Complainant is JR Apparel World LLC of Syosset, New York, United States of America ("U.S."), represented by Ditthavong & Steiner, P.C., U.S.
Respondent is Perfect Privacy, LLC of Jacksonville, Florida, U.S. / West Village LLC of New York, New York, U.S.
The Disputed Domain Name <membersonly.com> is registered with Network Solutions, LLC (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 11, 2017. On January 12, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 12, 2017, 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 Complainant on January 13, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on January 17, 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 Respondent of the Complaint, and the proceedings commenced on January 20, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 9, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on February 10, 2017.
The Center appointed Richard W. Page as the sole panelist in this matter on February 20, 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.
In 1975, Complainant's predecessor, International Trends, LTD., adopted and started using the MEMBERS ONLY Mark in connection with a wide variety of outerwear and clothing and obtained U.S. Registration No. 1086489 reciting "men's suits, sports jackets, cloth jackets, leather jackets, cloth coats, leather coats, slacks, knit shirts, sport shirts, dress shirts, sweaters and ties." Through International Trends, LTD's and its successors' substantial advertising, marketing, and sales of goods bearing the MEMBERS ONLY Mark, particularly the "Racer Jacket," the MEMBERS ONLY Mark obtained tremendous popularity and became widely recognized as an iconic trademark. U.S. Registration No. 1086489 of the MEMBERS ONLY Mark is incontestable.
In 2007, Complainant's predecessor, Members Only Licensing Group LLC acquired the entire interest in the MEMBERS ONLY Mark and the goodwill associated with it, including U.S. Registration No. 1086489. In 2010, Members Only Licensing Group LLC expanded the MEMBERS ONLY product line by adopting and using the MEMBERS ONLY Mark in connection with additional items of clothing and obtained U.S. Registration No. 3915373 reciting "[c]lothing, namely, men's clothing, namely sweatpants, sweatshirts, belts, coats, gloves, golf apparel, namely, golf shirts, golf shorts, golf trousers, hats, jeans, jogging suits, sweaters, swimwear, ties, trousers, underwear, vests; ladies' clothing, namely, sweatpants, sweatshirts, belts, coats, dresses, blouses, skirts, gloves, golf apparel, namely golf shirts, golf shorts, golf skirts and golf trousers, shorts, jeans, jogging suits, khakis, knit tops, leggings, lingerie, jackets blazers, scarves, shirts, shoes, shorts, sleepwear, socks, suits, sweaters, swimwear, slacks, trousers, vests; children's clothing namely, sweatpants, sweatshirts, belts, coats, dresses, blouses, skirts, gloves, golf apparel, namely, golf shirts, golf shorts, golf trousers and golf skirts, hats, jeans, knit tops, leggings, jackets, blazers, scarves, shirts, shoes, shorts, sleepwear, socks, suits, sweaters, swimwear, ties, trousers, slacks, underwear and vests."
In 2012, Complainant acquired through assignment Members Only Licensing Group LLC's entire interest in U.S. Registration Nos. 1086489 and 391537 together with the goodwill of the business symbolized by the MEMBERS ONLY Mark.
Complainant has since expended considerable time and money to expand the brand from its core line of products into a full-lifestyle brand.
The Disputed Domain Name was registered on March 14, 1997, and resolves to a webpage containing pay-per-click links to various websites offering alleged Complainant's products for sale.
Complainant contends that the Disputed Domain Name <membersonly.com> and the MEMBERS ONLY Mark are identical or confusingly similar, because the Disputed Domain Name contains the entirety of the MEMBERS ONLY Mark with only the addition of the generic Top-Level Domain ("gTLD") ".com". Complainant further contends that the addition of the ".com" gTLD is non-distinctive.
