WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BCBG IP Holdings LP v. Marlin Fouse, Rodney Gaumitz, Susan Froedtert, Charles Warrick

Case No. D2018-1661

1. The Parties

The Complainant is BCBG IP Holdings LP of New York, New York, United States of America ("United States"), represented by Tucker & Latifi, LLP, United States.

The Respondents are Marlin Fouse of Morris, Michigan, United States, represented by Calandra Lawrence, United States; Rodney Gaumitz of Warwick, Rhode Island, United States; Susan Froedtert of Butler, Pennsylvania, United States; Charles Warrick of Louisville, Kentucky, United States.

2. The Domain Names and Registrars

The disputed domain names <bcbgmaxazriabestonline.com>, <bcbgmaxazriacheap.com>, <bcbgmaxazriasale.com>, and <bcbgmaxazriastore.com> (the "Domain Names") 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 July 23, 2018. On July 24, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On July 25, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 1, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed a first amended Complaint on August 8, 2018. The Complainant filed a second amended Complaint on August 9, 2018.

The Center verified that the Complaint together with the first and second amended Complaints 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 14, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 3, 2018. The Center received a communication from a third party on August 23, 2018. The Response was filed with the Center on September 3, 2018.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on September 13, 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 limited partnership organized under the law of the United States state of Delaware and headquartered in New York City. The Complainant designs and markets clothing, fashion accessories, and lifestyle products that are sold online and through more than 250 retail shops in the United States and Canada. The Complainant operates a website at "www.bcbg.com" (the "Complainant's website").

According to the Complaint and the Wikipedia article on Mr. Azria, the Tunisian-born designer Max Azria, and his wife Lubov Azria launched the BCBG and BCBG Max Azria fashion brands in 1989 after moving to Los Angeles from Paris and opening women's apparel boutiques in the United States. "BCBG" is an abbreviation of the Parisian slang phrase, "bon chic, bon genre" signifying "good style, good attitude". The Complainant is the successor to the BCBG and BCBG MAX AZRIA trademark registrations in 114 countries (the "BCBG marks"), including these:

The four Domain Names were all registered over a period of two months in 2018, each in the name of a different individual, as summarized below from information supplied by the Registrar:

The Center received an email dated August 23, 2018 from a Ms. Lawrence, identifying herself as the mother of the Respondent M. Fouse, who is listed as the registrant of the first Domain Name registered, <bcbgmaxazriabestonline.com>. Ms. Lawrence stated that M. Fouse is 18 years old and apparently the victim of identity theft, asserting that he has no association with any of the Domain Names. The other three Respondents did not reply to communications from the Center. The Panel notes that their names all appear in public directories that are available online in the United States, with postal addresses consistent with those given in the Registrar's WhoIs contact details. However, the administrative and technical contacts for all four Domain Names are in Guandong, China; indeed, the same individual in China is named as the contact for three of the Domain Names.

While one of the named Respondents claims no interest in the Domain Names, the others have not replied, possibly because they also have no interest in the Domain Names. It is unlikely that four widely separated individuals in the United States decided to register highly similar domain names within a few weeks of each other, all using the same registrar and all using technical support personnel in Guandong Province, China. The probability, rather, is that the person or persons who actually registered and paid for the Domain Names (hereafter referred to as the "Respondent") did so using assumed names.

The Complaint attaches screenshots of the websites to which the Domain Names resolved in June 2018. These websites (the "Respondent's websites") are all headed "BCBGMAXAZRIA" and mimic the Complainant's website. The tagline, "Welcome to the BCBG MAXAZRIA Outlet Store!" features at the top of the home page. The Respondent's websites appear to copy images from the Complainant's website and offer to sell BCBG MAX AZRIA products, but the sales and contact information are directed to another company. For <bcbgmaxazriabestonline.com>, <bcbgmaxazriasale.com>, and <bcbgmaxazriacheap.com>, the Respondent's websites refer to "Guru Denim, Inc" at an address in Las Vegas, Nevada, United States. For <bcbgmaxazriastore.com>, the Respondent's website refers to "Guru Denim, Inc" at an address in Brooklyn, New York, United States. Neither are locations of the Complainant's retailers. At the time of this Decision, the Respondent's websites are substantially the same as these screenshots.

