered on May 6, 1975; and Registration No. 1330960 for t-shirts, registered on April 16, 1985. The Complainant also owns United States Registration No. 890940 for its F Logo for men’s and boy’s slacks, shorts and jeans, registered on May 12, 1970, and has obtained trademark protection for its FARAH mark in numerous other jurisdictions around the world. The Complainant maintains an official website for the Farah brand at “www.farah.co.uk” (the “Farah.co.uk website”), which the Complainant has used since 1998.

The Respondent registered the disputed domain name <farahtrousers.com> on May 26, 2017, according to the Registrar’s WhoIs records. The disputed domain name resolves to a website that mimics the look and feel of the Complainant’s Farah.co.uk website, prominently featuring the FARAH banner across the top of each page, and offering for sale purported Farah brand clothing. The FARAH mark is reproduced on the labels and tags of clothing pictured on the Respondent’s website.

The Complainant upon discovering the Respondent’s website sent a cease-and-desist letter to the Respondent by mail and by email on June 7, 2018. The cease-and-desist letter mailed to the Respondent was returned as undeliverable, but it appears the emailed letter was successfully delivered. After receiving no reply from the Respondent to the cease-and-desist letter, the Complainant instituted this proceeding under the Policy.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name <farahtrousers.com> is confusingly similar to the Complainant’s FARAH mark, which the Complainant asserts is a well-known identifier for men’s clothing as a result of long use and promotion of the mark. According to the Complainant, neither the inclusion of the word “trousers” – a generic term for pants, nor the generic Top-Level Domain (“gTLD”) negates the confusing similarity of the disputed domain name to the Complainant’s FARAH mark.

The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant submits that the Respondent has no relationship with the Complainant and has not been authorized or licensed to use the Complainant’s FARAH mark. The Complainant contends that the Respondent nonetheless lists and sells clothing items similar to those sold by the Complainant under the FARAH mark, and is attempting to pass these items off as genuine Farah products. According to the Complainant, the Respondent is not commonly known by the disputed domain name, which incorporates the Complainant’s well-known FARAH mark and is being used to divert online customers to the Respondent’s website. Thus the Complainant further submits that the Respondent is neither using the disputed domain name in connection with a bona fide offering of goods or services or making a legitimate non-commercial or other fair use of the disputed domain name.

The Complainant asserts that the Respondent registered and is using the disputed domain name in bad faith. The Complainant contends that the Respondent clearly was aware of the Complainant’s FARAH mark and clothing line when registering the disputed domain name, and submits that the Respondent is using the disputed domain name to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant and its mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. The Complainant maintains that the Respondent is leveraging the fame of the FARAH mark for its own benefit, confusing consumers into thinking that they are purchasing genuine Farah products either on the Complainant’s website or on a website that is authorized by the Complainant.

B. Respondent

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

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.

Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

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

(ii) the respondent has no rights or legitimate interests with respect to the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name are deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Panel finds that the disputed domain name <farahtrousers.com> is confusingly similar to the Complainant’s FARAH mark, in which the Complainant has established rights through registration and long use in commerce. In considering identity and confusing similarity, the first element of the Policy serves essentially as a standing requirement. The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant’s trademark and the disputed domain name.

The Complainant’s FARAH mark is clearly recognizable in the disputed domain name. The inclusion of the descriptive word “trousers” does not dispel the confusing similarity of the disputed domain name to the Complainant’s mark. When the relevant trademark is recognizable in the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy. Top-Level Domains (“TLDs”) generally are disregarded in determining identity or confusing similarity under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the TLD.

Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant’s FARAH mark. The Respondent notwithstanding has registered and is using the disputed domain name, which is confusingly similar to the Complainant’s mark, to attract Internet users to a website prominently displaying the Complainant’s FARAH mark and offering for sale clothing bearing the FARAH label, without disclosing the nature of the Respondent’s relationship, if any, with the Complainant.

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, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the 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 Respondent has not submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. The Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.

Having regard to all of the relevant circumstances in this case, the Panel concludes that the Respondent was aware of the Complainant’s FARAH mark when registering the disputed domain name. It is not clear from the record whether the Respondent is offering counterfeit goods for sale on its website, or whether the Respondent is selling genuine Farah products. In the latter event, it is necessary for the Panel to consider whether the Respondent could assert to be making a nominative or fair use of the disputed domain name. UDRP panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark in connection with sales of or repairs to the complainant’s goods or services may in appropriate circumstances assert a legitimate interest in the domain name based on a bona fide offering of such goods or services. See WIPO Overview 3.0, section 2.8.1 and cases cited therein.

