Bop, LLC v. muster c/o muster
Claim Number: FA1402001545924
Complainant is Bop, LLC (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is muster c/o muster (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <sjopbop.com> and <sh0pbop.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 27, 2014; the National Arbitration Forum received payment on February 27, 2014.
On February 28, 2014, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <sjopbop.com> and <sh0pbop.com> domain names are registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 February 28, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 20, 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@sjopbop.com, postmaster@sh0pbop.com. Also on February 28, 2014, 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 March 28, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho-Hyun Nahm, Esq. 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant makes the following contentions:
1. Complainant has used the SHOPBOP mark in correlation with its online retail services since as early as July 1999. Complainant provides its services via its <shopbop.com> domain name.
2. Complainant has rights in the SHOPBOP mark under Policy ¶ 4(a)(i).
a. Complainant owns registrations for the SHOPBOP mark in various countries, including with the United States Patent and Trademark Office (“USPTO”) as well as with China’s State Administration for Industry and Commerce (“SAIC”).
b. USPTO (Reg. No. 2,740,164 registered July 22, 2003).
3. Respondent’s <sjopbop.com> and <sh0pbop.com> domain names are confusingly similar to Complainant’s SHOPBOP mark.
a. Respondent’s <sjopbop.com> domain name replaces the “h” in SHOPBOP with the letter “j.”
i. The letter “j” is adjacent to the letter “h” on the keyboard and is phonetically similar to an English “h” in some languages.
b. Respondent’s <sh0pbop.com> domain name replaces the letter “o” in SHOPBOP with the number “0.”
i. The letter “o” and the number “0” are nearly identical.
c. Respondent adds the generic top-level domain (“gTLD”) “.com” to both the <sjopbop.com> and <sh0pbop.com> domain names.
4. Respondent has no rights or legitimate interests in the <sjopbop.com> and <sh0pbop.com> domain names.
a. Respondent is not commonly known by the disputed domain names.
i. The WHOIS information identifies Respondent as “muster c/o muster.” Complainant contends that Respondent is not licensed or authorized by Complainant to use the SHOPBOP mark.
b. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Doman names.
i. The website resolving from the <sh0pbop.com> domain name is an unauthorized copy of Complainant’s website.
1. This resolving website features advertisements for other fashion retailers and provides links to Respondent’s other websites. See Exhibit E.
ii. The website resolving from Respondent’s <sjopbop.com> domain name features a third-party, AliExpress.com, and its fashion products. This resolving website also features advertisements for other third-parties as well as a wholesale copy of Complainant’s Russia website <ru.shopbop.com>.
iii. Respondent reproduces a slavish version of Complainant’s website that includes logos and trade dress. Complainant asserts that Respondent is attempting to pass itself off as Complainant.
iv. Respondent’s use of the disputed domain names constitutes typosquatting.
5. Respondent registered and is using the <sjopbop.com> and <sh0pbop.com> domain names in bad faith.
a. Respondent registered and is using the <sjopbop.com> and <sh0pbop.com> domain names in bad faith under Policy ¶ 4(b)(iii).
i. Respondent uses the domain names to promote competing fashion retailers under the SHOPBOP mark. Complainant states that this disrupts Complainant’s business in bad faith.
b. Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iv).
i. Respondent incorporates Complainant’s entire website into Respondent’s websites, thereby creating a false impression of sites that originate with or are sponsored by Complainant.
ii. Respondent is attempting to commercially benefit unfairly and opportunistically from the goodwill associate with Complainant’s trademark.
c. Respondent’s use of the disputed domain names indicates typosquatting behavior.
d. Complainant’s SHOPBOP mark was registered and well-known prior to Complainant’s registration of the disputed domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding. The Panel notes that Respondent’s disputed domain names were registered on November 19, 2013.
Complainant established that it had rights in the mark contained in the disputed domain names. Respondent has no rights to or legitimate interests in the disputed domain names.
Each of the disputed domain names is confusingly similar to Complainant’s protected mark.
