Vuori, Inc. v Client Care, Web Commerce Communications Limited

WIPO Case No. D2022-2269

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Vuori, Inc. v. Client Care, Web Commerce Communications Limited

Case No. D2022-2269

1. The Parties

The Complainant is Vuori, Inc., United States of America (“United States”), represented by IPLA LLP, United

States.

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

2. The Domain Name and Registrar

The disputed domain name <vuoriclothingtoday.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 June 23, 2022. On June 23, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 27, 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 June 29, 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 amendment to the Complaint on the same date.

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 5, 2022. In accordance with the Rules, paragraph 5, the due date for Response was July 25, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 11, 2022.

The Center appointed Adam Samuel as the sole panelist in this matter on August 19, 2022. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of

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Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant manufactures and sells clothing. It owns a number of trademarks for the name VUORI
including United States trademark registration number 5,053,716, registered on October 4, 2016, for goods
Class 25. The Complainant promotes its business using a number of domain names, notably
<vuoriclothing.com>, registered by the Complainant on May 6, 2005.

The disputed domain name was registered on March 29, 2022. Until recently, it resolved to a website selling the Complainant’s clothes.

5. Parties’ Contentions

A. Complainant

The disputed domain name wholly encompasses the VUORI marks with the addition of the descriptive terms “clothing” and “today and the generic top level domain (“gTLD”) “.com”. The addition of the gTLD “.com” is insufficient to differentiate a disputed domain name from a mark as it is a technical requirement of registration. The addition of descriptive terms “clothing” and “today” do not meaningfully distinguish the disputed domain name from the Complainant’s trademark.

The Complainant has never authorized the Respondent in any way to use the Complainant’s trademarks or to register or use the disputed domain name or any other domain name that incorporates or is confusingly similar to the VUORI marks. The Respondent is not known and has never been known by the disputed domain name. The website at the disputed domain name was until recently mimicking the Complainant’s official website to trick customers into giving the Respondent their contact and payment information.

The Respondent clearly knew of the Complainant’s rights to the VUORI marks considering the similarity of the disputed domain name to the Complainant’s domain <vuoriclothing.com> and the use of the disputed domain name to mimic the Complainant’s official website using its marks, logos, and offering what could be counterfeit clothing for sale. The Respondent attempted to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.

B. Respondent

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

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:

(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.

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A. Identical or Confusingly Similar

The disputed domain name consists of the Complainant’s trademark, the words “clothing” and “today” and the gTLD “.com”.

The gTLD is irrelevant here as it is a standard registration requirement. See section 1.11 of the WIPO
Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The word “clothing” describes the Complainant’s main product and “today” is a generic word suggesting the contemporaneity of the Complainant’s offering. As, Section 1.8 of the WIPO Overview 3.0 says:

“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms
(whether descriptive … or otherwise) would not prevent a finding of confusing similarity under the first

element.”

For these reasons, the Panel concludes the disputed domain name is confusingly similar to the

Complainant’s trademark.

B. Rights or Legitimate Interests

The Respondent is not called “Vuori” or anything similar. There is no evidence that the Complainant has ever authorized the Respondent to use its trademark. The Respondent does not appear to have used the disputed domain name for any legitimate purpose.

Based on the available record, where the Complainant has made out a preliminary case that the Respondent lacks rights or legitimate interests, and in the absence of any response on this point, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name. See section 2.1 of the WIPO Overview 3.0.

C. Registered and Used in Bad Faith

The disputed domain name consists of the Complainant’s trademark and two generic words that describe the domain name is the word “today” inserted after “clothing” in the disputed domain name.

Until recently, the disputed domain name resolved to a website that offered Vuori clothes. One page of the disputed domain name reproduced the Complainant’s promotion on its website of a “Feather Tank”, using the same model and unusual product name with just the addition of the word “Shade” after “Tank”. Similarly, the Complainant’s website’s promotion of “Fleet Pant” was reproduced in the Respondent’s website with just the addition of the word “Quartz”. The Respondent clearly knew of the Complainant when it registered the disputed domain name and sought to use the disputed domain name to market the Complainant’s goods or counterfeit versions of them.

The Respondent appears to have registered the disputed domain name primarily to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the disputed domain name. All this is evidence of registration and use in bad faith in accordance with paragraph 4(b)(iv) of the Policy.

For all these reasons, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith.

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

/Adam Samuel/
Adam Samuel
Sole Panelist
Date: August 31, 2022