Fear of God, LLC v Privacy service provided by Withheld for Privacy ehf /

WIPO Case No. D2022-3042

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Fear of God, LLC v. Privacy service provided by Withheld for Privacy ehf /
ahmad Akram, sports ghar

Case No. D2022-3042

1. The Parties

The Complainant is Fear of God, LLC, United States of America (“United States”), represented by Sheppard,
Mullin, Richter & Hampton, United States.

The Respondent is Privacy service provided by Withheld for Privacy ehf, Iceland / ahmad Akram, sports ghar, Pakistan.

2. The Domain Name and Registrar

The disputed domain name <thefearofgod.net> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 17, 2022. On August 18, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 18, 2022, 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 August 19, 2022, 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 August 23, 2022.

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 5, the due date for Response was September 13, 2022. On August 27, 2022, the Center received an email communication from a third party regarding the claimed unauthorized use of contact details in relation to the present proceedings. The Respondent did not submit a substantive Response to the Complaint. On

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September 14, 2022, the Center informed the Parties that it would proceed to appointment of the

Administrative Panel.

The Center appointed David Taylor as the sole panelist in this matter on September 21, 2022. 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, Fear of God, LLC, is a limited liability company registered in California, Untied States.
Since 2011, the Complainant has operated a lifestyle brand designing luxury streetwear and accessories.

For use in connection with the sale and promotion of its clothing and accessories, the Complainant has registered a number of trademarks, including:

- United States Trademark Registration No. 5696924, FEAR OF GOD, registered on March 12, 2019;

- International Registration No. 1525459, FEAR OF GOD, registered on March 16, 2020;

- United States Trademark Registration No. 6310804, FEAR OF GOD, registered on March 30, 2021;
and

- United States Trademark Registration No. 6323749, FEAR OF GOD, registered on April 13, 2021.

The Complainant is also the registrant of the domain name <fearofgod.com>, from which it operates an online store, shipping to customers in the United States and internationally.

The disputed domain name was registered on May 17, 2022. The disputed domain name resolves to a website purporting to offer for sale products bearing the Complainant’s FEAR OF GOD trademark at discounted prices (the “Respondent’s website”). The Respondent’s website displays product images that appear to have been copied from the Complainant’s website, and lists a physical contact address in Denver, Colorado, United States. Certain sections of the Respondent’s website contain Lorem ipsum placeholder text.

5. Parties’ Contentions

A. Complainant

The Complainant asserts rights in the FEAR OF GOD trademark and submits that the disputed domain name is confusingly similar to its trademark.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant asserts that the Respondent is using the disputed domain name in connection with the sale of counterfeit goods.

The Complainant further submits that the disputed domain name was registered and is being used in bad faith. In this regard, the Complainant notes that the registration of its FEAR OF GOD trademark predates the registration of the disputed domain name, and argues that the Respondent’s knowledge of the Complainant and its trademark is apparent from the Respondent’s website, which makes direct reference to the Complainant. The Complainant submits that the Respondent’s use of the disputed domain name to sell

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counterfeit goods bearing the Complainant’s FEAR OF GOD trademark amounts to use of the disputed

domain name in bad faith.

The Complainant requests transfer of the disputed domain name.

B. Respondent

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

C. Third-Party Communication

On August 27, 2022, the Center received an email from what appears to be an unrelated third party in connection with the present proceedings, stating:

“I received a written notice of a complaint to my new home address, but I have never heard of the
listed website and I do not own any domain names. Is there any action needed on my part or can my

address be removed from this case? […]”

6. Discussion and Findings

In order to prevail, the Complainant must demonstrate on the balance of probabilities that it has satisfied the requirements of paragraph 4(a) of the Policy:

(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 was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established rights in the FEAR OF GOD trademark, the registration details of which are provided in the factual background section above.

