WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

HBI Branded Apparel Enterprises, LLC v. Gueijuan Xu

Case No. D2018-0188

1. The Parties

The Complainant is HBI Branded Apparel Enterprises, LLC of Winston Salem, North Carolina, United States of America (“United States”), represented by CSC Digital Brand Services AB, Sweden.

The Respondent is Gueijuan Xu of Guangdong, China.

2. The Domain Names and Registrar

The disputed domain names <championaustraliaoutlets.com>, <championclearanceshops.com>, <championclothingukoutlets.com>, <championoutletshop.com>, <championsalessportswear.com>, <championukoutlet.com>, <clearancechampionoutlet.com>, <jpchampionclothes.com>, <jpchampionshoes.com>, <saleschampionoutlet.com> and <shopchampionoutlet.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 January 30, 2018. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 31, 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 February 2, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 22, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 23, 2018.

The Center appointed Mihaela Maravela as the sole panelist in this matter on March 5, 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 is a subsidiary of Hanesbrands Inc., a well-known manufacturer and marketer of leading everyday basic apparel brands in the Americas, Europe and Asia, as well as in Australia and South Africa. Under the CHAMPION trademark, the Complainant offers a wide range of products in conjunction with hosiery, clothing, apparel, swimwear, sleepwear, bags and related goods. The Complainant is the owner of <champion.com> which is the 8,171st most popular website in the United States and ranked 23,438 globally.

The Complainant is the exclusive owner of a number of registered trademarks consisting of the word CHAMPION in various jurisdictions throughout the world, including, inter alia, the United States and China, as follows:

- the United States Trade Mark for the word CHAMPION with registration no. 0274178 registered as of August 19, 1930;

- the United States Trade Mark for the word CHAMPION with registration no. 0584362 registered as of January 5, 1954;

- the United States Trade Mark for the word CHAMPION with registration no. 2125303 registered as of December 30, 1997;

- the United States Trade Mark for the word CHAMPION with registration no. 2319994 registered as of February 22, 2000;

- the China Trade Mark for the word CHAMPION with registration no. 18624837 registered as of January 28, 2017;

- the China Trade Mark for the word CHAMPION with registration no. 1862840 registered as of January 28, 2017.

The Respondent registered the disputed domain names as follows:

<championaustraliaoutlets.com>, registered on December 1, 2017;

<championclearanceshops.com>, registered on September 2, 2017;

<championclothingukoutlets.com>, registered on December 1, 2017;

<championoutletshop.com>, registered on May 9, 2017;

<championsalessportswear.com>, registered on December 1, 2017;

<championukoutlet.com>, registered on June 16, 2017;

<clearancechampionoutlet.com>, registered on January 10, 2018;

<jpchampionclothes.com>, registered on December 10, 2017;

<saleschampionoutlet.com>, registered on December 8, 2017;

<jpchampionshoes.com>, registered on December 10, 2017;

<shopchampionoutlet.com>, registered on June 16, 2017.

All the disputed domain names except for <jpchampionshoes.com> resolve to an active website that is used for selling apparel under the CHAMPION trademark. The disputed domain name <jpchampionshoes.com> resolves to an inactive website.

A cease-and-desist letter has been sent in what concerns the registration of the disputed domain names <championclearanceshops.com>, <championoutletshop.com>, <championukoutlet.com>, and <shopchampionoutlet.com>, but no response was received from the Respondent.

The Respondent was involved in four other UDRP proceedings, which were all decided in favor of the respective complainants: Tumi Inc. v. Gueijuan Xu, WIPO Case No. D2017-1773; PRADA S.A. v. Artemis Davis / Mo Zeghloul / Xinqian Rhys / Xiayu Zhi / Gueijuan Xu, WIPO Case No. D2017-2069; Cube Limited v. Gueijuan Xu, WIPO Case No. D2017-2514; Philipp Plein v. Gueijuan Xu, WIPO Case No. D2017-2535.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain names are confusingly similar to the Complainant’s CHAMPION trademarks since the Respondent added to the disputed domain names generic, descriptive terms such as “shop”, “shops”, “outlet”, “outlets”, “clothing”, “clothes”, “sales”, “sportswear”, “clearance” and “shoes”. The Complainant further argues that the fact that such terms are closely linked and associated with the Complainant’s brand and trademark only serves to underscore and increase the confusing similarity between the disputed domain names and the Complainant’s trademark. The Complainant contends that a number of the disputed domain names incorporate the Complainant’s CHAMPION trademark in its entirety while adding the geographically descriptive terms “uk”, “australia”, “jp” to such trademark, thus rendering the disputed domain names confusingly similar to the trademark. In addition, the Complainant argues that the Respondent’s use of the disputed domain names to advertise the sale of CHAMPION products and imitate the Complainant’s website suggests that the Respondent intended the disputed domain names to be confusingly similar to the Complainant’s trademark as a means of furthering consumer confusion.

