Paul Frank Industries LLC v. LiYong Yong / Li yong yong
Claim Number: FA1401001538923
Complainant is Paul Frank Industries LLC (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, Washington, D.C., USA. Respondent is LiYong Yong / Li yong yong (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <paulfrankbeddingset.com>, registered with Beijing Innovative Linkage Technology Ltd. d/b/a dns.com.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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 13, 2014; the National Arbitration Forum received payment on January 13, 2014. The Complaint was submitted in both English and Chinese.
On January 16, 2014, Beijing Innovative Linkage Technology Ltd. d/b/a dns.com.cn confirmed by e-mail to the National Arbitration Forum that the <paulfrankbeddingset.com> domain name is registered with Beijing Innovative Linkage Technology Ltd. d/b/a dns.com.cn and that Respondent is the current registrant of the name. Beijing Innovative Linkage Technology Ltd. d/b/a dns.com.cn has verified that Respondent is bound by the Beijing Innovative Linkage Technology Ltd. d/b/a dns.com.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 January 17, 2014, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of February 6, 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@paulfrankbeddingset.com. Also on January 17, 2014, the Chinese 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 10, 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
Complainant has rights in the PAUL FRANK mark, which it uses in connection with a wide array of products including bedding sets, clothing, and sunglasses. These are sold under the PAUL FANK mark and usually in conjunction with its Julius the Monkey logo. Complainant is the owner of the United States Patent and Trademark Office (“USPTO”) registration for the PAUL FRANK mark (Reg. No. 3,726,765 registered Dec. 15, 2009) and the Chinese State Administration of Industry and Commerce (“SAIC”) registration for the PAUL FRANK mark (Reg. No. 5,269,272 registered Jun. 28, 2009).
The <paulfrankbeddingset.com> domain name is confusingly similar to the PAUL FRANK mark. The addition of the descriptive term “bedding set” heightens the confusing similarity of the <paulfrankbeddingset.com> domain name because it relates to products sold legitimately by Complainant. The removal of spacing and addition of the generic top-level domain (“gTLD”) “.com” are irrelevant.
Respondent does not have rights and legitimate interests in the <paulfrankbeddingset.com> domain name. Respondent is not commonly known by the <paulfrankbeddingset.com> domain name. Respondent is not an authorized reseller of Complainant’s goods and is not licensed or otherwise authorized to use the PAUL FRANK mark.
Respondent is not making a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the <paulfrankbeddingset.com> domain name. Respondent uses the <paulfrankbeddingset.com> domain name for a commercial website offering counterfeit PAUL FRANK bedding products.
Respondent registered and is using the <paulfrankbeddingset.com> domain name in bad faith. Respondent’s excessive use of the PAUL FRANK mark and Julius the Monkey logo constitute passing off, further demonstrating Respondent’s lack of rights and legitimate interests.
Respondent disrupts Complainant’s business by offering counterfeit goods via the <paulfrankbeddingset.com> domain name. Respondent simultaneously receives an unfair competitive advantage from using the PAUL FRANK mark while it tarnishes Complainant’s mark by selling substandard products and marketing them as genuine PAUL FRANK goods.
Respondent’s registration and use of the <paulfrankbeddingset.com> domain name were intended to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant and its PAUL FRANK mark. Respondent intended to take advantage of the association with the PAUL FRANK mark to make its use of selling counterfeit goods more lucrative.
Respondent’s repeated and conspicuous use of the Julius the Monkey logo is further evidence of bad faith as it allows Respondent to falsely pass off as being associated with or sponsored by Complainant.
Respondent registered the <paulfrankbeddingset.com> domain name with actual knowledge of Complainant’s rights in the PAUL FRANK mark. Complainant’s mark is internationally famous and Respondent’s use of the mark in the domain name is intended to facilitate its sale of counterfeit PAUL FRANK goods while attempting to pass off as being affiliated with Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Paul Frank Industries LLC, uses the PAUL FRANK mark with the sale of a wide array of products including bedding sets, clothing, and sunglasses. Complainant has registered the PAUL FRANK mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,726,765 registered Dec. 15, 2009) and the Chinese State Administration of Industry and Commerce (“SAIC”) (Reg. No. 5,269,272 registered Jun. 28, 2009).