Complainant alleges that Respondent acquired the Disputed Domain Name sometime after 2006. Complainant further alleges that registration of a domain name before Complainant acquired its trademark rights does not prevent a finding of identity or confusing similarity under the Policy. See paragraph 1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"). In this case, as a result of its distinctive nature and thus inherent strength; widespread advertising, publicity, promotion and sales; and longstanding and extensive use and recognition, the MEMBERS ONLY Mark had become well and favorably known as an indicator of source and had become famous well before Respondent's registration of the Disputed Domain Name.
Complainant asserts that Respondent has no rights or legitimate interests in the Dispute Domain Name because Complainant has not authorized, licensed or otherwise granted Respondent any permission to use the Disputed Domain Name. The website to which the Disputed Domain Name resolves features a number of hyperlinks to various online website retailers allegedly offering for sale authentic merchandise bearing the MEMBERS ONLY Mark. One of those hyperlinks "www.target.com" actually pertains to the "members only jackey" and the musical album "Bobby Bland Members only." Respondent has the hope and the expectation that Internet users looking for the brand MEMBERS ONLY will be directed to the website corresponding to the Disputed Domain Name and the various online website retailers identified therein. Such activity does not provide a legitimate interest in the Disputed Domain Name under the Policy. See William Grant & Sons Ltd. V. Dave Chandler, WIPO Case No. D2016-0476 (stating "because the Disputed Domain Name resolved to a web page that contains sponsored pay-per–[click] third party links, the Panel concludes that the Respondent is not using the Disputed Domain Name for a legitimate or bona fide purpose.")
Complainant's counsel sent cease-and-desist letters to Web.com and Perfect Privacy, LLC in 2013 and 2016 notifying Respondent of Complainant's objections regarding the Disputed Domain Name. Despite Complainant's objections, the website corresponding to the Disputed Domain Name remains active.
Complainant alleges that Respondent has made no bona fide sales of good or services, has not been commonly known by "Members Only," and is not making a legitimate noncommercial use of the Disputed Domain Name under paragraph 4(c) of the Policy.
Complainant avers that Respondent registered and is using the Disputed Domain Name to attract for commercial gain, Internet users to Respondent's website by creating a likelihood of confusion with the MEMBERS ONLY Mark. Long after the adoption and use of the MEMBERS ONLY Mark and without Complainant's authorization or approval, Respondent has and is continuing to promote and offer for sale alleged MEMBERS ONLY merchandise through the website to which the Disputed Domain Name resolves.
Respondent did not reply to Complainant's contentions.
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable."
Respondent is not obliged to participate in a domain name dispute proceeding, but if it fails to do so, asserted facts that are not unreasonable will be taken as true and Respondent will be subject to the inferences that flow naturally from the information provided by Complainant. See Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441.
Even though Respondent has failed to file a response or to contest Complainant's assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met.
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to the MEMBERS ONLY Mark in which Complainant has rights; and,
ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and,
iii) that the Disputed Domain name has been registered and is being used in bad faith.
Complainant contends that it has U.S. registrations of the MEMBERS ONLY Mark, that its trademark registrations are valid and subsisting, and serve as prima facie evidence of its ownership and the validity of the MEMBERS ONLY Mark. Complainant further alleges that its registrations are incontestable and conclusive evidence of its ownership of the MEMBERS ONLY Mark and of its exclusive right to use the MEMBERS ONLY Mark in connection with the stated goods.
Prior UDRP decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption. See, EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047. Respondent has not challenged these contentions.
Therefore, the Panel finds that Complainant has enforceable rights in the MEMBERS ONLY Mark for purposes of this proceeding.
Complainant further contends that the Disputed Domain Name is identical with and confusingly similar to the MEMBERS ONLY Mark pursuant to the Policy paragraph 4(a)(i).
