Sugar Publishing, Inc. v. jian chen
Claim Number: FA1204001437540
Complainant is Sugar Publishing, Inc. (“Complainant”), represented by David A. W. Wong of Barnes & Thornburg LLP, Indiana, USA. Respondent is jian chen (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <shop-styles.com>, registered with Name.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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 2, 2012; the National Arbitration Forum received payment on April 3, 2012.
On April 2, 2012, Name.com LLC confirmed by e-mail to the National Arbitration Forum that the <shop-styles.com> domain name is registered with Name.com LLC and that Respondent is the current registrant of the name. Name.com LLC has verified that Respondent is bound by the Name.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 April 5, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 25, 2012 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@shop-styles.com. Also on April 5, 2012, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 1, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant has made the following contentions.
i. United States Patent and Trademark Office ("USPTO") (Reg. No 3,761,889 registered March 16, 2010);
ii. Canadian Intellectual Property Office (“CIPO”) (Reg. NO. TMA814941 registered January 5, 2012); and
iii. European Union Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 6,824,395 registered January 21, 2009).
B. Respondent
Respondent failed to submit a Response in this proceeding.
1.Complainant is a United States company that owns the SHOPSTYLE mark that it uses to provide online shopping and retail store information to help brands, manufacturers, and retailers so that they may better identify and reach consumers.
2. Complainant owns trademark registrations throughout the world for its SHOPSTYLE mark including:
i. United States Patent and Trademark Office ("USPTO") (Reg. No 3,761,889 registered March 16, 2010);
ii. Canadian Intellectual Property Office (“CIPO”) (Reg. NO. TMA814941 registered January 5, 2012); and
iii. European Union Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 6,824,395 registered January 21, 2009).
3. Respondent registered the <shop-styles.com> domain name on March 3, 2012.
4. Respondent previously used the disputed domain name to sell illegitimate counterfeit goods through a website nearly identical to Complainant’s official website. Upon receiving Complainant’s letter of demand, Respondent removed the content of the website and replaced it with a general notice regarding the website’s unavailability.
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(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.”).
The first question is whether Complainant has rights in a trademark or service mark. Complainant contends that it has rights in the SHOPSTYLE mark through its various trademark registrations with the following governmental trademark authorities: USPTO (Reg. No 3,761,889 registered March 16, 2010); CIPO (Reg. NO. TMA814941 registered January 5, 2012); and OHIM (Reg. No. 6824395 registered January 21, 2009). The Panel finds that Complainant has rights in its SHOPSTYLE mark under Policy ¶ 4(a) (i), regardless of Respondent’s location in China. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Complainant then argues that the <shop-styles.com> domain name is both identical and confusingly similar to the SHOPSTYLE mark. Complainant argues that the domain name merely adds a hyphen and the letter “s” to its mark and that the addition of the gTLD “.com” is irrelevant to a Policy ¶ 4(a) (i) analysis. The Panel finds that Complainant’s submissions are correct and that as the disputed domain name contains the additions noted by Complainant, Respondent’s domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a) (i). See T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a) (i)); see also Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen"); see also Isle worth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a) (I) analysis.”).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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) and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a) (ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case and that it arises from the following considerations:
(a) Respondent has chosen to take Complainant’s SHOPSTYLE trademark and to use it in its entirety in his domain name , adding a hyphen and the letter “s” to its mark , with the result that internet users would take it to mean that the domain name relates to Complainant and its well known business;
(b) Respondent has then decided to use the domain name to sell illegitimate counterfeit goods through a nearly identical website and to do so clearly for monetary reward;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant also contends that there is no evidence that Respondent has, as a business or organization, ever been commonly known by the disputed domain name. The Panel notes that the applicable WHOIS information identifies the domain name registrant as “jian chen.” Based upon the WHOIS information and all other evidence available, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c) (ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c) (ii) based on the WHOIS information and other evidence in the record).
(e) Complainant asserts that Respondent has previously used the disputed domain name to offer and sell counterfeit goods. Complainant asserts that Respondent continues to sell illegitimate counterfeit goods and that consumers could well confuse Respondent’s illegitimate service with Complainant’s genuine SHOPSTYLE service in the future if Respondent remains as the registrant of the disputed domain name. In support, Complainant submits a screen shot of the previously resolving website in its Exhibit E. The Panel agrees with this submission and finds that Respondent’s previous use of the disputed domain name was not 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). See Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).”); see also Keihin Corp. v. Youli Ltd., FA 1106190 (Nat. Arb. Forum Dec. 18, 2007) (finding no rights and legitimate interests when the respondent sold counterfeit versions of the complainant’s products in competition with the complainant’s business).
(f) Further, Complainant argues that Respondent, after receiving Complainant’s letter of demand, removed the prior content from the website and placed it with a general notice regarding the website’s unavailability. Complainant has included a screen shot of this website in its Exhibit G. The Panel finds that Respondent’s current failure to connect the domain name to active content is not 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). See TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a) (ii).”); see also Am. Home Prods. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where the respondent merely passively held the domain name).
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 name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant asserts that Respondent previously used the disputed domain name to present Internet users with a website that marketed and sold counterfeit goods. Complainant argues that Respondent registered the disputed domain name in order to confuse Internet users into believing that Complainant had sponsored the counterfeit website. Complainant contends that Respondent profited, and continues to profit, from this illegitimate use of the disputed domain name. The Panel finds that Respondent’s prior conduct of selling counterfeit goods through the domain name is evidence that Respondent registered and used the domain name in bad faith under Policy ¶ 4(b) (iv). See Affliction, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain by creating confusion as to the complainant’s connection with the website by selling counterfeit products); see also -D Michigan, LLC v. Ross, FA 1250712 (Nat. Arb. Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion).
Secondly, Complainant contends that, after it sent Respondent a letter demanding that it cease using the disputed domain name to sell counterfeit goods, Respondent removed all content from the website and now resolves the domain name to a page that provides notice of the website’s unavailability. Complainant argues that this current failure to make an active use of the domain name is also evidence of Respondent’s bad faith registration and use under Policy ¶ 4(a) (iii). The Panel agrees and finds accordingly. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a) (iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
Thirdly, Complainant asserts that Respondent must have had knowledge of Complainant's rights in the SHOPSTYLE mark when Respondent registered the disputed domain name. Complainant further argues that Respondent’s use of the domain name to sell counterfeit versions of the goods offered by Complainant indicates that Respondent had knowledge of Complainant and its rights. The Panel agrees with Complainant regarding Respondent's knowledge and concludes that Respondent registered the <shop-styles.com> domain name in bad faith according to Policy ¶ 4(a) (iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).").
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the domain name using the SHOP STYLE mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <shop-styles.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: May 3, 2012
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