Unifi, Inc. v. CHARISA CHANBUA, UNIFICLOTHING / WHOISGUARD PROTECTED, WHOISGUARD, INC.
The Complainant is Unifi, Inc. of Greensboro, North Carolina, United States of America, represented by Bell, Davis & Pitt, P.A., United States of America.
The Respondent is CHARISA CHANBUA, UNIFICLOTHING of Pho Sai, Thailand / WHOISGUARD PROTECTED, WHOISGUARD, INC. of Panama.
The disputed domain name <unificlothing.com> is registered with eNom, Inc. (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 7, 2016. On July 8, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 11, 2016, 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 July 12, 2016 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 amendment to the Complaint on July 14, 2016.
The Center verified that the Complaint together with the amendment to 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 July 15, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 4, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 5, 2016.
The Center appointed Alfred Meijboom as the sole panelist in this matter on August 11, 2016. 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.
The Complainant produces and sells multi-filament polyester and nylon textured yarns and related raw materials. It owns the following registered word trademarks for yarns and threads:
232 Book 239
(the "UNIFI Mark").
The Respondent registered the disputed domain name on April 1, 2016. The disputed domain name resolved to a webpage displaying various products for sale and providing various customer testimonials, before displaying a message that the website was in maintenance mode.
The Complainant alleges that it has used the UNIFI Mark in connection with its business since at least May 31, 1971, and that the UNIFI Mark is well known in the textile industry. According to the Complainant, the disputed domain name is identical or confusingly similar to the UNIFI Mark in which the Complainant has earlier rights, in that the disputed domain name is merely the Complainant's famous UNIFI Mark together with the non-distinctive wording "clothing".
According to the Complainant, the Respondent has no rights or legitimate interests in respect of the disputed domain name as the Respondent registered the disputed domain name long after the Complainant registered the UNIFI Mark in multiple jurisdictions and long after the Complainant began using the word mark and the design mark. "Unifi" is an arbitrary term which has no meaning outside its use as a means to identify the Complainant as a source of certain products and services. The Complainant has not granted any permission to the Respondent to use the UNIFI Mark in the disputed domain name, and the Respondent has not been commonly known by the disputed domain name. Further, the Respondent's use of the disputed domain name has no connection with a bona fide offering of goods and services as the website under the disputed domain name displayed the following text only since at least June 27, 2007, "Maintenance mode. Sorry for the inconvenience. Our website is currently undergoing scheduled maintenance. Thank you for understanding." (The Panel finds this assertion inconsistent with other facts, namely the creation date of the disputed domain name, but considers this a likely typographical error with no impact on the Panel's assessment.) The website under the disputed domain name as it existed on May 26, 2016 appeared to offer goods, stating that "Unifi clothing is a customised garment supplier currently offering workwear, sports wear, school wear, corporate wear, hospitality wear, uniform and more with embroidery and/or printed customisation." Moreover, various products were displayed for sale and various alleged customer testimonials were provided. The Complainant claims that this apparent offering of goods was not bona fide because it (i) was not genuine and; (ii) was intended to deceive. An agent or employee of the Complainant visited on June 9, 2016 both the addresses shown as the "Head office" on the Respondent's website under the disputed domain name, observing no evidence of any "Unifi Clothing" operations at either location. Moreover, the Respondent's website originally displayed the Complainant's design mark which incorporates the UNIFI Mark (the "Stylized Mark"). This was an attempt to bring an aura of legitimacy to the Respondent's apparently fraudulent attempt to cause consumers to believe that it is in the business of manufacturing and selling various garments. Since that time, the Respondent has removed the deceptive content and replaced it with the aforementioned "maintenance" message.
The Complainant alleges that the Respondent registered and is using the disputed domain name primarily to profit and exploit the UNIFI Mark. As stated before, the Respondent has no apparent business operations, selected the UNIFI Mark coupled with a non-distinctive word as the disputed domain name, and prominently displayed the Complainant's famous UNIFI Mark in its content as of May 26, 2016. The Respondent's unauthorized and deceptive diversionary use of the UNIFI Mark to trick Internet users into believing it has a business affiliated with the Complainant in an effort to generate revenue constitutes an abusive registration of the disputed domain name and arises to registration and use in bad faith. Also the very nature of the Respondent's registration evidences bad faith as the Respondent knowingly registered the disputed domain name containing and featuring the UNIFI Mark to capitalize on the consumer recognition of the UNIFI Mark. According to the Complainant the bad faith allegations set forth above, combined with the Respondent's lack of rights or legitimate interests in the disputed domain name, should lead to the inevitable conclusion that there is no plausible circumstance under which the Respondent could legitimately register or use the disputed domain name and that, therefore, the disputed domain name was registered and is being used by the Respondent in bad faith.
The Respondent did not reply to the Complainant's contentions. However, as set out in paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, ("WIPO Overview 2.0"), the consensus view of UDRP panels is that the Respondent's default does not automatically result in a decision in favor of the Complainant. The Complainant must still establish each of the three elements required by paragraph 4(a) of the Policy. Although the Panel may draw appropriate inferences from a respondent's default, paragraph 4 of the Policy requires the Complainant to support its assertions with actual evidence in order to succeed in these proceedings. Paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, the Panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules. The Panel finds that in this case there are no such exceptional circumstances.
Under the Policy, the Complainant must prove that:
(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 has been registered and is being used in bad faith.
It is well established that the generic Top-Level Domains ("gTLDs"), such as ".com", may typically be disregarded in the assessment under paragraph 4(a)(i) of the Policy (e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
The Panel finds that the disputed domain name is confusingly similar to the UNIFI Mark. The Respondent has taken the UNIFI Mark in its entirety and merely added the descriptive word "clothing". The added word is insufficient to differentiate the disputed domain name and the UNIFI Mark, and may even encourage – and therefore confuse – Internet users to believe that the website under the disputed domain name provides information of the Complainant.
Consequently, the first element of paragraph 4(a) of the Policy is met.
The Complainant must show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which the Respondent may rebut (e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Panel takes note of the various allegations of the Complaint and in particular that no authorization has been given by the Complainant to the Respondent to use or register the disputed domain name, the Respondent has not been commonly known by the disputed domain name, the Respondent has no prior rights or legitimate interests in the disputed domain name, and the disputed domain name resolved to a website which showed the Stylized Mark, offered apparel for sale, and provided customer testimonials. As the Respondent used the disputed domain name for its own commercial gain, and as detailed below, there is no bona fide offering of goods and services by the Respondent.
The allegations of the Complainant remain unchallenged. There is no evidence before the Panel to show that the Respondent has rights or legitimate interests in the disputed domain name.
The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
Pursuant to paragraph 4(b)(iv) of the Policy, there is evidence of registration and use of the disputed domain name in bad faith where the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service offered on the Respondent's website or location.
In the Panel's view, it is obvious that at the time the Respondent registered the disputed domain name it must have had the UNIFI Mark in mind as it had already been registered and used for many years worldwide, and the website to which the disputed domain name resolved used the Stylized Mark. Furthermore, the use of the Complainant's marks and the lack of clear disclaimers would likely confuse Internet users into believing a relationship existed between the Complainant and the operator of the website at the disputed domain name. Under the circumstances, the Panel is therefore satisfied that the Respondent registered the disputed domain name in bad faith.
The Panel is further satisfied that the use which the Respondent made of the disputed domain name to attract Internet users for the Respondent's commercial gain constitutes use of the disputed domain name in bad faith.
Consequently, the third and last element of paragraph 4(a) of the Policy is also met.
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 <unificlothing.com> be transferred to the Complainant.
Alfred Meijboom