Scott Elowitz Photography, LLC v. zhang yinfeng / zhangyinfeng
Claim Number: FA1506001623010
Complainant is Scott Elowitz Photography, LLC (“Complainant”), represented by Lawrence D. Mandel of Gertner Mandel & Peslak, LLC, New Jersey, USA. Respondent is zhang yinfeng / zhangyinfeng (“Respondent”), Peoples Republic of China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lenscoats.com>, registered with Beijing Innovative Linkage Technology Ltd. dba dns.com.cn.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 5, 2015; the Forum received payment on June 5, 2015.
On June 15, 2015, Beijing Innovative Linkage Technology Ltd. dba dns.com.cn confirmed by e-mail to the Forum that the <lenscoats.com> domain name is registered with Beijing Innovative Linkage Technology Ltd. dba dns.com.cn and that Respondent is the current registrant of the name. Beijing Innovative Linkage Technology Ltd. dba dns.com.cn has verified that Respondent is bound by the Beijing Innovative Linkage Technology Ltd. dba 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 June 18, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 8, 2015 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@lenscoats.com. Also on June 18, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On July 15, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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’s Contentions
1. Complainant has registered the LENSCOAT mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,913,970, registered Feb. 1, 2011). The mark is used on or in connection with the manufacture and sale of camera lens covers, tripod covers, camera lens caps, tripod head covers, camera covers, camera flash covers, and camera flash accessory covers. The <lenscoats.com> domain name is confusingly similar to the LENSCOAT mark because the domain name contains the entire mark and differs only by the addition of the letter “s” along with the generic top-level domain (“gTLD”) “.com.”
2. Respondent has no rights or legitimate interests. Respondent is not commonly known as the disputed domain name, nor is Respondent a licensee of Complainant. Respondent has not provided a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. The domain name resolves to a website where Internet users can purchase competing and/or counterfeit products.
3. Respondent has engaged in bad faith registration and use. Respondent has displayed a pattern of bad faith registrations and is disrupting Complainant’s business. Further, Respondent is attempting to commercially profit from a likelihood of confusion, as Internet users are redirected to Respondent’s own website where it sells competing and/or counterfeit versions of Complainant’s products.
B. Respondent’s Contentions
1. Respondent failed to submit a timely response.
1. Respondent’s <lenscoats.com> domain name is confusingly similar to Complainant’s LENSCOAT mark.
2. Respondent does not have any rights or legitimate interests in the <lenscoats.com> domain name.
3. Respondent registered or used the <lenscoats.com> domain name 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 has registered the LENSCOAT mark with the USPTO (e.g., Reg. No. 3,913,970, registered Feb. 1, 2011). The mark is used on or in connection with the manufacture and sale of camera lens covers, tripod covers, camera lens caps, tripod head covers, camera covers, camera flash covers, and camera flash accessory covers. The Panel finds that registration with the USPTO is sufficient to establish rights in a trademark. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”). The Panel also finds that Complainant does not need to register its trademark in the country Respondent operates in. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Complainant argues that the <lenscoats.com> domain name is confusingly similar to the LENSCOAT mark. Complainant notes that the domain name contains the entire mark and differs only by the addition of the letter “s” along with the gTLD “.com.” As a general rule, the Panel may note that a gTLD, such as “.com,” can never distinguish a domain name from the mark at issue. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Also, prior panels have established a confusing similarity where the only difference between the domain name at issue and the trademark at issue is the addition of the letter “s” at the end of the domain name. See Keystone Publ’g., Inc. v. UtahBrides.com, D2004-0725 (WIPO Nov. 17, 2004) (finding that the <utahwedding.com> domain name was confusingly similar to the complainant’s UTAHWEDDINGS.COM mark because the domain name simply lacked the letter “s”). Therefore, the Panel finds that the <lenscoats.com> domain name is confusingly similar to the LENSCOAT 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 asserts that Respondent is not commonly known as the <lenscoats.com> domain name, nor is Respondent in possession of licensing rights that would allow him to use the LENSCOAT mark in domain names. The Panel notes that “zhang yinfeng” is listed as the registrant of record for the disputed domain name. The Panel also notes that the record is devoid of any evidence to indicate that Respondent is either commonly known as the disputed domain name or in possession of licensing rights. Where such a void exists, Respondent cannot have rights or legitimate interests under Policy ¶ 4(c)(ii). 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).
