WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Chapter 4 Corp. DBA Supreme v. Edith ter Smitten, Boom Town Fashion GmbH

Case No. D2020-0305

1. The Parties

The Complainant is Chapter 4 Corp. DBA Supreme, United States of America, represented by Winterfeldt IP Group PLLC, United States of America.

The Respondent is Edith ter Smitten, Boom Town Fashion GmbH, Germany.

2. The Domain Names and Registrars

The disputed domain names <supreme-streetwear.com>, <supremeitaly.shop>, and <supremestreetwaer.com> are registered with Cronon AG; the disputed domain names <supremestreetwear.shop> and <supreme-italy.com> are registered with INWX GmbH & Co. KG (the “Registrars”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 11, 2020 concerning the disputed domain name <supreme-streetwear.com>. On February 11, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with that disputed domain name. On February 12, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 17, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. Furthermore, the Registrar also indicated that the language of the Registration Agreement was German. The Center sent an email communication to the Parties on February 17, 2020, in both German and English, inviting the Complainant to provide sufficient evidence of an agreement between the Parties for English to be the language of proceeding, or a Complaint translated into German, or a request for English to be the language of proceeding. Similarly, the Respondent was invited to submit either its agreement that English be the language of the proceedings or its arguments for the language of the proceedings to be German. The Complainant filed an amended Complaint on February 21, 2020 adding the disputed domain names <supremeitaly.shop>, <supremestreetwaer.com>, <supremestreetwear.shop>, and <supreme-italy.com>, and also including a request for English to be the language of the administrative proceedings. This request included arguments and supporting material (to the extent not already provided in the Complaint) as to why the proceedings should be conducted in English. The Respondent did not object to the Complainant’s request and has participated in the proceedings in English. At the Panel’s direction, on May 7, 2020 the Center was requested to confirm the request for registrar verification in connection with the <supremeitaly.shop>, <supremestreetwaer.com>, <supremestreetwear.shop>, and <supreme-italy.com> disputed domain names. The Registrars confirmed the requested information on May 8 and 12, 2020.

The Center verified that the Complaint and 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 Respondent of the amended Complaint in both English and German, and the proceedings commenced on February 25, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 16, 2020. The Respondent did not submit any response within this time limit; accordingly, the Center notified the Respondent’s default on March 20, 2020.

However, on March 24 and March 27, 2020 the Respondent sent email communications to the Center; although the Respondent’s name was confirmed to be Edith ter Smitten by the Registrar, the Respondent signed of his email communications with the name Luther Ter Smitten. On April 10, 2020 the Center received an unsolicited supplemental filing from the Complainant in response to the communication by the Respondent.

The Center appointed Peter Burgstaller as the sole panelist in this matter on April 10, 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.

Given in particular the Parties’ prior litigation history and the somewhat contradictory statements made in the Respondent’s March 24, 2020 email, and also noting the change in website content during the proceedings, the Panel issued a Procedural Order to the Parties on May 12, 2020 and also thereby extended the decision due date. The Respondent sent a brief reaction on May 15, 2020; the Complainant did not submit a reaction.

4. Factual Background

The Complainant is a well-known skateboarding and streetwear clothing and accessories company and sells its products under the trademark SUPREME around the world, including North America, Europe, and Asia via various retail locations as well as its primary website at “www.supremenewyork.com” (Annex 7 and 8 to the Complaint).

The Complainant has registered several trademarks containing the mark SUPREME, including various United States word marks, e.g., Registration No. 4157110, registered on June 12, 2012; Registration No. 4240456, registered on November 13, 2012; Registration No. 4504231, registered on April 1, 2014; and the International figurative trademark SUPREME (Registration No. IR 1457502), referring to the various US marks, registered November 29, 2018, designating especially for several countries in America, Europe, and Asia; the Complainant moreover applied for a European Union trademark (figurative mark) containing the mark SUPREME (Application No. 016815763), filed on June 7, 2017 (Annex 5 to the Complaint).

The Complainant is the owner of several domain names containing the mark SUPREME, especially <supremenewyork.com>, registered on July 11, 2000; <supreme.biz>, registered on June 5, 2006; <supreme.eu>, registered on March 16, 2008; <supremenewyork.de>, registered on April 19, 2012; and <supremegermany.com>, registered on July 10, 2017 (Annex 6 to the Complaint).