The most often cited UDRP decision evaluating domain names of resellers and distributors is Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (hereinafter “Oki Data”). In Oki Data,the respondent was a reseller of the complainant’s Okidata-branded products, and registered the domain name <okidataparts.com>. The panel in Oki Data concluded that the use of a manufacturer’s trademark as a domain name by a reseller could be deemed a “bona fide offering of goods or services” within the meaning of the Policy only if the following conditions are satisfied: (1) the respondent must actually be offering the goods or services at issue; (2) the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods); (3) the site itself must accurately disclose the respondent’s relationship with the trademark owner; and (4) the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.

The Oki Data approach acknowledges certain scenarios relating to the potential legitimacy of using another’s trademark in a domain name. An overarching principle of the Oki Data approach is that a use of a domain name cannot be “fair” if it suggests a non-existent affiliation with the trademark owner; nor can a use be “fair” if it is pretextual. See 201 Folsom Option JV, L.P. and 201 Folsom Acquisition, L.P. v. John Kirkpatrick, WIPO Case No. D2014-1359 (Oki Data approach considers and applies nominative fair use principles with reference to the limited scope of the Policy, and specifically with respect to the respondent’s use of the complainant’s mark in a domain name); Project Management Institute v. CMN.com, WIPO Case No. D2013-2035 (“[It] is critical to the establishment of rights or legitimate interests under Oki Data, and to a claim of nominative fair use,that the [r]espondent take steps to avoid using of the [c]omplainant’s mark in a manner likely to cause consumer confusion as to source, sponsorship, affiliation or endorsement”).

The record in the instant case does not in the Panel’s view reflect the Respondent’s observance of the Oki Data criteria. Generally speaking, UDRP panels have found that domain names identical to a third-party trademark carry a high risk of such affiliation. Where the domain name consists of a trademark plus an additional term (at the Second- or Top-Level), UDRP jurisprudence broadly holds that this cannot constitute nominative fair use if it effectively impersonates or improperly suggests sponsorship or endorsement by the trademark owner. See WIPO Overview 3.0, section 2.5, and cases cited therein.

It is the Panel’s opinion that the disputed domain name selected by the Respondent, particularly when considered in conjunction with the content on the Respondent’s website, misrepresents the nature of the “relationship” or (lack of) affiliation of the Respondent with the Complainant. The disputed domain name could easily convey to Internet users the impression that the Respondent’s website is affiliated with, sponsored, or endorsed by the Complainant. Such affiliation, sponsorship, or endorsement is further suggested by the prominent display and usage of the Complainant’s FARAH mark on the Respondent’s website, coupled with the Respondent’s failure to accurately disclose its relationship (or lack thereof) with the Complainant.

Because the disputed domain name chosen by the Respondent invokes a strong suggestion of affiliation with the trademark owner which has not been satisfactorily disclaimed, such use is not fair, is not legitimate, and does not give rise to rights or legitimate interests. Rather, it constitutes the kind of behavior proscribed by the Policy.

Having regard to the relevant circumstances in this case, and absent any explanation from the Respondent, the Panel finds that the Respondent’s use of the disputed domain name does not constitute use in connection with a bona fide offering of goods or services within the contemplation of paragraph 4(c)(i) of the Policy. Nor is the Respondent making a legitimate noncommercial or fair use of the disputed domain name within the meaning of paragraph 4(c)(iii) of the Policy. The Respondent has not been authorized to use the Complainant’s mark, and has not been commonly known by the disputed domain name within the contemplation of paragraph 4(c)(ii) of the Policy.

Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

For the reasons discussed under this and the preceding heading, the Panel concludes that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Panel considers that the Respondent was aware of and had the Complainant’s FARAH mark firmly in mind when registering the disputed domain name. It is a reasonable inference from the record that the Respondent registered the disputed domain name based on the attractiveness of the Complainant’s FARAH mark to drive traffic to the Respondent’s website. In the attendant circumstances of this case, the Panel concludes that the Respondent has intentionally attempted for commercial gain to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or products offered thereon. The Respondent registered and is using the disputed domain name in bad faith.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of 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 <farahtrousers.com> be transferred to the Complainant.

William R. Towns
Sole Panelist
Date: August 6, 2018

¹ See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.

²Id. When the relevant trademark is recognizable in the disputed domain name, the domain name normally will be considered confusingly similar to the mark for purposes of paragraph 4(a)(i) of the Policy.

³ See WIPO Overview 3.0, section 1.8 and cases cited therein.

⁴ See WIPO Overview 3.0, section 1.11.2 and cases cited therein.

⁵ See Grundfos Holding A/S v. Ahmed Alshahri, WIPO Case No. D2015-1112; Johnson & Johnson v. Ebubekir Ozdogan, WIPO Case No. D2015-1031.