LYMI, INC. v. chen xiao mei
Claim Number: FA2108001959832
Complainant is LYMI, INC. (“Complainant”), represented by Steve Lane of LANE IP LIMITED, England. Respondent is chen xiao mei (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <reformatione.us>, <reformationsale.us>, and <reformationsales.us>, registered with TLD Registrar Solutions Ltd..
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 August 17, 2021; the Forum received payment on August 17, 2021.
On August 31, 2021, TLD Registrar Solutions Ltd. confirmed by e-mail to the Forum that the <reformatione.us>, <reformationsale.us>, and <reformationsales.us> domain names are registered with TLD Registrar Solutions Ltd. and that Respondent is the current registrant of the names. TLD Registrar Solutions Ltd. has verified that Respondent is bound by the TLD Registrar Solutions Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On August 31, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 20, 2021 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@reformatione.us, postmaster@reformationsale.us, postmaster@reformationsales.us. Also on August 31, 2021, 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 September 27, 2021, 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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant, LYMI, INC., sells apparel and accessories made from sustainable materials. Complainant has rights in the trademark REFORMATION based on its use in commerce since 2009 and its registration of the mark with various national trademark offices, the earliest of which dates to 2012. Respondent’s <reformatione.us>, <reformationsale.us>, and <reformationsales.us> domain names, registered on April 10th and 12th of 2021, are identical and/or confusingly similar to Complainant’s REFORMATION mark because they incorporate the REFORMATION mark in its entirely, adding either the letter ‘e’ or the generic and/or descriptive terms ‘sale’ or ‘sales,’ followed by the country-code top-level domain (“ccTLD”) “.com.”
Respondent lacks rights and legitimate interests in the <reformatione.us>, <reformationsale.us>, and <reformationsales.us> domain names as it is not commonly known by the disputed domain names and Complainant has not licensed or authorized Respondent to use the REFORMATION mark. Additionally, Respondent does not use the disputed domain names for any bona fide offering of goods or services, nor does it make a legitimate noncommercial or fair use of the names because all of the domain names resolve to websites that display Complainant’s REFORMATION stylized mark, offer clothing for sale, and feature copyright-protected images and texts copied from Complainant’s official website.
Respondent registered or uses the <reformatione.us>, <reformationsale.us>, and <reformationsales.us> domain names in bad faith because all three of the domain names resolve to websites that display Complainant’s REFORMATION stylized mark, offer clothing for sale, and feature copyright-protected images and texts copied from Complainant’s official website
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) each of the domain names 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 names; and
(3) the disputed domain names were registered and are 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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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 and evidence 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 and supported 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 has rights in the REFORMATION mark based on registration of the mark with a number of trademark offices around the world including the United States Patent and Trademark Office, the European Intellectual Property Office, the New Zealand Intellectual Property Office, the The Mexican Institute of Industrial Property, and others. Registration of a mark with a national trademark agency is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Brooks Sports, Inc. v. Joyce Cheadle, FA 1819065 (Forum Dec. 28, 2018) (finding that Complainant’s registration of the BROOKS mark with the USPTO sufficiently conferred its rights in the mark under Policy ¶ 4(a)(i).”). Complainant has submitted into evidence copies of its above-referenced trademark registration certificates or screenshots from the relevant trademark office referencing the claimed trademark registrations. From this evidence the Panel finds that Complainant has rights in the REFORMATION mark under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <reformatione.us>, <reformationsale.us>, and <reformationsales.us> domain names are identical and/or confusingly similar to Complainant’s REFORMATION mark because they incorporate the REFORMATION mark in its entirely, adding either the letter ‘e’ or the generic and/or descriptive terms ‘sale’ or ‘sales,’ followed by the ccTLD “.us”. Complainant contends that the words ‘sale’ or ‘sales” would be taken, by consumers, to refer to Complainant’s products being offered at sale prices. Adding a single letter, a generic and/or descriptive term, and adding the ccTLD “.us” may not be sufficient to avoid a finding that a disputed domain name is confusingly similar to an asserted mark. See Enterprise Holdings, Inc. v. Tynia Coleman / New Life Family Ministries, FA 1333282 (Forum Aug. 10, 2010) (holding that “the mere addition of the letter ‘e’ and a gTLD to a registered trademark generates confusing similarity between the disputed domain name and Complainant’s mark under Policy ¶ 4(a)(i)); see also Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark); see additionally Lockheed Martin Corp. v. Roberson, FA 323762 (Forum Oct. 19, 2004) (holding that the ccTLD “.us” does not differentiate the disputed domain name from Complainant’s mark). In view of the minor differences between Respondent’s domain names and Complainant’s trademark, the Panel finds that the disputed domain names are confusingly similar to the mark under 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”).
Paragraph 4(c) of the Policy sets out examples of how a Respondent may demonstrate that it possesses rights or legitimate interests in a disputed domain name.
The Panel notes that there is nothing in the available evidence which indicates that Respondent has rights in a trademark identical to the disputed domain name, which would serve to satisfy Policy ¶ 4(c)(i). See Pepsico, Inc. v. Becky, FA 117014 (Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Next, Complainant argues that Respondent does not have rights or legitimate interests in the <reformatione.us>, <reformationsale.us>, and <reformationsales.us> domain names because Respondent is not commonly known by the disputed domain names, nor has Complainant licensed or authorized Respondent to use the REFORMATION mark. Under Policy ¶ 4(c)(iii) (similar to ¶ 4(c)(ii) of the UDRP), relevant WHOIS data may inform the inquiry of whether a respondent is commonly known by a disputed domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA 1613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization to use a mark can be further evidence that a respondent is not commonly known by the disputed domain name. See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”) Here, the relevant WHOIS records identify “Chen Xiao Mei / Chen Xiao Mei” as the registrant of all three of the disputed domain names. Additionally, Complainant asserts that it has not licensed or authorized Respondent to use the REFORMATION mark. Respondent has not filed a Response or made any other submission in this case and so the Panel finds no evidence that Respondent is commonly known by the domain names under Policy ¶ 4(c)(iii).