The disputed domain names were registered by the Respondent on September 30, 2017 (Annex 1 to the amended Complaint).

The disputed domain names <supreme-streetwear.com> and <supreme-italy.com> resolved to a website imitating a legitimate SUPREME brand website, including purportedly offering numerous SUPREME brand products, while the disputed domain names <supremeitaly.shop>, <supremestreetwaer.com>, and <supremestreetwear.shop> did not resolve to an active website (Annex 9 to the amended Complaint).

5. Parties’ Contentions

A. Complainant

The Complainant was founded in 1994 and is a famous and well-known skateboarding and streetwear clothing and accessories company primarily catering to skateboarding, hip hop, and youth culture. The Complainant sells its products under the trademark SUPREME around the world, including in North America, Europe, and Asia, via brick and mortar stores, its primary website at “www.supremenewyork.com” (registered on July 11, 2000), and since 2013 via its smartphone app. The products of the Complainant are highly coveted and exclusive.

The SUPREME mark has been used by the Complainant in the United States since at least as early as 1994, and it has been registered in the United States since 2012. The Complainant owns registrations and pending applications for its mark SUPREME in jurisdictions around the world. The Complainant also owns numerous domain names that include the SUPREME mark, e.g., <supreme.eu>, <supreme.biz>.

The disputed domain names are at least confusingly similar to the Complainant’s SUPREME trademarks and the Respondent has no rights or legitimate interests in respect of the domain names. The suffix used in the disputed domain names (e.g., “streetwear” or typos thereof or “Italy” with or without a hyphen) are merely descriptive and therefore not sufficient to prevent a finding of confusing similarity.

The disputed domain names have been registered and used in bad faith since they were merely used for resolving to a website imitating a legitimate website of the Complainant and purportedly offering SUPREME brand products for sale (or did not direct to a webpage); the use of a domain name for illegal activity, including counterfeiting, can never confer rights or legitimate interests on a respondent.

There are also no rights transferred from Supreme Spain, since Supreme Spain has been enjoined from using any SUPREME marks, and the Respondent has not established an actual license between itself and Supreme Spain, even if Supreme Spain did hold any legitimate rights in relevant marks.

B. Respondent

The Respondent did not reply to the Complainant’s contentions within the time limit March 16, 2020. However, on March 24 and 27, 2020, the Respondent sent email communications to the Center claiming that the Respondent has rights and legitimate interests in using the disputed domain names, since the Respondent received “Supreme Goods” from “Supreme Spain” and therefore legitimately sold these goods on its online shop. The Respondent did not put forward any kind of evidence in support of its claims and allegations (it merely provided a copy of the designation of the International Registration No. 1448210 for SUPREME SPAIN).

In reaction to the above-mentioned Panel Order, the Respondent replied in relevant part that “we want to continue using the domains. We have already ended our relationship with Supreme Spain and will no longer sell Supreme Spain items. As already described, our logos were changed before the block, so that there is no longer any risk of confusion”.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove that:

(i) the disputed domain names are 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 disputed domain names; and
(iii) the disputed domain names have been registered and used in bad faith

A. Language of the proceeding

The Panel notes that the Complaint was submitted in English while the Registrar confirmed that the language of the registration agreements was German. Noting the Complainant’s request to proceed in English, the fact that the Respondent did not object and submitted informal email communications in English, and the website at the disputed domain names as previously resolved have been in English, the Panel will issue the decision in English in accordance with paragraph 11(a) of the Rules.

B. Identical or Confusingly Similar

The disputed domain names are confusingly similar to the Complainant’s registered trademark SUPREME since they entirely contain this trademark and only add, respectively, the dictionary term “streetwear” together with a hyphen, the term “italy”, the typo “streetwaer”, the term “streetwear” without a hyphen, and the term “italy” together with a hyphen.

It has long been established under UDRP decisions that where the relevant trademark is recognizable within the disputed domain name the mere addition of other terms whether descriptive or otherwise will not prevent a finding of confusing similarity under the first element of the Policy (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

Finally, it has also long been held that suffixes such as a ccTLD or gTLD cannot typically negate confusing similarity where it otherwise exists, as it does in the present case.

