Ben Sherman IP Holdings LP v Qbdeh Rveer

WIPO Case No. D2023-0409

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Ben Sherman IP Holdings LP v. Qbdeh Rveer

Case No. D2023-0409

1. The Parties

The Complainant is Ben Sherman IP Holdings LP, United States of America (“United States”), represented by Tucker & Latifi, LLP, United States.

The Respondent is Qbdeh Rveer, China.

2. The Domain Name and Registrar

The disputed domain name <wearbensherman.com> is registered with Name.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 30, 2023.
On January 30, 2023, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On January 31, 2023, 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 (Whois Agent, Domain Protection Services, Inc.) and contact
information in the Complaint. The Center sent an email communication to the Complainant on February 1,
2023, 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 February 8, 2023.

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 February 9, 2023. In accordance with the Rules, paragraph
5, the due date for Response was March 1, 2023. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on March 2, 2023.

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The Center appointed Marina Perraki as the sole panelist in this matter on March 7, 2023. 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

Complainant is active in the field of clothing since 1963 and maintains its primary retailing website at the
domain name <bensherman.com>. Complainant’s group companies own various trademark registrations for
BEN SHERMAN around the world including the European Union trademark registration no 000398354 BEN
SHERMAN, filed on October 17, 1996, and registered on March 16, 1998, for goods in international class 25.

The Domain Name was registered on June 22, 2022, and leads to an online shop purportedly of Complainant, falsely appearing to offer for sale Complainant’s goods (the Website). The Website displays prominently the trademark of Complainant and uses images and language from Complainant’s website and from its advertising campaigns. Complainant believes the goods offered purportedly of Complainant, are counterfeit or non existent. Per Complaint, in similar disputes involving its main shareholder, the infringing websites were selling goods which were never delivered after the charging of the consumers’ credit card.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the
Domain Name:

(i)        the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii)       Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii)      the Domain Name has been registered or is being used in bad faith.

A. Identical or Confusingly Similar

The Domain Name incorporates Complainant’s BEN SHERMAN trademark in its entirety. This is sufficient to
establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO

Case No. D2000-1525).

The word “wear” does not avoid a finding of confusing similarity (WIPO Overview of WIPO Panel Views on
Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8).

The Panel also notes the content of the Website, which reproduces Complainant’s trademark and website content and pictures. WIPO Overview 3.0, section 1.15.

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The generic Top-Level Domain (“gTLD”) “.com” is disregarded, as gTLDs typically do not form part of the
comparison on the grounds that they are required for technical reasons (Rexel Developpements SAS v.
Zhan Yequn, WIPO Case No. D2017-0275; Hay & Robertson International Licensing AG v. C. J. Lovik,

WIPO Case No. D2002-0122).

The Panel finds that the Domain Name is confusingly similar to Complainant’s trademark.

Complainant has established Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the
Domain Name, among other circumstances, by showing any of the following elements:

(i)        before any notice to Respondent of the dispute, 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)       Respondent (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)      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.

The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name.

Respondent has not submitted any response and has not claimed any such rights or legitimate interests with
respect to the Domain Name. As per Complainant, Respondent was not authorized to register the Domain
Name.

Respondent has not demonstrated any preparations to use, or has not used the Domain Name or a trademark corresponding to the Domain Name in connection with a bona fide offering of goods or services.

On the contrary, as Complainant demonstrated, the Domain Name was used to host the Website to
impersonate Complainant and attempt to mislead consumers into thinking that the goods purportedly offered
for sale on the Website originate from Complainant. Such use demonstrates neither a bona fide offering of
goods nor a legitimate interest of Respondent (Arkema France v. Aaron Blaine, WIPO Case No.
D2015-0502).

A distributor or reseller can be making a bona fide offering of goods and thus have a legitimate interest in a domain name only if the following cumulative requirements are met (Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; WIPO Overview 3.0, section 2.8.1: (i) respondent must actually be offering the goods at issue; (ii) respondent must use the site to sell only the trademarked goods; (iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and (iv) respondent must not try to “corner the market” in domain names that reflect the trademark.)

These requirements are not fulfilled in the present case.

The Domain Name falsely suggest that the Website is an official site of Complainant or of an entity affiliated to or endorsed by Complainant. The Website extensively reproduces, without authorization by Complainant, Complainant’s trademarks and website content without any disclaimer of association (or lack thereof) with

Complainant.

The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name.

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Complainant has established Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:

(i)        circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or

(ii)       that 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 Respondent has engaged in a pattern of such conduct; or

(iii)      that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv)      that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel concludes that Respondent has registered and used the Domain Name in bad faith.

Because Complainant’s mark had been used and registered by Complainant before the Domain Name
registration, and noting the content of the corresponding website, it is clear that Respondent had
Complainant’s mark in mind when registering the Domain Name (Tudor Games, Inc. v. Domain Hostmaster,
Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis
Inc., WIPO Case No. D2014-1754; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net,

WIPO Case No. D2000-0226).

Furthermore, the content of the Website gives the impression that it originates from Complainant,
prominently displaying Complainant’s trademark and product photographs on the Website, thereby giving the
false impression that the Website emanates from Complainant. This further supports registration in bad faith
reinforcing the likelihood of confusion, as Internet users are likely to consider the Domain Name as in some

way endorsed by or connected with Complainant (WIPO Overview 3.0, section 3.1.4).

The above further indicates that Respondent knew of Complainant and chose the Domain Name with
knowledge of Complainant and its industry (Safepay Malta Limited v. ICS Inc., WIPO Case No.
D2015-0403).

As regards bad faith use, Complainant demonstrated that the Domain Name is employed to host the Website which appears falsely to be that of Complainant.

Furthermore, the Domain Name has been operated by intentionally creating a likelihood of confusion with
Complainant’s trademark and business. This further supports the finding of bad faith use (Arkema France v.
Aaron Blaine, supra; Aktiebolaget Electrolux v. Priscilla Quaiotti Passos, WIPO Case No. D2011-0388; and
WIPO Overview 3.0, sections 3.1.4 and 3.2.1).

Lastly, Respondent appears to have provided fictitious information when registering the Domain Name, given the courier’s inability to deliver the Center’s written notice, which supports an inference of bad faith.

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Under these circumstances and on this record, the Panel finds that Respondent registered and used the

Domain Name in bad faith.

Complainant has established Policy, paragraph 4(a)(iii).

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, <wearbensherman.com>, be transferred to the Complainant.

/Marina Perraki/
Marina Perraki
Sole Panelist
Date: March 21, 2023