Respondent registered and used the disputed domain names 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 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 contends that it has used the SHOPBOP mark in correlation with its online retail services since as early as July 1999. Complainant states that it provides its services via its <shopbop.com> domain name. Complainant asserts that it has rights in the SHOPBOP mark under Policy ¶ 4(a)(i). Complainant states that it owns registrations for the SHOPBOP mark in various countries, including with the USPTO as well as with SAIC. The Panel notes that Respondent only provides registration evidence for its registration with the USPTO (Reg. No. 2,740,164 registered July 22, 2003). Panels have routinely found that providing evidence of registration for a mark with a recognized trademark authority is sufficient to establish rights in a given mark. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). The Panel concludes that Complainant has rights in the SHOPBOP mark under Policy ¶ 4(a)(i).
Complainant additionally asserts that Respondent’s <sjopbop.com> and <sh0pbop.com> domain names are confusingly similar to Complainant’s SHOPBOP mark. Complainant contends that Respondent’s <sjopbop.com> domain name replaces the “h” in SHOPBOP with the letter “j.” Complainant explains that the letter “j” is adjacent to the letter “h” on the keyboard and is phonetically similar to an English “h” in some languages. Complainant also states that Respondent adds the gTLD “.com.” Prior panels have concluded that variations such as replacing letters and adding a gTLD does not distinguish a disputed domain name from a given mark under Policy ¶ 4(a)(i). See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that “[a] domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive.”). The Panel concludes that Respondent’s <sjopbop.com> domain name is confusingly similar to Complainant’s SHOPBOP mark.
Complainant argues that Respondent’s <sh0pbop.com> domain name replaces the letter “o” in SHOPBOP with the number “0.” Complainant explains that the letter “o” and the number “0” appear nearly identical. Prior panels have agreed with this rational. See Oxygen Media, LLC v. Primary Source, D2000-0362 (WIPO June 19, 2000) (finding that the domain name <0xygen.com>, with zero in place of letter “O,” “appears calculated to trade on Complainant’s name by exploiting likely mistake by users when entering the url address”). Additionally Complainant states that Respondent adds the gTLD “.com” to Complainant’s mark. Panels have routinely found that adding a gTLD to a complainant’s mark does not differentiate it from a disputed domain name. See Metro-Goldwyn-Mayer Studios Inc. v. Antigua Domains, FA 1073020 (Nat. Arb. Forum Oct. 17, 2007) (“[T]he inclusion of the generic top-level domain ‘.com’ is inconsequential to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names.”). The Panel concludes that Respondent’s <sh0pbop.com> domain name is confusingly similar to Complainant’s SHOPBOP mark under 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); 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.”).
Complainant contends that Respondent has no rights or legitimate interests in the <sjopbop.com> or <sh0pbop.com> domain names. Complainant claims that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). Complainant states that the WHOIS information identifies Respondent as “muster c/o muster.” Complainant contends that Respondent is not licensed or authorized by Complainant to use the SHOPBOP mark. Prior panels have concluded that Respondent is not commonly known by a disputed domain name where there is no evidence indicating that respondent is commonly known by the disputed domain name. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). The Panel concludes that Respondent is not commonly known by the disputed domain names.
Complainant asserts that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain names under Policy ¶¶ 4(c)(i) or 4(c)(iii). Complainant argues that the website resolving from the <sh0pbop.com> domain name is an unauthorized copy of Complainant’s website. Complainant states that this resolving website features advertisements for other fashion retailers and provides links to Respondent’s other websites. See Exhibit E. The Panel sees Exhibit E displaying Complainant’s SHOPBOP mark as well as pictures of women’s clothing and jewelry. The Panel also notes the advertisement for <nomorerack.com>. Complainant further states that Respondent’s resolving website includes Complainant’s copyright notice and links to other retailers including Complainant’s <sjopbop.com> domain name. The Panel notes that the panel in MO Media LLC v. NeXt Age Technologies LTD, FA 220031 (Nat. Arb. Forum Feb. 18, 2004) found that the respondent’s use of a disputed domain name to resolve to a website that copied complainant’s official website in an attempt to pass itself off as complainant, was not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. The Panel therefore agrees with the Panel in MO Media LLC v. NeXt Age Technologies LTD and finds that the Respondent in this case is using the <sh0pbop.com> domain name to attempt to pass itself off as Complainant and offer third-party links that compete with Complainant’s business and does not convey rights or legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) or 4(c)(iii).
