ABG-Volcom, LLC v Web Commerce Communications Limited

WIPO Case No. D2023-4369

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

ABG-Volcom, LLC v. Web Commerce Communications Limited

Case No. D2023-4369

1. The Parties

The Complainant is ABG-Volcom, LLC, represented by Authentic Brands Group, United States of America

(“United States”).

The Respondent is Client Care, Web Commerce Communications Limited, Malaysia.

2. The Domain Name and Registrar

The disputed domain name <volcomoutletstore.com> is registered with Alibaba.com Singapore E-Commerce

Private Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 20, 2023. On October 23, 2023, the Center transmitted by email to the Registrar a request for registrar verif ication in connection with the disputed domain name. On October 24, 2023, the Registrar transmitted by email to the Center its verif ication 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 October 24, 2023, providing the registrant and contact

information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the
Complaint. The Complainant f iled an amendment to the Complaint on October 24, 2023.

The Center verif ied that the Complaint together with the amendment to the Complaint satisf ied 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 notif ied the Respondent of the Complaint, and the proceedings commenced on October 26, 2023. In accordance with the Rules, paragraph 5, the due date for Response was November 15, 2023. The Respondent did not submit any response. Accordingly, the Center notif ied the Respondent’s default on November 21, 2023.

The Center appointed Cherise Valles as the sole panelist in this matter on November 28, 2023. The Panel f inds that it was properly constituted. The Panel has submitted the Statement of Acceptance and

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Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the

Rules, paragraph 7.

4. Factual Background

The VOLCOM brand is supported by a large global trademark portfolio of more than 350 trademark f ilings worldwide for VOLCOM, different variations of the Volcom Stone Logo, the phrase “true to this” and others (collectively, the “VOLCOM Trademarks”).

More particularly, the Complainant owns the following trademarks in the United States:

- VOLCOM Registration No. 1,725,875, registered on October 20,1992, in International Class 25;
- VOLCOM Registration No. 2,534,210, registered on January 29, 2002, in International Class 25;
- VOLCOM and Stone Device on Black Background Logo Registration No. 2,048,820, registered on April 1,
1997, in International Class 25;
-Stone Device Logo Registration No. 2,552,549, registered on March 26, 2002, in International
Class 25;
- Stone Device on Black Background Logo Registration No.2,725,181, registered on June 10, 2003, in
International Class 25;
- VOLCOM Registration No. 2,689,830, registered on February 25, 2003, in International Classes 9, 16 and
18;
- Stone Device in Circle Logo Registration No. 2,689,825, registered on February 25, 2003, in International

Classes 9, 16 and 18.

The disputed domain name <volcomoutletstore.com> was registered on November 14, 2022.

At the time of filing the Complaint, the disputed domain name is used to resolve to a website mimicking the

Complainant’s of f icial website purportedly selling competing and unauthorized goods.

5. Parties’ Contentions
A. Complainant

The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisf ied. In particular, the Complainant asserts that:

The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

-	The disputed domain name is confusingly similar to the Complainant’s registered VOLCOM
trademark, in light of the fact that it wholly incorporates the Complainant’s mark.

The Respondent lacks rights or legitimate interests in the disputed domain name.

- The Complainant states that the Respondent should be considered as having no rights or legitimate interests in the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name that included its trademarks.

The disputed domain name has been registered and is being used in bad faith.

- The Complainant asserts that the disputed domain name was registered and is being used in bad faith. The mere fact of registration of a domain name that is confusingly similar or identical to a famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith

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registration and use. Furthermore, the Respondent’s impersonating and/or competing uses of the
disputed domain name is clear evidence of bad faith.

The Complainant requests the Panel to issue a decision f inding that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy.

B. Respondent

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

6. Discussion and Findings

In terms of paragraph 4(a) of the Policy, for a Complain to succeed, the Complainant must prove each of the following elements:

(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.

The Respondent has failed to f ile a Response in this proceeding. The Panel may draw appropriate inferences f rom the available evidence submitted by the Complainant.

A. Identical or Confusingly Similar

To prove this element, the Complainant must have relevant rights in a trademark and the disputed domain name must be identical or confusingly similar to such trademark.

The Complainant submits that the disputed domain name is confusingly similar to the trademark in which it has rights. The disputed domain name incorporates the VOLCOM trademark in its entirety with the addition of the term “outletstore”. Given the Complainant’s trademark registration as detailed above, the Panel f inds that the Complainant has established its trademark rights in VOLCOM for the purposes of paragraph 4(a)(i) of the Policy.

As stated in section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “[…] in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”.

Further, as stated in section 1.8 of the WIPO Overview 3.0, “[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a f inding of confusing similarity under the f irst element”.

