WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fruit Of The Loom, Inc. v. Henrik Bach-Jensen, Supr Group
Case No. D2021-0016
1. The Parties
The Complainant is Fruit Of The Loom, Inc., United States of America (“United States”), represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Henrik Bach-Jensen, Supr Group, Denmark.
2. The Domain Name and Registrar
The disputed domain name <fruitoftheloom.store> is 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 5, 2021. On January 5, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 6, 2021, 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 January 7, 2021, 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 January 11, 2021.
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 January 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 31, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 1, 2021.
The Center appointed Miguel B. O'Farrell as the sole panelist in this matter on February 8, 2021. 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 history of the Complainant, Fruit Of The Loom, Inc., dates back to 1851 when the brothers Benjamin and Robert Knight bought their first mill and began to produce cotton clothes textiles in Warwick, Rhode Island, United States. Today it is a global underwear and casualwear business operating in 44 countries.
The Complainant owns several registrations for the trademark FRUIT OF THE LOOM, including the following:
- Danish Trademark Registration No. VR 1974 00731 for FRUIT OF THE LOOM, registered on March 15, 1974 in classes 23, 24, 25, 26 and 27;
- Danish Trademark Registration No. VR 1994 05634 for FRUIT OF THE LOOM, registered on August 19, 1994 in class 25;
- European Union Trade Mark Registration No. 000731737 for FRUIT OF THE LOOM, registered on April 17, 2000 in classes 18, 24 and 25;
- United States Trademark Registration No. 0174998 for FRUIT OF THE LOOM, registered on October 30, 1923 in classes 10, 25 and 26;
- International Trademark Registration No. 1453624 for FRUIT OF THE LOOM, registered on January 29, 2019 in class 18.
In addition, the Complainant owns many domain names which include FRUIT OF THE LOOM, such as <fruitoftheloom.com>, registered on September 12, 1999, and <fruitoftheloom.eu>, registered on May 14, 2006.
The disputed domain name <fruitoftheloom.store> was registered on July 8, 2020, and currently resolves to a webpage displaying pay-per-click (“PPC”) links to third party websites, some of which compete with the Complainant’s business of underwear for men and women.
5. Parties’ Contentions
A. Complainant
The Complainant was founded in 1851 and is now a global underwear and casual ware business operating in 44 countries, with more than 32,400 people employed worldwide.
There is no doubt about the scope, dimension, and relevance of the activity carried out by the Complainant as a consequence of the notoriety of the FRUIT OF THE LOOM brand in the world.
In essence, the Complainant claims that the disputed domain name is confusingly similar to the FRUIT OF THE LOOM trademarks mentioned in section 4 above (Factual Background) in which the Complainant has rights; that the Respondent has no rights or legitimate interests in the disputed domain name, which was registered and is being used in bad faith.
The Respondent is not sponsored by or affiliated with the Complainant in any way.
The Complainant has not given the Respondent permission to use the Complainant’s trademarks in any manner, including in domain names.
The Respondent is not commonly known by the disputed domain name, which evidences the lack of rights or legitimate interests.
The Respondent is not using the disputed domain name to provide a bona fide offering of goods or services nor a legitimate and noncommercial or fair use as allowed under the Policy.
The Respondent has demonstrated a nefarious intent to capitalize on the fame and goodwill of the Complainant’s trademark in order to increase traffic to the disputed domain name’s website for the Respondent’s own pecuniary gain, as evidenced by the presence of multiple PPC links posted to the Respondent’s website.
Finally, the Complainant requests the Panel to issue a decision ordering that the disputed domain name be transferred to the Complainant.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely that:
(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 was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has proven that it has rights in the FRUIT OF THE LOOM trademark.
As set forth in section 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) the standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the trademark and the disputed domain name to determine whether the disputed domain name is confusingly similar with the trademark. The test involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.
The Panel considers that the disputed domain name is identical or confusingly similar with the Complainant’s FRUIT OF THE LOOM trademark.
The disputed domain name contains the FRUIT OF THE LOOM trademark in its entirety, and the absence of spaces in the disputed domain name does not prevent a finding of confusing similarity with the Complainant’s trademark.
For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) as it is viewed as a standard registration requirement (section 1.11 of WIPO Overview 3.0 ). Thus, for the test for confusing similarity the Panel shall disregard the gTLD “.store” included in the disputed domain name.
The Panel finds that the disputed domain name is identical or confusingly similar with the FRUIT OF THE LOOM trademark in which the Complainant has rights and that the requirement of paragraph 4(a)(i) of the Policy therefore is fulfilled.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a 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) 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.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established, as it is put in section 2.1 of WIPO Overview 3.0, that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production 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.
There is no evidence in the present case that the Respondent has been commonly known by the disputed domain name, enabling it to establish rights or legitimate interests in the disputed domain name. The name of the Respondent is “Henrik Bach-Jensen” which does not resemble the disputed domain name in any manner.
Furthermore, there is no evidence in the file to prove any of the circumstances mentioned in paragraph 4(c) of the Policy, nor any other to prove that the Respondent has rights or legitimate interests in the disputed domain name.
Likewise, and as further discussed under section 6.C of this decision, it does not seem that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name – which is confusingly similar with the Complainant’s above-mentioned trademark – but rather that it intends to use the disputed domain name for the purpose of deriving unfair monitory advantage by confusing Internet users and leading them to believe that the site to which the disputed domain name is linked is connected to the Complainant.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could have any rights or legitimate interests in respect of the disputed domain name (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
The Panel finds that the Complainant has made prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name which has not been rebutted by the Respondent and therefore that the requirement of paragraph 4(a)(ii) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
The Panel is satisfied that the Respondent must have been aware of the Complainant’s business and its FRUIT OF THE LOOM mark, which had been used and registered in many jurisdictions, long before the Respondent registered the disputed domain name on July 8, 2020.
The Respondent, when registering the disputed domain name, has targeted the Complainants’ trademark FRUIT OF THE LOOM, followed by the gTLD “.store”, with the intention to confuse Internet users and capitalize on the fame of the Complainant’s trademark for its own monetary benefit.
The relevant part of paragraph 4(b) of the Policy states that “the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
[...]
(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 web site or location or of a product or service on your web site or location.”
Prior to the commencement of these administrative proceedings the Complainant sent three cease and desist letters to the Respondent on September 17, 2020, September 28, 2020 and on October 8, 2020, all of which were ignored by the Respondent. It has been held by previous UDRP panels that failure to respond to a cease and desist letter may properly be considered a factor to support a finding bad faith registration and use of a domain name (Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330).
The fact that there is a clear absence of rights or legitimate interests coupled with no credible explanation for the Respondent’s choice of the disputed domain name is also a significant factor to consider that the disputed domain name was registered in bad faith (as stated in section 3.2.1 of WIPO Overview 3.0).
The Panel finds that the disputed domain name has been registered and is being used in bad faith, and thus the condition of paragraph 4(a)(iii) of the Policy has been fulfilled.
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 <fruitoftheloom.store> be transferred to the Complainant.
Miguel B. O'Farrell
Sole Panelist
Date: February 18, 2021