Complainant argues that Respondent’s use of the <lenscoats.com> domain name fails to consist of a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant claims that the domain name is being used to operate a website where competing and/or counterfeit goods are being sold. The Panel notes that the resolving webpage contains hyperlinks that describe camera-related products and, when selected, appear to give Internet users the option to purchase the item described in the hyperlink. For example, a few of the hyperlinks on the resolving webpage read “Canon EF 800mm f/5.6L IS USM Lens Coat Cover,” “Nikon TC-17E III1.7x Teleconverter Lens Coat cover,” and “Sony 500mm F/4 G SSM Lens Coat Cover.” See Compl., at Attached Ex. 6. Where a respondent has used a confusingly similar domain name to sell competing and/or counterfeit products, prior panels have declined to award that respondent rights under both Policy ¶¶ 4(c)(i) and (iii). See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site); see also Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).”). The Panel finds that Respondent is using the domain name to sell competing and/or counterfeit products, and it declines to award that respondent rights under Policy ¶¶ 4(c)(i) or (iii), or both.
Complainant argues that Respondent has engaged in bad faith registration and use. It is claimed that Respondent has displayed bad faith under Policy ¶ 4(b)(ii) because it has been subjected to a UDRP proceeding in the past. On page eight (8) of the Complaint, Complainant cites to FA 1312001524428 and contends that this is a UDRP proceeding to which Respondent was a party. The Panel notes that the decision Complainant has cited is indeed a case where Respondent was a party and where the panel ordered the transfer of the <lenscoat.org> domain name from Respondent to Complainant. See Scott Elowitz Photography, LLC v. zhang yinfeng / Hengshui Fn Fur Trading Co., FA 1534428 (Nat. Arb. Forum Jan. 22, 2014). In the past, panels have found evidence of bad faith where the complainant has shown that the respondent has been name in previous UDRP proceedings. See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations). Therefore, the Panel finds bad faith under Policy ¶ 4(b)(ii).
Complainant claims that Respondent has displayed bad faith under Policy ¶ 4(b)(iii) by disrupting its business. Specifically, Complainant believes that Respondent’s use of the domain name to advertise competing and/or counterfeit products is most disruptive. Again, the Panel notes that the resolving webpage contains hyperlinks that describe camera-related products and, when selected, appear to give Internet users the option to purchase the item described in the hyperlink. For example, a few of the hyperlinks on the resolving webpage read “Canon EF 800mm f/5.6L IS USM Lens Coat Cover,” “Nikon TC-17E III1.7x Teleconverter Lens Coat cover,” and “Sony 500mm F/4 G SSM Lens Coat Cover.” See Compl., at Attached Ex. 6. Where a respondent has used a confusingly similar domain name to sell competing and/or counterfeit products, prior panels have found bad faith under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also 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). The Panel finds that Respondent is using the domain name to sell competing and/or counterfeit products, and it finds bad faith under Policy ¶ 4(b)(iii).
Complainant claims that Respondent has displayed bad faith under Policy ¶ 4(b)(iv) by attempting to commercially profit from a likelihood of confusion. Complainant believes that a likelihood of confusion exists because the domain name contains Complainant’s LENSCOAT mark, and also advertises competing and/or counterfeit goods. Further, Respondent presumably profits every time a sale is made. In the past, panels have found that a likelihood of confusion exists (for purposes of analyzing bad faith under Policy ¶ 4(b)(iv)), and that Respondent is presumably profiting, where the resolving webpage advertises competing and/or counterfeit products. See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark); see also Affliction, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain by creating confusion as to the complainant’s connection with the website by selling counterfeit products). The Panel finds that Respondent is using the domain name to sell competing and/or counterfeit products, and it establishes the existence of a likelihood of confusion, created for commercial gain, bad faith under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lenscoats.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: July 28, 2015
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