Complainant further argues that Respondent does not use the disputed domain names for a bona fide offering of goods or services nor does it make a legitimate noncommercial or fair use thereof under Policy ¶¶ 4(c)(ii) and 4(c)(iv) because each of the domain names resolves to a website that displays Complainant’s REFORMATION stylized mark, offer clothing for sale, and features copyright-protected images and text copied from Complainant’s own official website. Passing oneself off as another person or company by copying a complainant’s stylized logo and content from the complainant’s own website does not constitute a bona fide offerings of goods or services nor does it amount to a legitimate noncommercial or fair use of a respondent’s domain name. See Bittrex, Inc. v. Caroline Alves Maia, FA 1796113 (Forum Aug. 6, 2018) (finding the respondent’s attempt to pass itself of as 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 pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was “virtually identical, with the same color scheme, the same layout and the same substantive content.”); see also MO Media LLC v. NeXt Age Technologies LTD, FA 220031 (Forum Feb. 18, 2004) (finding the respondent lacked rights and legitimate interests in the disputed domain name when the respondent copied the complainant’s websites in their entirety at the disputed domain names); see additionally Akai Elec. Co. v. Semi-Tech (Global) Ltd., FA 114653 (Forum Sept. 30, 2002) (finding that the respondent’s use of the complainant’s fanciful AKAI mark to pass itself off as the complainant evidenced that the <akai.com> domain name was registered and used in bad faith). Here, Complainant provides screenshots of Respondent’s websites and contrasts them with its own, showing that the Respondent copied and reproduced Complainant’s REFORMATION logo in the banner at the top of Respondent’s websites. Complainant further points out that one of Respondent’s copyrighted images is taken from Complainant’s official website and Respondent’s websites also feature “About” pages that copy both the “Oh hi, we’re Reformation” headline from the “About Ref” page of Complainant’s official website as well as copyrighted textual information about Complainant. Respondent has not sought to explain its actions and so the Panel finds that Respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(ii) and that it is not using such domain names for a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv).
For the reasons stated above, the Panel finds that Complainant has made a prima facie case which has not been rebutted by Respondent and, by a preponderance of the available evidence, holds that Respondent has no rights or legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii).
Although not argued by Complainant, it is worthwhile to examine whether Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the REFORMATION mark. Actual knowledge of a complainant’s trademark rights can form a solid foundation upon which to assert bad faith registration under Policy ¶ 4(a)(iii) and may be demonstrated by the respondent’s copying of the asserted trademark as well as content that belong to the complainant. See Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”) See also Twentieth Century Fox Film Corporation and Fox International Channels (US), Inc. v. Daniel Pizlo / HS, FA 1596020 (Forum Jan. 27, 2015) (finding that the respondent must have had actual knowledge of the complainant and its rights in the FOX LIFE mark, where the respondent was using the disputed domain name to feature one of the complainant’s videos on its website, indicating that the respondent had acted in bad faith under Policy ¶ 4(a)(iii)). Complainant here alleges, and provides evidence that Respondent’s copies Complainant’s stylized REFORMATION logo mark as well as images and content from the “About” page of Complainant’s own website and reproduces them on Respondent’s websites at the disputed domain names. Respondent has not participated in this case and so it does not rebut this. Therefore, it seems to be a certainty that Respondent had actual knowledge of Complainant’s rights in the REFORMATION mark at the time it registered the disputed domain names and this will inform consideration of the remainder of the Policy ¶ 4(a)(iii) analysis.
Complainant does argue that Respondent registered or uses the <reformatione.us>, <reformationsale.us>, and <reformationsales.us> domain names in bad faith under Policy ¶¶ 4(b)(iii) and (iv) because all three of the domain names resolve to websites that display Complainant’s REFORMATION logo mark, offer clothing for sale, and feature copyright-protected images and text copied from Complainant’s official website. Passing oneself off as a complainant and offering to sell competitive goods can be evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes itself off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business); see also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 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.”); see additionally Indeed, Inc. v. Zhiteng Sun, FA 1751940 (Forum Nov. 1, 2017) (finding that the respondent's use of <lndeed.net> to misrepresent itself as the complainant by imitating the complainant’s website design supported a finding of bad faith). As noted above, Complainant provides screenshots showing that the disputed domain names <reformatione.us>, <reformationsale.us>, and <reformationsales.us> resolve to websites that feature Complainant’s REFORMATION logo mark, images taken from Complainant’s official website, and an “About Us” page that copies the headline and certain other text from the “About” page of Complainant’s own official website. Complainant contends that Respondent manifests an intent to mislead visitors into believing that they are accessing Complainant’s website, or a site associated with Complainant. Respondent does not submit any other explanation for its action and so, based upon a preponderance of the available evidence, the Panel finds that the disputed domain names were both registered and used in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <reformatione.us>, <reformationsale.us>, and <reformationsales.us> domain names be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: September 28, 2021
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