Boojaa Inc. DBA Otte v. Nguyen Thanh Tung
Claim Number: FA2104001941888
Complainant is Boojaa Inc. DBA Otte ("Complainant"), represented by Lori E. Harrison of Troutman Pepper Hamilton Sanders LLP, New York, USA. Respondent is Nguyen Thanh Tung ("Respondent"), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ottenyshop.com>, registered with Wild West Domains, 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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 16, 2021; the Forum received payment on April 16, 2021.
On April 19, 2021, Wild West Domains, LLC confirmed by email to the Forum that the <ottenyshop.com> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, 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 April 20, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 10, 2021 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@ottenyshop.com. Also on April 20, 2021, the Written Notice of the Complaint, notifying Respondent of the email 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 May 12, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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 a physical store located in New York City and an online retail store, both of which feature designer women's apparel, shoes, handbags, and accessories. Complainant has used the OTTE NEW YORK trademark in connection with these goods and services continuously since 1999, and uses the domain name <otteny.com> for its official website. Complainant owns a United States trademark registration for OTTE NEW YORK in standard character form.
Respondent registered the disputed domain name <ottenyshop.com> via a privacy registration service in December 2020. The domain name is being used for an online fashion store website featuring merchandise that appears to be similar or identical to that offered by Complainant. Respondent's website refers to a physical store located in a shopping mall in Valley Stream, New York, but the store is not listed on the mall's website. Complainant states that Respondent is not commonly known by the disputed domain name and has not been authorized to use Complainant's mark.
Complainant contends on the above grounds that the disputed domain name <ottenyshop.com> is confusingly similar to its OTTE NEW YORK mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used 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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
The disputed domain name <ottenyshop.com> incorporates Complainant's registered OTTE NEW YORK trademark, substituting the abbreviation "NY" for "NEW YORK" and adding the generic term "shop" and the ".com" top-level domain. These alterations do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Gabrielle Studio, Inc., The Donna Karan Co. LLC v. Djis Sdi, D2012-1704 (WIPO Oct. 17, 2012) (finding <dknyshop.net> confusingly similar to DKNY); New York Yankees Partnership d/b/a The New York Yankees Baseball Club v. Covanta Corp., FA 803277 (Forum Nov. 14, 2006) (finding <nyyankees.com> confusingly similar to NEW YORK YANKEES); NFL Properties LLC & New York Jets LLC v. Link Commercial Corp., D2004-1087 (WIPO Mar. 10, 2005) (finding <nyjets.com> confusingly similar to NEW YORK JETS). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization, and it is being used to pass off as Complainant and offer directly competing products for sale. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Aspen Financial Solutions, Inc. v. Domain Admin / Whois Privacy Corp., FA 1870174 (Forum Dec. 12, 2019) (finding lack of rights or interests in similar circumstances); Gabrielle Studio, Inc., The Donna Karan Co. LLC v. Djis Sdi, supra (same).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent used a privacy registration service to register a domain name corresponding to and obviously intended to create confusion with Complainant's registered mark and domain name, and is using the domain name to pass off as Complainant and promote directly competing merchandise. Such conduct is indicative of bad faith registration and use under the Policy. See, e.g., Aspen Financial Solutions, Inc. v. Domain Admin / Whois Privacy Corp., supra (finding bad faith in similar circumstances); Fry's Electronics, Inc. v. Olubowale Timothy, FA 1840350 (Forum May 23, 2019) (same). The Panel so finds.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ottenyshop.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: May 13, 2021
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