lululemon athletica canada inc. v. wu xian sheng / xian sheng wu
Claim Number: FA1107001399594
Complainant is lululemon athletica canada inc. (“Complainant”), represented by David M. Kramer of DLA Piper LLP, Washington, D.C., USA. Respondent is wu xian sheng / xian sheng wu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lululemonstore.com>, registered with Bizcn.com, Inc.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 20, 2011; the National Arbitration Forum received payment on July 21, 2011. The Complaint was submitted in English and Chinese.
On July 20, 2011, Bizcn.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <lululemonstore.com> domain name is registered with Bizcn.com, Inc. and that Respondent is the current registrant of the name. Bizcn.com, Inc. has verified that Respondent is bound by the Bizcn.com, Inc. 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 August 1, 2011, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of August 22, 2011 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@lululemonstore.com. Also on August 1, 2011, the Chinese language 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 25, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <lululemonstore.com> domain name is confusingly similar to Complainant’s LULULEMON mark.
2. Respondent does not have any rights or legitimate interests in the <lululemonstore.com> domain name.
3. Respondent registered and used the <lululemonstore.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, lululemon athletica canada inc., is the owner of the LULULEMON mark. Complainant has registrations for its mark in numerous countries. For instance, the LULULEMON mark (Reg. No. 1,939,499 registered October 28, 2002) is registered with the State Intellectual Property Office (“SIPO”) of China, where Respondent resides. The mark is also registered with the European Union’s Office of Harmonization in the Internal Market (“OHIM”) (Reg. No. 2,304,848 registered November 12, 2002). Complainant uses its LULULEMON mark in connection with the retail sale of yoga apparel and other related goods and services, part of which is accomplished through its operation of the <lululemon.com> domain name.
Respondent, wu xian sheng / xian sheng wu, registered the <lululemonstore.com> domain name on May 12, 2011. The disputed domain name resolves to a website which offers for sale counterfeit versions of Complainant’s products.
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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Complainant contends that it has established rights in its LULULEMON mark. The mark is registered in a number of countries with their national trademark authorities. Complainant has provided the Panel with evidence of registration of the LULULEMON mark in a variety of countries, including with China’s SIPO (Reg. No. 1,939,499 registered October 28, 2002). The mark is also registered with the European Union’s Office of Harmonization in the Internal Market (“OHIM”) (Reg. No. 2,304,848 registered November 12, 2002). Therefore, the Panel finds that Complainant has established its rights in the LULULEMON mark pursuant to Policy ¶ 4(a)(i). See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority).
Complainant next argues that the <lululemonstore.com> domain name is confusingly similar to the LULULEMON mark. The Panel finds that Respondent’s addition of the generic top-level domain (“gTLD”) “.com” is insufficient to distinguish the domain name from Complainant’s mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Additionally, the Panel finds that Respondent’s addition of the generic term “store” fails to differentiate the <lululemonstore.com> domain name from Complainant’s LULULEMON mark. See Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end); see also Dr. Ing. h.c. F. Porsche AG v. Anderson, D2004-0312 (WIPO July 2, 2004) (finding the <porschesales.com> domain name to be confusingly similar where the respondent added the generic term “sales” to the complainant’s PORSCHE mark). Given that no substantially distinguishing changes have been made to Complainant’s mark within the <lululemonstore.com> domain name, the Panel finds that the disputed domain name is confusingly similar to Complainant’s LULULEMON mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant argues that Respondent does not have rights or legitimate interests in the <lululemonstore.com> domain name. The Panel finds that Complainant’s assertions constitute a prima facie case in support of this claim. Therefore, the Panel finds that the burden has shifted to Respondent to provide evidence controverting Complainant’s allegations. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). The Panel is without the benefit of a response from Respondent. Therefore, the Panel will infer that Complainant’s assertions, unless clearly contradicted by information on the record, are correct. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”). The Panel will therefore review the evidence submitted in the record.