The Complainant also argues that it has not given the Respondent permission to use the Complainant’s trademarks in any manner, including in domain names and that the Respondent is not commonly known by the disputed domain names which evidences a lack of rights or legitimate interests. Furthermore, the Complainant argues that it has not licensed, authorized or permitted the Respondent to register domain names incorporating the Complainant’s trademarks and there is no evidence, including the WhoIs record for the disputed domain names, to suggest that the Respondent is commonly known by the disputed domain names hence the Respondent cannot be regarded as having acquired rights to or legitimate interests in the disputed domain names. The Complainant further contends that most of the disputed domain names redirect Internet users to websites that copy and attempt to duplicate the Complainant’s official website by copying the design, color scheme, pictures and text found on the Complainant’s website. The Respondent’s attempt to pass off the disputed domain names as being affiliated with the Complainant is in itself evidence of the fact that the Respondent does not have rights and legitimate interests in the disputed domain names.

The Complainant also argues that by registering the disputed domain names that incorporate the Complainant’s trademark combined with descriptive and geographic terms, the Respondent has demonstrated a knowledge of and familiarity with the Complainant’s trademark and business. According to the Complainant, by copying the Complainant’s logo on its website, the Respondent further indicates knowledge of the CHAMPION trademark and is attempting to cause consumer confusion and to profit from such confusion. The Respondent is using the fame of the Complainant’s trademarks to improperly increase traffic to the website listed at the disputed domain names for the Respondent’s own commercial gain. The Respondent’s use of the disputed domain names constitutes a disruption of the Complainant’s business and qualifies as bad faith registration and use. Two of the disputed domain names resolve to an inactive website and are not being used; passively holding of a domain name represents bad faith use where in cases like this the disputed domain name is confusingly similar to the Complainant’s trademarks and the Respondent has made no use of the disputed domain name. The Respondent has registered numerous domain names incorporating the Complainant’s CHAMPION trademark in an attempt to prevent the Complainant from using its trademark in cyberspace.

B. Respondent

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

6. Discussion and Findings

Noting the fact that the Respondent has not filed a Response, the Panel shall consider the issues present in the case based on the statements and documents submitted by the Complainant.

“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”, paragraph 15(a) of the Rules.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following elements:

(i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) that the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Complainant must establish that it has a trademark or service mark and that the disputed domain names are identical or confusingly similar to that trademark or service mark for the Complainant to succeed.

Here, the Complainant proved rights over the CHAMPION trademark.

As regards the question of identity or confusing similarity for the purpose of the Policy, it requires a comparison of the disputed domain names to the trademarks in which the Complainant holds rights.

Numerous UDRP decisions have recognized that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark. (See, Aldermore Bank Plc v. Hildegard Gruener, WIPO Case No. D2016-1617).

Here the disputed domain names incorporate the Complainant’s trademark CHAMPION in addition to descriptive terms, such as “shop”, “shops”, “outlet”, “outlets”, “clothing”, “clothes”, “sales”, “sportswear”, “clearance”, and “shoes”.

The fact that a domain name wholly incorporates a complainant’s trademark may be sufficient to establish identity or confusing similarity for the purpose of the Policy, despite the addition of other words to such marks. See, Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. The addition of a descriptive term does not serve to distinguish the domain name from the trademark. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

In addition, a number of the disputed domain names comprise the geographically descriptive terms “australia”, “uk” and “jp”. As held by previous UDRP panels in similar cases, “The mere addition of a geographically descriptive term to a mark does not negate the confusing similarity between the mark and the domain name.” See, e.g., Mastercard International Incorporated v. MasterCard Brasil, WIPO Case No. D2009-1691; Red Bull GmbH v. Daniel Cobb, CobbCorp Pty Ltd, WIPO Case No. D2018-0021; Dyson Research Limited v. Jia Qiong, WIPO Case No. D2013-2124; Nokia Corporation v. Nick Holmes t/a EType Media, WIPO Case No. D2002-0001.

It is well accepted by UDRP panels that a generic Top-Level Domain (“gTLD”), such as “.com”, is typically ignored when assessing whether a domain name is identical or confusing similar to a trademark.

This Panel concludes that the disputed domain names are confusingly similar to the trademarks of the Complainant and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate a respondent’s rights or legitimate interests in a disputed domain name:

(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the disputed 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 disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview 3.0, which states: “[…] 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.”

In the present case the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant has established that it holds rights over the trademark CHAMPION and claims that the Respondent is not sponsored by or affiliated with the Complainant in any way and that the Complainant has not given the Respondent permission to use the Complainant’s trademarks in any manner, including in domain names. There is no evidence indicating that the Respondent is commonly known by the disputed domain names or the name “champion”. See for a similar finding ALDI GmbH & Co. KG v. zhou xiaolei, WIPO Case No. D2014-0957.

From the evidence put forward by the Complainant, most of the websites to which the disputed domain names resolve redirect Internet users to websites that copy the Complainant’s official website and are used for selling products under the Complainant’s CHAMPION trademark. As held by previous panels in similar situations, this is not a bona fide offering of goods and services. See, Cube Limited v. Gueijuan Xu, WIPO Case No. D2017-2514. The Respondent has used the Complainant’s logo and trademark on the websites to which the disputed domain names resolve to imitate the official website of the Complainant. This represents an act of passing off which cannot be bona fide use. See, Philipp Plein v. Gueijuan Xu, WIPO Case No. D2017-2535.

