Groupe Dynamite Inc. v. Yanfei Huang
Claim Number: FA1912001875305
Complainant is Groupe Dynamite Inc. (“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 <garageclothings.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his 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 16, 2019; the Forum received payment on December 16, 2019.
On December 17, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <garageclothings.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 18, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 7, 2020 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@garageclothings.com. Also on December 18, 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 10, 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 operates 150 retail store selling clothing, footwear, and fashion accessories. It also operates an online store at the address <www.garageclothing.com>. Complainant has rights in the trademark GARAGE through its use in commerce since 1975 and its registrations with the Canadian Intellectual Property Office (“CIPO”) and the United States Patent and Trademark Office (“USPTO”) dating back to 1997. Respondent’s <garageclothings.com> domain name, registered on November 19, 2019, is identical or confusingly similar to Complainant’s mark as it includes the GARAGE mark in its entirety, adds the descriptive word “clothings,” and also adds the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <garageclothings.com> domain name. Respondent is not commonly known by the disputed domain name and Respondent is not a licensee or authorized to use the Complainant’s mark. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s use of the disputed domain name resolves to a webpage that is nearly identical to Complainant’s and displays Complainant’s mark.
Respondent registered and uses the <garageclothings.com> domain name in bad faith. Respondent has engaged in multiplicative registration of at least one other domain name. Also, Respondent attempts to pass itself off as Complainant as the disputed domain name resolves to a webpage that is nearly identical to Complainant’s actual website and which displays Complainant’s mark.
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 GARAGE 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 GARAGE mark. The Panel therefore holds that Complainant’s registration of the GARAGE 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 <garageclothings.com> domain name is identical or confusingly similar to Complainant’s mark as it includes the GARAGE mark in its entirety, adding the generic word “clothings,” and the gTLD “.com.” The addition of a generic word like “clothings” and the “.com” gTLD, does not distinguish a domain name for purposes of Policy ¶ 4(a)(i). See MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”). Further, the word “clothings” is directly related to Complainant’s business as a clothing and apparel retailer. The Panel therefore determines that the <garageclothings.com> domain name is confusingly similar to the GARAGE 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 <garageclothings.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the GARAGE 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 <garageclothings.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 GARAGE mark. The Panel therefore finds that Respondent has no rights or legitimate interests in the <garageclothings.com> domain name under Policy ¶ 4(c)(ii).
Complainant further argues that Respondent’s lack of rights or legitimate interests in the <garageclothings.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 <garageclothings.com> domain name to pass itself off as Complainant by using the GARAGE mark on the disputed domain’s 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. 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, Respondent’s website appears to copy the look and feel of Complainant’s own site. 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 <garageclothings.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 GARAGE mark. These include statements in the Complaint that Complainant has “prominently displayed the GARAGE 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 and elsewhere” and has “achieved a high degree of instant consumer recognition”; and that Complainant has “spent years and considerable resources infusing the GARAGE Marks with goodwill and building its reputation…” Unfortunately, Complainant provides no evidence for any of these claims. 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 is displayed the <garageclothings.com> domain name offering clothing and accessories, and which copy the look and feel of Complainant’s own website, 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 GARAGE 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 <garageclothings.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 <garageclothings.com> domain name in bad faith per Policy ¶ 4(b)(iv).
Complainant further contends that Respondent’s bad faith is demonstrated by its multiplicative registration of at least one other domain name that copies a well-known trademark. Registration of multiple domain names incorporating well-known marks is evidence of bad faith pursuant to Policy ¶ 4(b)(ii). See N.H. Sweepstakes Comm’n v. We Web Well, Inc., FA 197499 (Forum Nov. 3, 2003) (finding that the complainant’s submission of WHOIS evidence that listed the respondent as the registrant of other domain names incorporating third-party trademarks was sufficient to establish that the respondent had a pattern of registering and using domain names in bad faith pursuant to Policy ¶ 4(b)(ii)); see also Société Air France v. Mert, D2004-0759 (WIPO Dec. 3, 2004) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the complainant provided evidence of a pattern of registration of “numerous other domain names” by the respondent). Here, Complainant provides screenshots of Respondent’s other domain name <reitmanshop.com> using a complainant’s mark along with the WHOIS report for that domain name. The Panel notes that this domain name was the subject of a recently issued UDRP decision in Reitmans (Canada) Limited v. Yanfei Huang, FA 1874274 (Forum Jan. 7, 2020). Therefore, the Panel agrees that the existence of Respondent’s other domain name that has been found in violation of the Policy further supports the conclusion that Respondent registered and uses the <garageclothings.com> domain name in bad faith pursuant to 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 <garageclothings.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: January 13, 2020
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page