WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

PEI Licensing, LLC v. Kira Rippin

Case No. D2020-2082

1. The Parties

The Complainant is PEI Licensing, LLC, United States of America (“United States”), represented by Winterfeldt IP Group PLLC, United States.

The Respondent is Kira Rippin, United States.

2. The Domain Name and Registrar

The disputed domain name <perryellis.store> (the “Disputed Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 5, 2020. On August 6, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 6, 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 August 7, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 11, 2020.

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 Respondent of the Complaint, and the proceedings commenced on August 13, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 2, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 3, 2020.

The Center appointed Lynda M. Braun as the sole panelist in this matter on September 15, 2020. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant has been a leading designer, distributor and licensor of a broad line of high-quality men’s and women’s apparel, accessories, and fragrances for over 52 years. The Complainant’s goods are available through several major levels of retail distribution. The Complainant owns a portfolio of nationally and internationally recognized brands, including Perry Ellis, and licenses its proprietary brands to third parties in over 50 countries.

The Complainant owns registrations in the United States, where the Respondent is located, and worldwide, for the PERRY ELLIS trademark, which include, but are not limited to, the following:

- PERRY ELLIS, United States Trademark Registration No. 2,940,239, registered on April 12, 2005, in international class 25;
- PERRY ELLIS, United States Trademark Registration No. 2,976,901, registered on July 26, 2005, in international class 25;
- PERRY ELLIS, United States Trademark Registration No. 4,129,012, registered on April 17, 2012, in international class 25; and
- PERRY ELLIS, United States Trademark Registration No. 3,328,928, registered on November 6, 2007, in international class 27.

The above trademarks will hereinafter be referred to collectively as the “PERRY ELLIS Mark”.

The Complainant owns the domain name <perryellis.com> and operates its official website to which the domain name resolves at “www.perryellis.com”. The website has been used and associated with the Complainant’s business since September 24, 1998, and is accessible to Internet users in the United States and worldwide. The Complainant has promoted the PERRY ELLIS Mark globally and enjoys widespread recognition in the United States and worldwide.

The Disputed Domain Name was registered on June 14, 2020, well after the PERRY ELLIS Mark was first used and registered by the Complainant in the United States. The website to which the Disputed Domain Name resolves not only impersonates the Complainant’s official website but is also used as part of a phishing scheme to defraud Internet users who believe they are purchasing genuine products from the Complainant’s official website. In addition, as part of the scheme, the Respondent collects sensitive personal and financial information from the purchasers.

5. Parties’ Contentions

A. Complainant

The following are the Complainant’s contentions:

- the Disputed Domain Name is confusingly similar to the Complainant’s trademark;
- the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
- the Disputed Domain Name was registered and is being used in bad faith.

The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.

B. Respondent

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

6. Discussion and Findings

In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraphs 4(a)(i)-(iii):

(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) the Disputed Domain Name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Name is confusingly similar to the PERRY ELLIS Mark.

It is uncontroverted that the Complainant has established rights in the PERRY ELLIS Mark based on its years of use as well as its registered trademarks for the PERRY ELLIS Mark in the United States and other jurisdictions worldwide. The general rule is that “registration of a mark is primafacie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. See CWI, Inc. v. Domain Administrator c/o Dynadot, WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has rights in the PERRY ELLIS Mark.

The Disputed Domain Name consists of the entirety of the PERRY ELLIS Mark followed by the generic Top‑Level Domain (“gTLD”) “.store”. It is well established that a domain name that wholly incorporates a trademark may be deemed confusingly similar to that trademark for purposes of the Policy. When a domain name incorporates the entirety of a trademark, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing (see the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7).

Further, the addition of a gTLD such as “.store” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See, e.g., Groupon, Inc. v. Whoisguard Protected, Whoisguard, Inc. / Vashti Scalise, WIPO Case No. D2016-2087. Thus, the Panel concludes that the Disputed Domain Name is confusingly similar to the Complainant’s PERRY ELLIS Mark.

Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.

B. Rights or Legitimate Interests

Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence that demonstrates rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.

In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case. Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its PERRY ELLIS Mark. Nor does the Complainant have any type of business relationship with the Respondent. There is also no evidence that the Respondent is commonly known by the Disputed Domain Name or by any name similar to it.

Furthermore, the Respondent is using the Disputed Domain Name solely for the purpose of perpetrating a fraudulent scheme on unwitting Internet users. “Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.” WIPO Overview 3.0, section 2.13.1. Given the phishing scheme the Respondent operated through the Disputed Domain Name’s resolving website, the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name, but rather is using the Disputed Domain Name for commercial gain with the intent to mislead by defrauding the Complainant’s consumers and collecting their personal and financial information. As such, the Panel determines that the Respondent does not have rights or legitimate interests in the Disputed Domain Name.

Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.

C. Registered and Used in Bad Faith

The Panel finds that based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.

As demonstrated above, the Respondent used the Disputed Domain Name to resolve to a website that impersonated the Complainant’s official website and perpetrate a fraudulent scheme, a strong indication of bad faith. The Respondent’s fraudulent scheme intended to induce the Complainant’s customers into providing sensitive personal and financial information by making them believe that they were purchasing genuine products from the Complainant’s legitimate website evidences a clear intent to disrupt the Complainant’s business, deceive individuals, and trade off the Complainant’s goodwill by creating an unauthorized association between the Respondent and the Complainant’s PERRY ELLIS Mark. See Banco Bradesco S.A. v. Fernando Camacho Bohm, WIPO Case No. D2010-1552. Such conduct is emblematic of the Respondent’s bad faith registration and use of the Disputed Domain Name. Seealso WIPO Overview 3.0, section 3.1.4, “Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith”.

Moreover, the registration of a domain name that is confusingly similar to a trademark by an entity that has no relationship to that mark and impersonates the Complainant’s official website is additional evidence of bad faith.

Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant.

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 <perryellis.store> be transferred to the Complainant.

Lynda M. Braun
Sole Panelist
Date: September 28, 2020