Numerous UDRP decisions have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark. Complainant argues that the entirety of MEMBERS ONLY Mark is incorporated into the Disputed Domain Name. Complainant further argues that when a disputed domain name incorporates an entire trademark with only the addition of the gTLD ".com," it is still confusingly similar to the trademark as the addition ".com" does not eliminate the likelihood of confusion. See, NameSecure L.L.C.F. Hoffmann-LaRoche AG v. P Martin, WIPO Case No. D2009-0323; Dixons Group Plc. v. Mr. Abu Abdullaah, WIPO Case No. D2001-0843; V&S Vin & Sprit AB v. Ooar Supplies, WIPO Case No. D2004-0962; Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227; Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206; SoftCom Technology Consulting Inc. v. Olariu Romeo/Orv Fin Group S.L., WIPO Case No. D2008-0792.
The Panel finds that the entirety of the MEMBERS ONLY Mark is incorporated into the Disputed Domain Name and that the addition of the gTLD ".com" is non-distinctive. Therefore, the Panel finds that the Disputed Domain Name is confusingly similar to the MEMBERS ONLY Mark pursuant to paragraph 4(a)(i) of the Policy.
Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy.
Paragraph 2.1 of the WIPO Overview 2.0 states that once Complainant makes a prima facie case in respect of the lack of rights or legitimate interests of Respondent, Respondent carries the burden of demonstrating it has rights or legitimate interests in the Disputed Domain Name. Where Respondent fails to do so, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Policy paragraph 4(c) allows three nonexclusive methods for the Panel to conclude that Respondent has rights or legitimate interests in the Disputed Domain Name:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Disputed Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the MEMBERS ONLY Mark.
Complainant has alleged that the website to which the Disputed Domain Name resolves features a number of hyperlinks to various online website retailers allegedly offering for sale authentic merchandise bearing the MEMBERS ONLY Mark. Complainant further alleges that Respondent has the hope and the expectation that Internet users looking for the brand MEMBERS ONLY will be directed to the website corresponding to the Disputed Domain Name and the various online website retailers identified therein. Such activity does not provide a legitimate interest in the Disputed Domain Name under the Policy. See William Grant & Sons Ltd. V. Dave Chandler, supra (stating "because the Disputed Domain Name resolved to a web page that contains sponsored pay-per–[click] third party links, the Panel concludes that the Respondent is not using the Disputed Domain Name for a legitimate or bona fide purpose.")
Complainant asserts that Respondent has made no bona fide sales of goods or services, has not been commonly known by "Members Only," and is not making a legitimate noncommercial use of the Disputed Domain Name under paragraph 4(c) of the Policy.
The Panel finds that Complainant has made a prima facie showing under paragraph (c) of the Policy, which has not been refuted by Respondent.
Therefore, the Panel finds that Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy.
Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of the Policy, paragraph 4(a)(iii).
The Policy, paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of the Disputed Domain Name:
(i) circumstances indicating that you [Respondent] have registered or you have acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to Complainant who is the owner of the MEMBERS ONLY Mark or to a competitor of Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Disputed Domain Name; or
(ii) you [Respondent] have registered the Disputed Domain Name in order to prevent Complainant as owner of the MEMBERS ONLY Mark from reflecting the MEMBERS ONLY Mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you [Respondent] have registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Disputed Domain Name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the MEMBERS ONLY Mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product.
Complainant avers that Respondent registered and is using the Disputed Domain Name to attract, for commercial gain, Internet users to Respondent's website by creating a likelihood of confusion with the MEMBERS ONLY Mark. Long after the adoption and use of the MEMBERS ONLY Mark by the Complainant and its predecessors and without Complainant's authorization or approval, Respondent has and is continuing to promote and offer for sale alleged MEMBERS ONLY merchandise through the website to which the Disputed Domain Name resolves.
Respondent has not contested these averments.
Based upon this evidence, the Panel finds that Complainant has shown sufficient facts to support a finding that Complainant has demonstrated the existence of the criteria in the Policy, paragraph 4(b)(iv) of the Policy and that Respondent registered and used the Disputed Domain Name in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
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 <membersonly.com> be transferred to Complainant.
Richard W. Page
Sole Panelist
Date: February 22, 2017