Paul Frank Industries LLC v. jianhua li / li jianhua
Claim Number: FA1411001590656
Complainant is Paul Frank Industries LLC (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is jianhua li / li jianhua (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <paulfrankbabybedding.com> and <paulfrankbeddingfull.com>, registered with Bizcn.com,Inc..
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 electronically on November 18, 2014; the National Arbitration Forum received payment on November 18, 2014. The Complaint was submitted in both Chinese and English.
On November 19, 2014, Bizcn.com,Inc. confirmed by e-mail to the National Arbitration Forum that the <paulfrankbabybedding.com> and <paulfrankbeddingfull.com> domain names are registered with Bizcn.com,Inc. and that Respondent is the current registrant of the names. Bizcn.com,Inc. has verified that Respondent is bound by the Bizcn.com,Inc. 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 November 20, 2014, the Forum served the Chinese Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 10, 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@paulfrankbabybedding.com, postmaster@paulfrankbeddingfull.com. Also on November 20, 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 December 17, 2014, pursuant to Complainant's request to have the dispute decided 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 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 uses the PAUL FRANK mark in connection with the operation and marketing of its business as a retailer of a wide array of products, including bedding sets, clothing and sunglasses.
Complainant holds the PAUL FRANK trademark and service mark by means of its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Registry No. 3,726,765, registered December 15, 2009).
Respondent registered the <paulfrankbabybedding.com> domain name on September 24, 2014, and the <paulfrankbeddingfull.com> domain name on October 2, 2014.
The domain names are confusingly similar to Complainant’s PAUL FRANK mark.
Respondent has not been commonly known by either of the domain names.
Respondent is neither licensed nor otherwise authorized to use the PAUL FRANK mark.
Respondent does not provide a bona fide offering of goods or services by means of the domain names, nor does it make a legitimate noncommercial or fair use of either of them.
Respondent uses the domain names to resolve to a commercial website that offers for sale counterfeit versions of Complainant’s products.
This employment of the domain names allows Respondent to attempt to obtain commercial gain by competing with Complainant unfairly.
Respondent lacks rights to or legitimate interests in the domain names.
Respondent’s use of the domain names disrupts Complainant’s business.
Respondent knew of Complainant and its rights in the PAUL FRANK mark when it registered the domain names.
Respondent both registered and uses each of the domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to a trademark and service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of either of the domain names; and
(3) the domain name have been registered and are 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 cancelled 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 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 out 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) (finding that a respondent’s failure to respond allows all reasonable 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 PAUL FRANK trademark and 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 Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005):
Complainant has established rights in the … mark through registration of the mark with … the United States Patent and Trademark Office (‘USPTO’).
This is true without regard to whether Complainant has acquired rights in its mark by reason of its registration in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here China). See, for example, Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a mark be registered in the country in which a respondent operates, it being sufficient that a UDRP complainant can demonstrate rights in its mark in some jurisdiction).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that each of Respondent’s <paulfrankbabybedding.com> and <paulfrankbeddingfull.com> domain names is confusingly similar to Complainant’s PAUL FRANK trademark and service mark. The domain names contain the mark in its entirety, with only deletion of the space between the terms of the mark, and the addition of the generic “baby,” “bedding” and “full,” plus the generic top-level domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain names, do not save them from the realm of confusing similarity under the standards of the Policy. See Warner Bros. Entm’t Inc.; New Line Prods., Inc. & DC Comics v. Procount Bus. Servs., FA 360942 (Nat. Arb. Forum Dec. 22, 2004) (finding that neither the addition of one or more generic terms and a gTLD to the mark of another, nor the omission of spaces between the terms of such a mark in creating a domain name, creates a meaningful distinction between the resulting domain name and the mark within it because “[s]uch additions do not disguise the fact that the dominant features of the domain names are [c]omplainant’s marks, and each domain name is therefore confusingly similar to the marks pursuant to 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 re-spondent 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 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 has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny, that Respondent has not been commonly known by either of the domain names <paulfrankbabybedding.com> and <paulfrankbeddingfull.com>, and that Respondent is neither licensed nor otherwise authorized to use the PAUL FRANK trademark and service mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain names only as “Jianhua Li,” which does not resemble either of the domain names. On this record, we conclude that Respondent has not been commonly known by either of the domain names, and so has failed to show that it has rights to or legitimate interests in either of them as provided in Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the domain name.”).
We next observe that Complainant alleges, without objection from Respondent, that Respondent uses the domain names <paulfrankbabybedding.com> and <paulfrankbeddingfull.com> to attempt to profit by selling counterfeit versions of Complainant’s products, thus to compete unfairly with the business of Complainant. This employment of the domain names is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain names. As a consequence, Respondent has failed to show that it has acquired rights to or legitimate interests in the domain names under Policy ¶¶ 4(c)(i) and 4(c)(iii). See eLuxury.com Inc. v. WangJunJie, FA 1075554 (Nat. Arb. Forum Nov. 30, 2007) (concluding that selling counterfeit products on a website resolving from a domain name that is confusingly similar to the mark of another is evidence that a UDRP respondent is not making 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)).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s use of the contested <paulfrankbabybedding.com> and <paulfrankbeddingfull.com> domain names as alleged in the Complaint disrupts Complainant’s business. Under Policy ¶ 4(b)(iii), this stands as evidence that Respondent registered and uses the domain names in bad faith. See, for example, Louis Vuitton Malletier S.A., L.L.C. v. David, FA 1138296 (Nat. Arb. Forum Mar. 5, 2008) (concluding, under Policy ¶ 4(b)(iii), that a UDRP complainant’s business was disrupted in bad faith by a respondent’s registration and use of a disputed domain name for the purpose of selling counterfeit products).
We are also convinced by the evidence that Respondent registered and uses the <paulfrankbabybedding.com> and <paulfrankbeddingfull.com> domain names, which are confusingly similar to Complainant’s PAUL FRANK trademark and service mark, to attempt to profit by misleading Internet users as to the possibility of Complainant’s affiliation with the resolving website. Under Policy ¶ 4(b)(iv), this too is proof of Respondent’s bad faith in the registration and use of the domain names. See Affliction, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008) (finding, under Policy ¶ 4(b)(iv), that a respondent’s attempt to gain commercially by creating confusion among Internet users as to the possibility of a UDRP complainant’s connection with the website resolving from a contested domain name in order to sell counterfeit products demonstrated bad faith in the registration and use of the domain name); see also Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004):
Respondent [used a domain name] to benefit from the goodwill associated with Complainant’s … marks and us[ed] the … domain name, in part, to provide products similar to those of Complainant. Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
Finally, under this head of the Policy, it is plain from the record that Respondent knew of Complainant and its rights in the PAUL FRANK mark when it registered the disputed domain names. This is further evidence that Respondent registered the domain names in bad faith. See Mycoskie, LLC v. William Kelly, FA 1488105 (Nat. Arb. Forum Apr. 23, 2013):
[T]he Panel finds that, due to Respondent’s use of the domain name to sell counterfeit versions of Complainant’s products, Respondent had actual knowledge of the mark and Complainant's rights.
For all of these reasons, the Panel 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 domain names <paulfrankbabybedding.com> and <paulfrankbeddingfull.com> be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: December 18, 2014
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