The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (see section 2.1 of the WIPO Overview 3.0 ).

Although the Respondent failed to submit a Response within the time limit, the Respondent put forward allegations in communications from March 24 and 27, 2020 and in reaction to the Panel Order, claiming rights and legitimate interests since it got “Supreme Goods” from “Supreme Spain” and was therefore allowed to sell these goods through his webshop. The Respondent did not put forward any evidence with regard to these allegations.

In contrast to the Respondent’s unsubstantiated allegations, when considering all of the evidence put forward by the Complainant in the amended Complaint (especially with regard to the Annexes presented by the Complainant) and the supplemental filing from April 10, 2020, as well as the Complainant’s contentions that the Respondent has no rights or legitimate interests in the disputed domain names, that the Respondent has no connection or affiliation with the Complainant, and the Respondent has not received any license or consent, express or implied, to use the Complainant’s trademarks SUPREME in a domain name or in any other manner, it is undeniably for this Panel that the conditions set out in paragraph 4(a)(ii) of the Policy have been met by the Complainant.

D. Registered and Used in Bad Faith

As stated in many decisions rendered under the Policy (e.g., Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001) both conditions, registration and used in bad faith, must be demonstrated; consequently, the Complainant must show that:

- the disputed domain names were registered by the Respondent in bad faith, and
- the disputed domain names are being used by the Respondent in bad faith.

The disputed domain names were registered on September 30, 2017; the Complainant has registered trademark rights in the mark SUPREME since 2012 and various domain names containing the mark SUPREME since 2000. Moreover, the Complainant has promoted the SUPREME mark globally, and the SUPREME goods and services are well-publicized in the media and the SUPREME mark has widespread recognition in the United States, Germany, and worldwide especially with regard to skateboarding and streetwear clothing and accessories primarily catering to skateboarding, hip hop, and youth culture.

The Panel is convinced that it is inconceivable that the Respondent has registered the disputed domain names without knowledge of the Complainant’s rights; this is especially supported by the fact that the Respondent used a suffix to the Complainant’s trademark which refers to the Complainant’s main business (“streetwear”) not to mention the content on some of the pages.

These facts lead the Panel to the conclusion that the disputed domain names were registered with full knowledge of the Complainant’s rights and as such in bad faith by the Respondent.

The disputed domain names <supreme-streetwear.com> and <supreme-italy.com> moreover resolved to a website imitating a legitimate SUPREME brand website, including purportedly offering numerous SUPREME brand products for sale; such use of a domain name can never confer rights or legitimate interests on a respondent – it is quite the contrary: the Respondent “free rides” on the reputation and the valuable goodwill of the Complainant’s trademark SUPREME and thus the use of the disputed domain names is suited to divert or mislead potential web users from the website they are actually trying to visit (the Complainant’s site).

Moreover, since the Respondent submitted in (its late) email that it will not sell SUPREME products in the future on its website any more (stating: “We want to continue with our Onlineshop in the Spain Market without Supreme Goods.”), there is no reason to believe there may be a legitimate future active usage with regard to the disputed domain names by the Respondent. Especially noting the above including the pattern of activity by the Respondent, the fact that the disputed domain names <supremeitaly.shop>, <supremestreetwaer.com>, and <supremestreetwear.shop> did not resolve to an active website does not prevent a finding of bad faith since passive holding is also within the concept of bad faith usage in such cases (e.g. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, <telstra.org>; see also section 3.3 of the WIPO Overview 3.0).

On the basis of the above facts, it is for the Panel incontestable that the disputed domain names are also being used in bad faith.

Finally, the Respondent has also failed to present in its (late) email any evidence of any good faith registration and use with regard to the disputed domain names; the Panel therefore finds there is no conceivable plausible reason for good faith registration and use with regard to the disputed domain names.

Taking all these facts and evidence into consideration the Panel finds that the disputed domain names have been registered and used in bad faith 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 <supreme-streetwear.com>, <supremeitaly.shop>, <supremestreetwaer.com>, <supremestreetwear.shop>, and <supreme-italy.com> be transferred to the Complainant.

Peter Burgstaller
Sole Panelist
Date: May 18, 2020