Reitmans (Canada) Limited v. Yanfei Huang
Claim Number: FA1912001874274
Complainant is Reitmans (Canada) Limited (“Complainant”), represented by Sammy Cheaib of Davies Ward Phillips & Vineberg LLP, Canada. Respondent is Yanfei Huang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <reitmanshop.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 9, 2019; the Forum received payment on December 9, 2019.
On December 9, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <reitmanshop.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 10, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 30, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@reitmanshop.com. Also on December 10, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On January 3, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Reitmans (Canada) Limited, is a clothing and apparel retailer based in Canada that operates close to 600 retail stores and also sells products through its online website at www.reitmans.com. Complainant has rights in the trademark REITMANS through its use in commerce dating back to 1923 and its registrations with the Canadian Intellectual Property Office (“CIPO”) and the United States Patent and Trademark Office (“USPTO”) dating back to 1936. Respondent’s <reitmanshop.com> domain name, registered on October 25, 2019, is confusingly similar to Complainant’s REITMANS mark as it incorporates the mark in its entirety, merely omitting the letter “s” and adding the generic term “shop” and the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <reitmanshop.com> domain name. Respondent is not licensed or authorized to use Complainant’s REITMANS mark and is not commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to pass itself off as Complainant and divert Internet users to a website that sells competing products.
Respondent registered and uses the <reitmanshop.com> domain name in bad faith. Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, users to the disputed domain name’s resolving website where it attempts to pass itself off as Complainant and sell competing products. Additionally, Respondent has engaged in a pattern of bad faith registration and use of domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant claims rights in the REITMANS mark based upon its registration with the CIPO and the USPTO. Registration of a mark with a national trademark authority such as the CIPO and the USPTO is sufficient to establish rights in that mark under Policy ¶ 4(a)(i). See THE TORONTO-DOMINION BANK v. Lhhon Hoy / Kathleen Kim / Grt Fyo / Leon Ho, FA 1724017 (Forum May 17, 2017) (finding registrations with the USPTO and CIPO are satisfactory demonstrations of Policy ¶ 4(a)(i) rights). Complainant provides copies of its CIPO and USPTO registrations for the REITMANS mark. The Panel therefore holds that Complainant’s registration of the REITMANS mark with these national trademark authorities is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <reitmanshop.com> domain name is confusingly similar to the REITMANS mark, as the name incorporates a misspelling of the mark, while adding a generic term and a gTLD. Misspellings of a complainant’s mark, either by adding or removing letters, along with the addition of generic terms and a gTLD to the mark, rarely negate confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Brooks Sports, Inc. v. chen jia jin., FA 1869243 (Forum Dec. 7, 2019) (confusing similarity found where “[t]he Domain Name [brooshoes.com] consists of a misspelling of the Complainant’s BROOKS mark (registered in the USA for footwear and used since 1914) – omitting the letters ‘ks’ and adding the generic term ‘shoes’ and the gTLD ‘.com.’”); see also Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).) Here, Complainant argues that Respondent’s disputed domain name incorporates Complainant’s REITMANS mark, merely removing the letter “s” in the mark and adding the generic term “shop” along with the “.com” gTLD[i]. Further, the word “shop” is directly related to Complainant’s business as a clothing and apparel retailer. The Panel therefore determines that the <reitmanshop.com> domain name is confusingly similar to the REITMANS mark per Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent lacks rights or legitimate interests in the <reitmanshop.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the REITMANS mark in any way. In considering this issue, WHOIS information can support a finding that the respondent is or is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”) The WHOIS information of record identifies the registrant of the <reitmanshop.com> domain name as “YANFEI HUANG,” and no information in the record indicates that Respondent is known otherwise or that it was authorized to use Complainant’s REITMANS mark. The Panel therefore finds that Respondent has no rights or legitimate interests in the <reitmanshop.com> domain name under Policy ¶ 4(c)(ii).