A respondent which is found to be commonly known by a disputed domain name may gain rights or legitimate interests in the disputed domain name. Complainant contends that this is not the case regarding Respondent and the <lululemonstore.com> domain name. The Panel, guided by Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003), and M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), will review Complainant’s claims regarding Respondent as well as the WHOIS listing for the <lululemonstore.com> domain name to make a Policy ¶ 4(c)(ii) determination. Complainant claims that no business relationship whatsoever exists between itself and Respondent. Additionally, Complainant has in no way transferred rights to Respondent for the use of the LULULEMON mark. As for the WHOIS record, the information lists “wu xian sheng / xian sheng wu” as the domain name registrant. The Panel finds that this in no way reflects either the LULULEMON mark or the <lululemonstore.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
The disputed domain name resolves to a website which offers for sale counterfeit versions of Complainant’s yoga and athletic apparel and other goods. Complainant contends that this use is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. The sale of counterfeit goods is consistently held to be neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use as demonstrated by C. & J. Clark Int’l Ltd. v. Shanhua, FA 1388854 (Nat. Arb. Forum June 17, 2011) and Max Mara Fashion Grp. S.r.l. v. Lee, FA 1391129 (Nat. Arb. Forum July 7, 2011). Given Respondent’s use of the <lululemonstore.com> domain name to sell counterfeit versions of Complainant’s goods, the Panel finds that Respondent’s <lululemonstore.com> domain name was neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent, through registration and use of the disputed domain name, has purposely disrupted Complainant’s business. Panels traditionally find that the registration and use of a domain name in order to sell counterfeit versions of a complainant’s goods is disruptive. See Skechers U.S.A., Inc. and Skechers U.S.A, Inc. II v. Zheng, FA 1388961 (Nat. Arb. Forum July 1, 2011) (finding that the respondent’s disputed domain name disrupted the complainant’s business and was evidence of bad faith registration and use where Internet users looking for the complainant’s website may instead find respondent’s website and purchase counterfeit goods at the disputed domain name); see also Brainetics, LLC v. Zhang, FA 1389740 (Nat. Arb. Forum June 22, 2011) (“The Panel finds that respondent’s use of the disputed domain name to sell counterfeit versions of Complainant’s products constitutes bad faith registration and use under Policy ¶ 4(b)(iii).”). The confusing similarity of the <lululemonstore.com> domain name increases the disruptive nature of the domain name because it suggests affiliation between Complainant and the disputed domain name thus increasing the likelihood of Internet traffic. Therefore, the Panel finds that Respondent’s registration and use of the <lululemonstore.com> domain name disrupts Complainant’s business pursuant to Policy ¶ 4(b)(iii).
Complainant contends that Respondent’s registration and use of the disputed domain name was intended to take commercial advantage of the likelihood of confusion among Internet users. The <lululemonstore.com> domain name resolves to a website which sells counterfeit versions of Complainant’s yoga apparel and other goods and services. The Panel infers that Respondent profits from the sale of these goods. Respondent ensures, by using a confusingly similar domain name which offers for sale items purporting to be genuine versions of Complainant’s products, that Internet users become confused as to the affiliation or sponsorship of Respondent by Complainant. Some of these Internet users, trusting that Respondent is associated with Complainant due to the domain name’s inclusion of the LULULEMON mark and the display of what seems to be Complainant’s merchandise, will make purchases from Respondent rather than Complainant. As a result, the Panel finds that Respondent’s registration and use of the disputed <lululemonstore.com> domain name was intended to take advantage of the likelihood of confusion under Policy ¶ 4(b)(iv). See C. & J. Clark Int’l Ltd. v. Shanhua, FA 1388854 (Nat. Arb. Forum June 17, 2011) (finding the respondent to have registered and used the disputed domain name in bad faith by selling counterfeit products and capitalizing on the likelihood on confusion); see also CliC Goggles, Inc. v. iPage Hosting / Domain Manager, FA 1389736 (Nat. Arb. Forum June 28, 2011) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where a respondent benefits from the confusion caused by the registration and use of a confusingly similar domain name by selling counterfeit versions of the complainant’s goods and services).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lululemonstore.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: August 26, 2011
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