Moreover, one of the disputed domain names does not resolve to an active website.

By not submitting a Response, the Respondent has failed to invoke any circumstances which could demonstrate any rights or legitimate interests in the disputed domain names. See for a similar finding Cash Converters Pty Ltd v. Mirriam Musonda-salati, WIPO Case No. D2014-1839.

With the evidence on file, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

To fulfill the third requirement of the Policy, the Complainant must prove that the disputed domain names were registered and are being used in bad faith.

According to the unrebutted assertions of the Complainant, its CHAMPION trademark is widely used in commerce since 1918, well before the registration of the disputed domain names between May 2017and January 2018. The disputed domain names incorporate the Complainant’s trademark and descriptive words and/or geographically descriptive terms in addition to the gTLD “.com”. The websites to which most of the disputed domain names resolve include the Complainant’s logo and imitate the Complainant’s official website. Under these circumstances, it is likely that the Respondent was aware of the Complainant’s trademark at the registration date of the disputed domain names. See for similar finding Philipp Plein v. Gueijuan Xu, supra.

As regards the use of the disputed domain names, paragraph 4(b)(iv) of the Policy has direct bearing to the present case:

“(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the said website location or of a product or service on that website location.”

The conduct of the Respondent falls under the above provisions. The disputed domain names are confusingly similar to the CHAMPION trademark of the Complainant. The websites to which most of the disputed domain name resolve redirect users to websites similar to the official website of the Complainant. On the websites to which the disputed domain names resolve products under CHAMPION trademark are sold. The Internet users will likely be confused as to the source of the products sold on such websites. (See PRADA S.A. v. Artemis Davis / Mo Zeghloul / Xinqian Rhys / Xiayu Zhi / Gueijuan Xu, supra). Under these circumstances, the Panel agrees with findings of previous UDRP panels that “The Respondent’s bad faith registration and use of the disputed domain name is reflected in the Respondent’s intention to mislead Internet users into believing that the Respondent is the Complainant, or that the Respondent is acting for the Complainant. The Respondent’s bad faith is particularly evident in creating a website with the same look and feel as the Complainant’s website devoted to online banking, ‘www.migrosbank.com’. In this regard, the Panel finds, at the very least, that the Respondent intends to mislead Internet users into accessing its website in the false belief that they were accessing Complainant’s website, and that it did so by registering and using the disputed domain name, which is confusingly similar to Complainant’s trademark, and including Complainant’s trademark MIGROS in the website to which the disputed domain name resolved.” See, Migros-Genossenschafts-Bund v. James Okogb, Micrio, WIPO Case No. D2017-0647; Migros-Genossenschafts-Bund v. Patrizio De Bortoli, MediaEtCetera GmbH, WIPO Case No. D2017-0980.

With respect to the disputed domain name <jpchampionshoes.com>, it does not feature any active content at the moment. However, there is no evidence in the record to indicate that the Respondent has used this disputed domain name or intends to use this disputed domain name in connection with a bona fide offering of goods and services. As established in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the passive holding of a domain name following its bad faith registration can satisfy the requirements of paragraph 4(a)(iii) of the Policy if the circumstances of the respondent’s behavior are indicative of bad faith.

Other factors which were considered by the Panel as indicative of bad faith registration and use of the above disputed domain name are:

- The Respondent’s lack of response to the Complaint. See, Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications, WIPO Case No. D2001-0210;

- The Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name as per paragraph 4(b) of the Policy;

- Any use of the disputed domain name would lead the public to the conclusion that it is, together with its connecting website, associated with the Complainant;

- Also, as noted above, the Panel has concluded that the Respondent had knowledge of the Complainant’s trademark at the time of registration of the disputed domain name. The Respondent provided no explanations for which it registered the disputed domain name.

Therefore, the Panel finds that the Respondent also registered and is using the disputed domain name <jpchampionshoes.com> in bad faith.

In addition, paragraph 4(b)(ii) of the Policy, stating that “the respondent has 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” is relevant in this case. As described in section 4 above, the Respondent was involved in at least four other UDRP proceedings where similar factual situation determined the panels to decide in favor of the complainants. Given the factual situation in this case, as described above, the Panel considers that the circumstance listed under paragraph 4(b)(ii) of the Policy is applicable in this proceeding. See, Philipp Plein v. Gueijuan Xu, supra.

The Panel concludes that the disputed domain names were registered and used in bad faith.

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, <championaustraliaoutlets.com>, <championclearanceshops.com>, <championclothingukoutlets.com>, <championoutletshop.com>, <championsalessportswear.com>, <championukoutlet.com>, <clearancechampionoutlet.com>, <jpchampionclothes.com>, <jpchampionshoes.com>, <saleschampionoutlet.com>, <shopchampionoutlet.com> be transferred to the Complainant.

Mihaela Maravela
Sole Panelist
Date: March 19, 2018