The Complainant asserts that the disputed domain name is confusingly similar to its trademark,

It is standard practice when comparing a disputed domain name to a complainant’s trademark not to take the Top-Level Domain (“TLD”) into account. See section 1.11.1 of the WIPO Overview 3.0, which states that the “applicable TLD in a domain name (e.g.,“.com”, “.club”, “.nyc”) is viewed as a standard registration

requirement and, as such, is disregarded under the f irst element of the confusing similarity test”. In the
present case, the TLD “com” is disregarded under the f irst element of the confusing similarity test.

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In the light of the foregoing, the Panel f inds that the disputed domain name is confusingly similar to the Complainant’s registered trademark and that the Complainant has met its burden with respect to paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out a non-exhaustive set of circumstances, any of which, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of paragraph 4(a)(ii) of the Policy, namely:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide of fering of goods or services; or

(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii)      you are 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.”

The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, whether on the basis of the non-exhaustive examples set out in paragraph 4(c) of the Policy or on any other basis, and the Panel draws inferences f rom this failure, where appropriate, in accordance with paragraph 14(b) of the Rules.

It is recognised in cases under the Policy that it is sufficient for a complainant to make a prima facie case under the second element of the Policy, not rebutted by the respondent, that the respondent has no rights or legitimate interests in the domain name concerned upon which the burden of production of evidence shifts to the Respondent (see, for example, Paris Saint-Germain Football v. Daniel Macias Barajas, International Camps Network, WIPO Case No. D2021-0019; Spinrite Inc. v. WhoisGuard, Inc. / Gabriella Garlo, WIPO Case No. D2021-0012; and the discussion in section 2.1 of the WIPO Overview 3.0). If a respondent fails to rebut such a prima facie case by demonstrating rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy, or on any other basis, the complainant is deemed to have satisf ied paragraph 4(a)(ii) of the Policy.

On the evidence before the Panel, it appears that there has never been any relationship between the Complainant and the Respondent. The Respondent does not seem to be licensed, or otherwise authorized, be it directly or indirectly, to register or use the Complainant’s VOLCOM trademark in any manner, including in, or as part of , the disputed domain name.

The Complainant asserts that the Respondent is unable to invoke any of the circumstances set out in paragraph 4(c) of the Policy in order to demonstrate rights or legitimate interests in the disputed domain name. In particular, the Respondent cannot assert that, prior to any notice of this dispute, he was using, or had made demonstrable preparations to use, the disputed domain name in connection with a bona fide of fering of goods or services in accordance with paragraph 4(c)(i) of the Policy. Rather, the evidence presented illustrates that the Respondent sought to capitalize on the risk of implied af f iliation shown in the composition of the disputed domain name by using the disputed domain name to purportedly sell competing and unauthorized goods, using the VOLCOM Trademarks as well as images of products bearing the

VOLCOM Trademarks without any authorization.

Furthermore, the nature of the disputed domain name, consisting of the Complainant’s trademark with the addition of the term “outletstore”, carries a risk of implied af f iliation and cannot constitute fair use as it ef fectively impersonates or suggests sponsorship or endorsement by the Complainant. See section 2.5.1 of the WIPO Overview 3.0.

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In light of the foregoing, the Panel finds that the Complainant has established an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and concludes that paragraph 4(a)(ii) of the Policy is satisf ied.

C. Registered and Used in Bad Faith

For this element, the Complainant is required to prove that the disputed domain name was registered and that it was being used in bad faith. The term “bad faith” is “broadly understood to occur where a respondent takes unfair advantage of , or otherwise abuses, a complainant’s mark”. See section 3.1 of the WIPO Overview 3.0. Paragraph 4(b) of the Policy sets out four non-exhaustive examples of circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith, namely:

“(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the documented out-of -pocket costs directly related to the domain name; or

(ii) 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 the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a

competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.”

In the present case, the Complainant’s submissions relate to paragraph 4(b)(iv) of the Policy.

Previous UDRP panels have found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typographical errors or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaf f iliated entity can by itself create a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0.

The Respondent’s use of the disputed domain name for a website of fering products, including competing and VOLCOM products at discounted prices, is not legitimate noncommercial or fair use, but to mislead and divert consumers for its own commercial gain by creating a likelihood of confusion with the Complainant’s trademark.

The Respondent has not participated in the administrative proceeding and has not answered the Complainant’s contentions. The fact that the Respondent has decided not to provide any legitimate explanation or to assert any alleged good faith motivation in respect of the registration or use of the disputed domain name in the face of the Complainant’s contentions can be regarded as an indicator of bad faith.

Accordingly, the Panel concludes that the Complainant has satisf ied its burden of showing bad faith registration and use of the disputed domain name under paragraph 4(a)(iii) of the Policy.

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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 <volcomoutletstore.com> be transferred to the Complainant.

/Cherise Valles/
Cherise Valles
Sole Panelist
Date: December 12, 2023