5. Parties' Contentions

A. Complainant

The Complainant contends that the Domain Names are all confusingly similar to its BCBG marks, in which the Respondent has no rights or legitimate interests. The Complainant argues that the Respondent has created counterfeit websites to misdirect consumers for commercial gain.

B. Respondent

Only one Response was submitted, by a woman identifying herself as the mother of the Respondent M. Fouse. The Response states that M. Fouse is not associated with any of the Domain Names and consents to their transfer to the Complainant. The Response does not contest any of the Complainant's contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:

(i) the disputed 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 in respect of the disputed domain name; and

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

Under paragraph 15(a) of the Rules, "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".

A. Consolidation and Multiple Respondents

The four Domain Names were registered in the names of four different individuals in the United States, but as described above there are strong reasons to believe that the Respondent used assumed names and that the actual registrants are identical or related. The Domain Names are very similar to each other and were used for nearly identical websites emulating the Complainant's website. There were all registered over a period of two months using the same Registrar. They all used administrative and technical contacts in Guandong Province, China; three of the four used the same person for those contacts.

The Panel finds that (a) the Domain Names are likely under common control, (b) consolidation would be equitable to all parties, and (c) consolidation is in the interest of procedural efficiency. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 4.11.2.

B. Identical or Confusingly Similar

The Complainant indisputably holds registered BCBG and BCBG MAX AZRIA trademarks. The Domain Names all incorporate those highly distinctive marks in their entirety. The Domain Names do not avoid confusion by adding the generic words "best online", "sale", "store", or "cheap". As in most cases, the generic Top-Level Domain ("gTLD") ".com" is not a distinguishing feature. See WIPO Overview 3.0, section 1.11.

The first element of a UDRP complaint "functions primarily as a standing requirement" and entails "a straightforward comparison between the complainant's trademark and the disputed domain name". See WIPO Overview 3.0, section 1.7. The Panel concludes under this test that the Domain Name is confusingly similar for purposes of the first element of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the 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 Domain Name in connection with a bona fide offering of goods or services; or

(ii) that 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.

Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case, as the Complainant has here as set out above, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. The Respondent has not done so in this proceeding, and the Panel finds that the second element of the Complaint has been established.

C. Registered and Used in Bad Faith

The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that "shall be evidence of the registration and use of a domain name in bad faith", including the following (in which "you" refers to the registrant of the domain name):

"(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location".

The Complainant's registered BCBG and BCBG MAX AZRIA marks are well established and highly distinctive. The Respondent clearly targeted the marks, incorporating them entirely in the Domain Names and mimicking the Complainant's website. Even if the Respondent were offering the Complainant's products as an unauthorized reseller, it would still have to meet certain standards (of fair nominative use) to establish its legitimate interests (and consequently its good faith) in using the trademark of another in domain names. See WIPO Overview 3.0, section 2.8. The Respondent has not come forward to do so here. To the contrary, it appears likely that the Respondent has hidden behind assumed identities, as discussed above, and this is another indication of bad faith. It is unknown whether the products offered on the Respondent's websites are themselves counterfeit, as the Complainant has reason to suspect, or whether the Respondent even fulfills orders placed through the websites. Regardless, the Domain Names and websites impersonate the Complainant, and the Respondent solicits purchases from Internet users. Thus, the Domain Names plainly have been registered and used in a deliberate and illegitimate attempt to exploit the Complainant's trademark for commercial gain.

The Panel finds bad faith, satisfying the third element of the Complaint.

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 Domain Names <bcbgmaxazriabestonline.com>, <bcbgmaxazriacheap.com>, <bcbgmaxazriasale.com>, and <bcbgmaxazriastore.com> be transferred to the Complainant.

W. Scott Blackmer
Sole Panelist
Date: September 27, 2018