Additionally, Complainant claims that the website resolving from Respondent’s <sjopbop.com> domain name features a third-party, AliExpress.com, and its fashion products. This resolving website also features advertisements for other third-parties as well as a wholesale copy of Complainant’s Russia website <ru.shopbop.com>. Complainant explains that Respondent reproduces a slavish version of Complainant’s website that includes logos and trade dress. Complainant asserts that Respondent is attempting to pass itself off as Complainant. See Exhibit F. The Panel in Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) found that respondent’s use of the disputed domain name was not a bona fide offering of goods or services or a legitimate noncommercial or fair use when respondent used the domain name to attempt to profit by passing itself off as complainant. The Panel here, therefore agrees, and finds that Respondent has no rights or legitimate interests in the <sjopbop.com> domain name under Policy ¶¶ 4(c)(i) or 4(c)(iii).
Complainant asserts that Respondent’s use of the disputed domain names constitutes typosquatting. The Panel notes that previous panels have traditionally found typosquatting where there is a disputed domain name representing a typographical error with respect to a complainant’s mark or correlation between an incorrect letter found in the disputed domain name and its placement on a computer keyboard near the correct letter as found in the complainant’s mark. Complainant states that Respondent’s <sjopbop.com> domain name replaces the “h” in SHOPBOP with the letter “j.” Complainant explains that the letter “j” is adjacent to the letter “h” on the keyboard and is phonetically similar to an English “h” in some languages. Additionally, Complainant argues that Respondent’s <sh0pbop.com> domain name replaces the letter “o” in SHOPBOP with the number “0.” Complainant explains that the letter “o” and the number “0” appear nearly identical. The Panel therefore concludes that Respondent’s use of the disputed domain names constitutes typosquatting under Policy ¶ 4(a)(ii).
Complainant contends that Respondent registered and is using the <sjopbop.com> and <sh0pbop.com> domain names in bad faith. Complainant elaborates by claiming that Respondent registered and is using the <sjopbop.com> and <sh0pbop.com> domain names in bad faith under Policy ¶ 4(b)(iii). Complainant explains that Respondent uses the domain names to promote competing fashion retailers under the SHOPBOP mark. Complainant states that this disrupts Complainant’s business in bad faith. The Panel notes Exhibit E and F to see Respondent’s use of the disputed domain names and the third-party links featured on the resolving websites. Previously, the Panel in S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) decided that respondent was using the disputed domain name in bad faith when it was intentionally attracting Internet users to a website that competed with complainant’s business. The Panel, here, therefore finds that Respondent’s use of the <sjopbop.com> and <sh0pbop.com> domain names to resolve to websites featuring competing links as well as attempt to pass itself off as Complainant’s website is bad faith use and registration under Policy ¶ 4(b)(iii).
Complainant claims that Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iv). Complainant contends that Respondent incorporates Complainant’s entire website into Respondent’s websites, thereby creating a false impression of sites that originate with or are sponsored by Complainant. Additionally, Complainant contends that Respondent is attempting to commercially benefit unfairly and opportunistically from the goodwill associate with Complainant’s trademark and by offering commercial links to competing third-party websites. The Panel notes that previous panels have routinely found bad faith use and registration when a respondent uses a domain name to redirect internet users to a website offering identical services as those offered by complainant. See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant). The Panel concludes that Respondent uses the <sjopbop.com> and <sh0pbop.com> domain names in bad faith under Policy ¶ 4(b)(iv).
As discussed under Policy ¶ 4(a)(ii) Complainant also asserts that Respondent’s use of the disputed domain names indicates typosquatting behavior under Policy ¶ 4(a)(iii). Prior panels frequently found that registering and using a typosquatted version of a complainant’s mark indicates bad faith use and registration. See Vanguard Group, Inc. v. IQ Mgmt. Corp., FA 328127 (Nat. Arb. Forum Oct. 28, 2004) (“By engaging in typosquatting, [r]espondent has registered and used the <vangard.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”). The Panel therefore concludes that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant claims that its SHOPBOP mark was registered and well-known prior to Complainant’s registration of the disputed domain names. Complainant explains that because Respondent reproduces complainant’s official website for both of the disputed domain names, it is evident that Respondent registered the domain names with knowledge of Complainant and Complainant’s rights in the SHOPBOP mark. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determine that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sjopbop.com> and <sh0pbop.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: April 9, 2014
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