Respondent, LiYong Yong / Li yong yong, registered the <paulfrankbeddingset.com> domain name on May 10, 2013. Respondent uses the <paulfrankbeddingset.com> domain name for a commercial website offering counterfeit PAUL FRANK bedding 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."
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 PAUL FRANK mark under Policy ¶ 4(a)(i) through registration with the USPTO and the Chinese SAIC. 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).
The <paulfrankbeddingset.com> domain name is confusingly similar to the PAUL FRANK mark under Policy ¶ 4(a)(i). The addition of the descriptive term “bedding set” heightens the confusing similarity of the <paulfrankbeddingset.com> domain name because it relates to products sold legitimately by Complainant. Further, the removal of spacing and addition of the gTLD “.com” are irrelevant.
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 lacks rights and legitimate interests in the <paulfrankbeddingset.com> domain name. Respondent is not commonly known by the <paulfrankbeddingset.com> domain name as Respondent is not an authorized reseller of Complainant’s goods and is not licensed or otherwise authorized to use the PAUL FRANK mark. The WHOIS record for the <paulfrankbeddingset.com> domain name lists “LiYong Yong / Li yong yong” as the domain name registrant. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent’s use of the <paulfrankbeddingset.com> domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. Respondent uses the <paulfrankbeddingset.com> domain name for a commercial website offering counterfeit PAUL FRANK bedding products. See C. & J. Clark Int’l Ltd. v. Shanhua, FA 1388854 (Nat. Arb. Forum June 17, 2011)(a respondent’s use of a confusingly similar domain name to sell counterfeit products is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
Respondent’s use of the PAUL FRANK mark and Julius the Monkey logo constitute passing off, further demonstrating Respondent’s lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
Respondent registered and uses the <paulfrankbeddingset.com> domain name in bad faith under Policy ¶ 4(b)(iii). Respondent disrupts Complainant’s business by offering counterfeit goods via the <paulfrankbeddingset.com> domain name. See Skechers U.S.A., Inc. and Skechers U.S.A, Inc. II v. Zheng, FA 1388961 (Nat. Arb. Forum July 1, 2011)(respondent’s disputed domain name disrupted the complainant’s business where Internet users looking for the complainant’s website may instead find respondent’s website and purchase counterfeit goods on the disputed domain name as a result).
Respondent’s registration and use of the <paulfrankbeddingset.com> domain name were intended to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant and its PAUL FRANK mark. Respondent intended to take advantage of the association with the PAUL FRANK mark so as to make its use of selling counterfeit goods more lucrative. See CliC Goggles, Inc. v. iPage Hosting / Domain Manager, FA 1389736 (Nat. Arb. Forum June 28, 2011)(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 is bad faith registration and use of the domain name under Policy ¶ 4(b)(iv). Therefore, Respondent registered and is using the <paulfrankbeddingset.com> domain name to take commercial advantage of Internet users’ mistakes, demonstrating bad faith under Policy ¶ 4(b)(iv).
Respondent’s repeated and conspicuous use of Complainant’s Julius the Monkey logo is further evidence of bad faith under Policy ¶ 4(a)(iii)as it allows Respondent to falsely pass off as being associated with or sponsored by Complainant. See C. & J. Clark Int’l Ltd. v. Shanhua, FA 1388854 (Nat. Arb. Forum June 17, 2011) (finding that a respondent’s actions constituted bad faith under Policy ¶ 4(a)(iii) where the respondent intended to pass off the disputed domain names and resolving website as being affiliated with the complainant’s mark).
Respondent registered the <paulfrankbeddingset.com> domain name with actual knowledge of Complainant’s rights in the PAUL FRANK mark. Therefore, Respondent registered the <paulfrankbeddingset.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).").
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 <paulfrankbeddingset.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: February 24, 2014
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