Scott Elowitz Photography, LLC v. zhang yinfeng / Hengshui Fn Fur Trading Co., Ltd
Claim Number: FA1312001534428
Complainant is Scott Elowitz Photography, LLC (“Complainant”), represented by Lawrence D. Mandel of Gertner Mandel & Peslak, LLC, New Jersey, USA . Respondent is zhang yinfeng / Hengshui Fn Fur Trading Co.,Ltd (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lenscoat.org>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com (R27-LROR).
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 Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 12, 2013; the National Arbitration Forum received payment on December 12, 2013.
On December 13, 2013, PDR Ltd. d/b/a PublicDomainRegistry.com (R27-LROR) confirmed by e-mail to the National Arbitration Forum that the <lenscoat.org> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (R27-LROR) and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com (R27-LROR) has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com (R27-LROR) 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 December 13, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 2, 2014 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@lenscoat.org. Also on December 13, 2013, 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 January 9, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Scott Elowitz Photography, LLC, uses the LENSCOAT mark in connection with its line of camera-related products such as lens covers, camera covers, lens pouches, and more. Complainant owns rights in the LENSCOAT mark through registrations of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. NO. 3,913,970 registered February 1, 2011).
Respondent, zhang yinfeng / Hengshui Fn Fur Trading Co., Ltd, registered the <lenscoat.org> domain name on March 22, 2013. Respondent is using the disputed domain name to sell counterfeit versions of Complainant’s lens covers and related products. The at-issue website is nearly identical in appearance to Complainant’s own website, and also prominently displays Complainant’s LENSCOAT mark.
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.”).
Complainant has rights in the LENSCOAT mark under Policy ¶ 4(a)(i) through registration with the USPTO (e.g., Reg. NO. 3,913,970 registered February 1, 2011). See, Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). A complainant does not need to register its mark in the respondent’s country of origin in order to establish rights in the mark under Policy ¶ 4(a)(i). See, 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).
The <lenscoat.org> domain name is identical to Complainant’s LENSCOAT under Policy ¶ 4(a)(i), because the domain name fully appropriates the mark and its affixation of the gTLD “.org” is insufficient to distinguish it from the mark. See, e.g., Sea World, Inc. v. JMXTRADE.com, FA 872052 (Nat. Arb. Forum Feb. 12, 2007) (“[Since] [t]he top-level gTLD is merely a functional element required of every domain name, the <shamu.org> domain name is identical to the SHAMU mark under a 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), 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).
Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). The WHOIS information identifies “zhang yinfeng / Hengshui Fn Fur Trading Co., Ltd” as the registrant of the disputed domain name. A respondent is not commonly known by a disputed domain name where there is no evidence in the record, including the WHOIS information, to suggest otherwise. See 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).
Respondent is not using the disputed domain name 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), because Respondent is using the disputed domain name to sell counterfeit versions of Complainant’s lens covers and related products. See Complainants’ Exhibit 6. According to a screenshot submitted by Complainant, the at-issue website purports to offer a variety of “Wholesale Lenscoat Covers,” including covers for various “Canon” and “Nikon” cameras. See id. The use of a disputed domain name to sell counterfeit versions of the complainant’s goods does not constitute 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, e.g., eLuxury.com Inc. v. WangJunJie, FA 1075554 (Nat. Arb. Forum Nov. 30, 2007) (concluding that the sale of counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name).
Respondent is using the disputed domain name to pass itself off as Complainant. The at-issue website is nearly identical in appearance to Complainant’s own website, and also prominently displays Complainant’s LENSCOAT mark. See Complainant’s Exhibits 5 & 6. A respondent’s use of a disputed domain name to attempt to pass itself off as the complainant is evidence of the respondent’s lack of rights or legitimate interests in the disputed domain name. See, e.g., Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found 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)); see also Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)).
Both Complainant’s and Respondent’s websites feature 1) a white background; 2) a side bar containing links to various LENSCOAT products; and 3) a similar layout in the display of products. Compare Complainant’s Exhibit 5 with Complainant’s Exhibit 6. Respondent’s website prominently displays the LENSCOAT mark in the top left-hand corner of the page: the same place that Complainant displays the mark on its own website. See id. Respondent ‘s use of the <lenscoat.org> domain name to pass itself off as Complainant is evidence of Respondent’s lack of rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).
The website resolving from the <lenscoat.org> domain name directly competes with Complainant’s business by offering counterfeit versions of Complainant’s LENSCOAT camera-related products. Respondent has disrupted Complainant’s business and demonstrated bad faith registration and use of the <lenscoat.org> domain name pursuant to Policy ¶ 4(b)(iii). See Louis Vuitton Malletier S.A., L.L.C. v. David, FA 1138296 (Nat. Arb. Forum Mar. 5, 2008) (concluding that the complainant’s business is disrupted by the respondent’s registration and use of the disputed domain name for the purpose of selling counterfeit products).
Respondent has demonstrated bad faith registration and use of the <lenscoat.org> domain name under Policy ¶ 4(b)(iv), because the disputed domain name and its resolving website are likely to cause confusion with Complainant’s LENSCOAT mark, and Respondent is profiting from that confusion in the form of sales of its counterfeit merchandise. See Complainant’s Exhibit 6. See, e.g., Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
Respondent’s use of the disputed domain name to pass itself off as Complainant also demonstrates Respondent’s bad faith registration and use of the <lenscoat.org> domain name under Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Mihael, FA 605221 (Nat. Arb. Forum Jan. 16, 2006)(the respondent demonstrated bad faith under Policy ¶ 4(a)(iii) where the disputed domain name resolved to a website that closely resembled the complainant’s own site).
Respondent registered the disputed domain name with actual notice of Complainant’s rights in the LENSCOAT mark. Thus, Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lenscoat.org> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: January 22, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page