Dollar Shave Club, Inc. v. Zhichao Yang
Claim Number: FA1303001491288
Complainant is Dollar Shave Club, Inc. (“Complainant”), represented by Scott W. Pink of DLA Piper LLP, California, USA. Respondent is Zhichao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dolllarshaveclub.com>, registered with GODADDY.COM, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on March 22, 2013; the National Arbitration Forum received payment on March 22, 2013.
On March 25, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <dolllarshaveclub.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.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 March 26, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 15, 2013 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@dolllarshaveclub.com. Also on March 26, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respond-ent via post and fax, to all entities and persons listed on Respondent’s registra-tion 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 April 24, 2013, pursuant to Complainant's request to have the dispute decid-ed by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 Not-ices, 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 uses the Internet as the predominant platform for its discount razor blade subscription service business.
Complainant has consistently used the DOLLAR SHAVE CLUB trademark in commerce since January 18, 2011.
Complainant has rights in the DOLLAR SHAVE CLUB trademark by reason of its registration of the mark with the United States Patent and Trademark Office “USPTO” (Registry No. 4,201,669, registered September 4, 2012, application filed January 16, 2012.)
Complainant owns various domain names associated with its business, including <dollarshaveclub.com> and <dollarshaveclub.net>.
Respondent registered the contested domain name on March 9, 2012.
Respondent’s <dolllarshaveclub.com> domain name is confusingly similar to Complainant’s DOLLAR SHAVE CLUB trademark.
Respondent is not affiliated with Complainant, and Complainant has not given Respondent consent to use the DOLLAR SHAVE CLUB mark in a domain name.
Respondent’s domain name redirects Internet users to a website without sub-stantive content, and which immediately directs visitors to Complainant’s website.
Respondent registered the disputed domain name for the purpose of selling it to Complainant.
Respondent is not making a bona fide offering of goods or services by means of, or a legitimate noncommercial or fair use of the disputed domain name.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent knew of Complainant and its rights in the DOLLAR SHAVE CLUB trademark when Respondent registered the contested domain name.
Respondent registered and uses the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is 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 can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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.”
Complainant has rights in the DOLLAR SHAVE CLUB service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that a UDRP complainant’s trademark registration with the USPTO was adequate to establish its rights in the mark pursuant to Pol-icy ¶ 4(a)(i)).
We take note of the fact that the registration of Respondent’s domain name oc-curred on March 9, 2012, which predates the registration of Complainant’s ser-vice mark (entered in the USPTO registry September 4, 2012). However, for purposes of the Policy, the effective date of creation of trademark or service mark rights acquired by registration is the date of filing of the application for such regis-tration, in this case January 16, 2012.) See Little House Publishing Ltd v Mr. Keith Davis, WIPO Case No. D2004-0508, October 3, 2004. Thus Complainant’s rights in its registered mark predate the registration of the domain name.
Moreover, it is irrelevant under Policy ¶ 4(a)(i) whether Complainant’s rights in its mark derive from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here China). See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether a UDRP complain-ant has registered its trademark in the country in which a respondent resides, only that it can establish rights in its mark in some jurisdiction).
Turning to the core question arising under Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <dolllarshaveclub.com> domain name is confusingly similar to Complainant’s DOLLAR SHAVE CLUB service mark. The domain name contains the entire DOLLAR SHAVE CLUB mark, with the deletion of the spaces between the terms of the mark, and the addition of an extra “L” in “DOLLAR” and the generic top-level domain (“gTLD”) “.com.” These alterations of the mark, made in creating the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007):
[t]he addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a re-quirement for all domain names.
See also L.F.P., Inc. v. Yarbrough, FA 114420 (Nat. Arb. Forum July 9, 2002) (finding the <xxxbarelylegal.com> domain name to be confusingly similar to a complainant’s BARELY LEGAL mark because the addition of “xxx” was not a distinguishing addition); further see Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between the terms of a UDRP complainant’s mark in forming a domain name does not establish distinctiveness from that mark under Policy ¶ 4(a)(i)).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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.
Complainant has made a sufficient prima facie showing under this branch of the Policy. Therefore, and because Respondent has failed to respond to the alle-gations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both finding that, where a respondent fails to respond to a UDRP Com-plaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name. Nonetheless, we will ex-amine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respond-ent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny,
That Respondent is not affiliated with Complainant, and that Complainant has not given Respondent consent to use the DOLLAR SHAVE CLUB mark in a domain name. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Zhichao Yang,” which does not resemble the domain name. On this record we conclude that Respondent has not been commonly known by the contested domain name so as to have acquired rights to or legit-imate interests in it within the contemplation of Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that a respondent failed to establish rights to or legitimate interests in the domain name <emitmortgage.com> where that respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence showing that it was commonly known by that domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent is not making either a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name, in that Re-spondent uses the domain name to direct to Respondent’s website Internet users looking for Complainant’s website, from which visitors are immediately redirected to Complainant’s website. This employment of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use of the domain name under Policy ¶ 4(c)(iii). See, for ex-ample, Better Existence with HIV v. AAA, FA 1363660 (Nat. Arb. Forum Jan. 25, 2011), finding that:
[E]ven though the disputed domain name still resolves to Complain-ant’s own website, Respondent’s registration of the disputed do-main name in its own name fails to create any rights or legitimate interests in Respondent associated with the disputed domain name under Policy ¶ 4(a)(ii).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are convinced from the evidence that Respondent’s employment of the con-tested <dolllarshaveclub.com> domain name, as alleged in the Complaint, dem-onstrates that it registered and uses the domain name in bad faith. See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003):
Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.
We are likewise persuaded that Respondent knew of Complainant and its rights in the DOLLAR SHAVE CLUB mark when Respondent registered the contested <dolllarshaveclub.com> domain name. This stands as further proof of bad faith registration of the domain name. See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting a respondent's contention that it did not register a disputed domain name in bad faith where a panel found that that respondent knew of a UDRP complainant's rights in the UNIVISION mark when that respondent registered the domain name).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <dolllarshaveclub.com> domain name be forth-with TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: April 26, 2013
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