The TJX Companies, Inc. v. Zhichao Yang
Claim Number: FA2111001974584
Complainant is The TJX Companies, Inc. (“Complainant”), represented by Steven M. Levy, District of Columbia, USA. Respondent is Zhichao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <comtjxrewards.com>, <tjxrewardsa.com>, and <tjxrewardsd.com>, registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn).
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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 23, 2021; the Forum received payment on November 23, 2021. The Complaint was received in English.
On November 26, 2021, Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) confirmed by e-mail to the Forum that the <comtjxrewards.com>, <tjxrewardsa.com>, and <tjxrewardsd.com> domain names are registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) and that Respondent is the current registrant of the names. Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) has verified that Respondent is bound by the Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) 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 November 30, 2021, the Forum served the English language Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of December 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@comtjxrewards.com, postmaster@tjxrewardsa.com, postmaster@tjxrewardsd.com. Also on November 30, 2021, the Chinese and English language 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 December 22, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho-Hyun Nahm, 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 names be transferred from Respondent to Complainant.
Preliminary Issue: Language of Proceeding
The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese. Complainant requests that the proceedings be held in English, and submits that it would be inequitable to hold the proceedings in any other language with the following arguments and evidence support this request: i) the pay-per-click websites that resolve from the disputed domain names appear in the English language; ii) the word “rewards”, as used in the disputed domain names, is an English language word; iii) Respondent is a habitual cybersquatter and routinely defaults in UDRP cases; iv) most of the prior UDRP cases against Respondent have been decided in the English language; and v) Complainant operates its multi-national business in English and should not be put to the added expense of translating these pleadings where Respondent has failed to participate in the dispute process.
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
A. Complainant
i) Complainant, The TJX Companies, Inc., is the corporate parent company of a collection of leading off-price apparel and home fashions retailers. Complainant has rights in the TJX mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,117,444, registered Dec. 2, 1997). Respondent’s <comtjxrewards.com>, <tjxrewardsa.com>, and <tjxrewardsd.com> domain names are confusingly similar to Complainant’s TJX mark as they incorporate the entire mark and add the generic term “com” and/or “rewards,” or a misspelled version of the term, and the “.com” generic top level domain (“gTLD”).
ii) Respondent does not have rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names. Additionally, Respondent does not use the disputed domains for any bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the domains to host pay-per-click hyperlinks to competing and unrelated third-party websites.
iii) Respondent registered and uses the disputed domain names in bad faith. Respondent engages in a pattern of bad faith registration based on previous UDRP rulings against it and registration of multiple domains that incorporate the TJX mark. Furthermore, Respondent uses the disputed domain names to attract users for commercial gain by hosting pay-per-click hyperlinks. Finally, Respondent had actual notice of Complainant’s rights in the TJX mark based on the notoriety of the mark, Respondent’s inclusion of the entire mark in the domain names, and the domain names’ similarity to Complainant’s own <tjxrewards.com> website.
B. Respondent
Respondent did not submit a Response in this proceeding.
1. The disputed domain names were registered on July 25, 2021.
2. Complainant has established rights in the TJX mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,117,444, registered Dec. 2, 1997).
3. The disputed domain names resolve to parked webpages with a variety of pay-per-click hyperlinks.
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 asserts rights in the TJX mark based on registration of the mark with the USPTO (e.g., Reg. No. 2,117,444, registered Dec. 2, 1997). Registration of a mark with the USPTO is a valid showing of rights in a mark. See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”). Since Complainant provides evidence of registration of the TJX mark with the USPTO, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <comtjxrewards.com>, <tjxrewardsa.com>, and <tjxrewardsd.com> domain names are confusingly similar to Complainant’s TJX mark as they incorporate the entire mark and add the generic term “com” and/or “rewards,” or a misspelled version of the term, and the “.com” gTLD. The addition of generic terms, including misspelled terms, and a gTLD to a mark does not negate a finding of confusing similarity under Policy ¶ 4(a)(i). See Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).”); see also NIKE, Inc., and Nike Innovate, C.V. v. Emile Boulanger, FA 1732459 (Forum June 30, 2017) (“Further, the addition of “com” is particularly unhelpful in creating a distinction between a domain name and a mark.”); see additionally Acme Lift Company, L.L.C. v. VistaPrint Technologies Ltd, FA 1607039 (Forum Apr. 11, 2015) (stating, “Where a respondent has created a domain name in an effort to visually deceive Internet users via a simple misspelling (and when such misspellings are visually similar to the mark), a finding of confusing similarity under Policy ¶ 4(a)(i) is appropriate.”). Thus, the Panel finds that the disputed domain names are confusingly similar to the TJX 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), then the burden shifts to Respondent to show 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 does not have rights or legitimate interests in the disputed domain names because Respondent is not commonly known by the disputed domain names. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). Here, the WHOIS information of record identifies “Zhichao Yang” as the registrant and no information suggests Respondent is commonly known by the disputed domain names. Thus, the Panel finds that Respondent is not commonly known by the domain names under Policy ¶ 4(c)(ii).
Additionally, Complainant argues Respondent does not use the disputed domains for any bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the domains to host pay-per-click hyperlinks to competing and unrelated third-party websites. Using a disputed domain name to host monetized hyperlinks to third-party websites does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Complainant provides screenshots showing the disputed domain names resolve to parked webpages with a variety of pay-per-click hyperlinks. Therefore, the Panel finds that Respondent is not using the domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant argues that Respondent registered and uses the disputed domain names in bad faith because Respondent engages in a pattern of bad faith registration. A previous history of adverse UDRP rulings against a respondent and registration of multiple infringing domain names in a present case both indicate a respondent has a pattern of bad faith. See The Toronto-Dominion Bank v. Ryan G Foo / PPA Media Services / Jinesh Shah / Whois Privacy Corp. / Domain Administratory / Fundacion Private Whois / Domain Admin / Whois Privacy Corp, FA1408001576648 (Forum Jan. 12, 2015) (“The Panel determines that Respondent’s documented history of adverse UDRP rulings, as well as Respondent’s multiple registrations relating to Complainant’s marks, are independently sufficient to constitute a pattern as described by Policy ¶ 4(b)(ii). Therefore, the Panel finds bad faith under the provision.”). Complainant provides evidence that Respondent has been subject to 235 UDRP proceedings and points to Respondent’s registration of the multiple domains in this case incorporating Complainant’s TJX mark as evidence of Respondent’s bad faith. Therefore, the Panel finds bad faith registration and use per Policy ¶ 4(b)(ii).
Furthermore, Complainant argues that Respondent registered and uses the disputed domain names in bad faith since Respondent uses the disputed domain names to attract Internet users for commercial gain by hosting pay-per-click hyperlinks. Under Policy ¶ 4(b)(iv), using a disputed domain name to attract users to its website where it hosts monetized hyperlinks indicates bad faith. See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent registered and used the domain name in bad faith under Policy ¶ 4(b)(iv) where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). The Panel recalls that Complainant provides screenshots of the resolving webpages for the disputed domain names which feature pay-per-click hyperlinks. Therefore, the Panel finds bad faith registration and use per Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <comtjxrewards.com>, <tjxrewardsa.com>, and <tjxrewardsd.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: December 28, 2021
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