Complainant further argues that Respondent’s lack of rights or legitimate interests in the <reitmanshop.com> domain name is demonstrated by its failure to use the disputed domain name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, Complainant contends that Respondent uses the disputed domain name’s resolving website to pass itself off as Complainant, diverting Internet users to Respondent’s own website which purports to sell clothing products that compete with Complainant. Use of a domain name to pass oneself off as a complainant and then redirect Internet users to a respondent’s own website where inauthentic or competing products are sold may not be a bona fide offering of goods or services or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii). See Nokia Corp. v. Eagle, FA 1125685 (Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Complainant contends that the Respondent uses the <reitmanshop.com> domain name to pass itself off as Complainant by using the REITMANS mark and a stylized script similar to that used by Complainant on its own legitimate website. Further, the disputed domain name resolves to a website that purports to sell clothing products and accessories that are similar to those sold by Complainant. Without addressing the question of stylized script similarity, the Panel notes that the screenshots of Respondent’s website submitted by Complainant do display a variety of women’s clothing and that these are the precise goods for which Complainant has demonstrated its trademark rights. Further, although not submitted by Complainant, the Panel has independently examined Respondent’s website and notes that its page titled “Shipping Policy” only mentions “North America (United States & Canada)” thus indicating that Respondent is targeting the geographic markets served by Complainant. In the absence of any Response or other submission by Respondent, the Panel therefore determines that Respondent fails to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use with the <reitmanshop.com> domain name per Policy ¶¶ 4(c)(i) or (iii).
A foundation of any bad faith claim is that the respondent knew of (or in some cases should have known of) the complainant’s trademark at the time it acquired a disputed domain name. In support of its case here, Complainant makes various claims regarding the reputation of its REITMANS mark. These include statements in the Complaint that Complainant has “prominently displayed the REITMANS Marks, on, inter alia, exterior and interior store signs, banners and windows, bags and promotional items”; that it has “has acquired considerable goodwill” in its mark; that the mark is “distinctive and very well-known throughout Canada, the United States and elsewhere” and has “achieved a high degree of instant consumer recognition”; and that Complainant has “spent years and considerable resources infusing the REITMANS Marks with goodwill and building its reputation…” Unfortunately, Complainant provides almost no evidence for any of these claims. While its submitted trademark registrations evidence its rights to the mark, and an “Annual Information Form” for which Complainant provides a link (though not the document itself) evidences some of its financial statistics, these items do not speak to the reputation or customer recognition of Complainant’s mark. As such, the Panel finds that Complainant’s above-mentioned claims to be unsupported by evidence and is thus unable to determine, from the submitted evidence, the scope of the mark’s reputation.
However, a respondent’s actual knowledge of a complainant’s rights in a mark prior to registering the disputed domain name is solid ground upon which to build a claim of bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“the Panel here finds actual knowledge through the name used for the domain and the use made of it.”) Here, the submitted copies of Respondent’s website on which are displayed the REITMANS mark (including the letter “s”) offering clothing and accessories, along with the above-mentioned “Shipping Policy” page mentioning “North America (United States & Canada)”, do support the assertion that Respondent was aware of Complainant at the time it registered the disputed domain name. Therefore, in light of available evidence and the lack of any rebuttal by Respondent, the Panel finds it more likely than not that Respondent had actual knowledge of Complainant’s rights in the REITMANS mark prior to registration of the disputed domain name. This is a sufficient foundation upon which to build a case of bad faith per Policy ¶ 4(a)(iii).
Complainant next contends that Respondent registered and uses the <reitmanshop.com> domain name in bad faith. Specifically, Complainant contends that Respondent is diverting users to the disputed domain name’s resolving webpage which passes itself off as Complainant and sells products that compete with Complainant’s products. Registration and use of a disputed domain name to attract Internet users, for commercial gain, to a website that sells competing goods may evince bad faith per Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”) The Panel notes Complainant’s submitted evidence shows that the disputed domain name resolves to a website that attempts to pass itself off as Complainant and purports to sells products similar to those sold by Complainant. The Panel therefore finds that Respondent has registered and used the <reitmanshop.com> domain name in bad faith per Policy ¶ 4(b)(iv).
Complainant further contends that Respondent has engaged in a pattern of bad faith behavior by registering a domain name incorporating Complainant’s REITMANS mark, and by holding one other domain name which may infringe on another famous mark. In light of the above finding of bad faith based on passing off, the Panel feels it is unnecessary to opine on whether the Respondent has also demonstrated a pattern of bad faith registration and use per Policy ¶ 4(b)(ii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <reitmanshop.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: January 7, 2020
[i] The disputed domain name could also be viewed as consisting of the coherent term “Reitmans” either followed by the word “hop” or sharing the letter “s” with the word “shop”. In any event, the Panel’s finding of confusing similarity holds up.
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