The disputed domain name comprises the Complainant’s FEAR OF GOD trademark, altered only by the
omission of the spaces between the words making up the Complainant’s trademark (spaces being incapable
of representation per se in a domain name), and preceded by the word “the”, under the generic Top-Level
Domain (“gTLD”) “.net”. The Panel finds that the addition of the word “the” does not prevent a finding of
confusing similarity between the disputed domain name and the Complainant’s FEAR OF GOD trademark,
which remains clearly recognizable in the disputed domain name; see WIPO Overview of WIPO Panel
Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8; see also Urban
Outfitters Inc. v. Super Privacy Service LTD c/o Dynadot / Domain Administrator, Domain Name Corporation,

WIPO Case No. D2022-2928:

“The disputed domain name comprises the Complainant’s trademark ANTHROPOLOGIE in its
entirety. The article ‘the’ does not prevent the fact that the disputed domain name is confusingly
similar to the Complainant’s trademark.”

The gTLD “.net” is viewed as a standard registration requirement and as such is typically disregarded under the first element confusing similarity test.

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The Panel finds the disputed domain name to be confusingly similar to the FEAR OF GOD trademark in which the Complainant has rights. The Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

As noted above, the disputed domain name resolves to a website purporting to offer for sale products bearing the Complainant’s FEAR OF GOD trademark at discounted prices. The Panel notes that there is no relationship between the Complainant and the Respondent such that the Respondent could be said to be an authorized reseller of the Complainant’s goods, nor has any other permission been granted for the Respondent to make use of the Complainant’s trademark, in a domain name or otherwise. The Respondent’s website displays copyrighted product images that appear to have been misappropriated from the Complainant’s website. Some sections of the Respondent’s website appear to be incomplete, as they display Lorem ipsum placeholder text. In addition, the disputed domain name was registered behind a privacy service masking the registrant’s identity, and while the underlying registrant of the disputed domain name has been disclosed by the Registrar as being located in Pakistan, the Respondent’s website lists a physical contact address located in Denver, Colorado, United States. The Panel infers from the third-party communication received by the Center on August 27, 2022 (see above), that the Respondent has made unauthorized use of a third-party United States address in order to lend a veneer of authenticity to the Respondent’s website. In the circumstances, the Panel finds there is a risk that the goods offered for sale via the Respondent’s website are counterfeit, and at minimum the website is clearly intended to (and does) impersonate or falsely suggest affiliation with the Complainant. Such activity does not amount to a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy. Indeed, prior UDRP panels have held that the use of a domain name for illegal activity, e.g., the sale of counterfeit goods, impersonation/passing off, or other types of fraud, can never confer rights or legitimate interests on a respondent; see WIPO Overview 3.0, section 2.13.

The Respondent’s use of the disputed domain name as described above does not give rise to any legitimate claim that the Respondent is commonly known by the disputed domain name as contemplated by paragraph 4(c)(ii) of the Policy. Nor is there any evidence of the Respondent having made any legitimate

noncommercial or fair use of the disputed domain name within the meaning of paragraph 4(c)(iii) of the
Policy.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant’s registration and use of its FEAR OF GOD trademark both predate the Respondent’s FEAR OF GOD trademark, in bad faith. In the circumstances of the present case, the registration of the disputed domain name behind a privacy service, coupled with what appears to be the unauthorized use of third-party contact information on the Respondent’s website, further evidences the Respondent’s bad faith.
registration of the disputed domain name. In this instance, the Respondent’s actual knowledge of the
Complainant and its rights in the FEAR OF GOD trademark may be inferred from the contents of the
Respondent’s website, which make direct reference to the Complainant in the furtherance of what appears to
be an online offering of counterfeit goods. Given that the use of a domain name for per se illegitimate
activity can never confer rights or legitimate interests on a respondent, such behavior is manifestly
considered evidence of bad faith; see WIPO Overview 3.0, section 3.1.4. The Panel finds that the

In light of the confusing similarity between the disputed domain name and the Complainant’s FEAR OF GOD trademark, and noting the nature of the Respondent’s website, as described above, Internet users seeking the Complainant are likely to be misled by the Respondent’s website, which purports to offer (likely counterfeit) goods bearing the Complainant’s FEAR OF GOD trademark. The Panel finds that by using the

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disputed domain name in such a manner, the Respondent has intentionally attempted to attract, for website and the goods offered for sale therein, in bad faith pursuant to paragraph 4(b)(iv) of the Policy.

commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s
The Panel finds that the disputed domain name was registered and is being used in bad faith. The

Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

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 <thefearofgod.net> be transferred to the Complainant.

/David Taylor/ David Taylor Sole Panelist Date: October 11, 2022