ModCloth, Inc. v. jeonggon seo
Claim Number: FA1507001629104
Complainant is ModCloth, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is jeonggon seo (“Respondent”), Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <modecloth.com>, registered with HANGANG Systems, Inc. dba Doregi.com.
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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 16, 2015; the Forum received payment on July 16, 2015. The Complaint was received in both Korean and English.
On July 16, 2015, HANGANG Systems, Inc. dba Doregi.com confirmed by e-mail to the Forum that the <modecloth.com> domain name is registered with HANGANG Systems, Inc. dba Doregi.com and that Respondent is the current registrant of the name. HANGANG Systems, Inc. dba Doregi.com has verified that Respondent is bound by the HANGANG Systems, Inc. dba Doregi.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 July 27, 2015, the Forum served the Korean language Complaint and all Annexes, including a Korean Language Written Notice of the Complaint, setting a deadline of August 17, 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@modecloth.com. Also on July 27, 2015, the Korean 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 Forum transmitted to the parties a Notification of Respondent Default.
On August 19, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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
Complainant, ModCloth, Inc. is an American online retailer that specializes in vintage and vintage-inspired clothing, accessories, and décor. Complainant owns the MODCLOTH mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,760,045, first used in commerce June 28, 2002, filed Feb. 12, 2009, registered March 16, 2010), and Complainant further supports its rights in the mark through a showing of common law rights dating back to 2002. The <modecloth.com> domain name is confusingly similar to the MODCLOTH mark. The domain name merely inserts the letter “e” into Complainant’s mark and adds the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the disputed domain name for several reasons. First, Respondent is not commonly known by the disputed domain name, as the WHOIS record for the disputed domain name suggests Respondent is known as an entity other than the disputed domain name. Second, Complainant has not given Respondent permission to use the MODCLOTH mark in its domain name, nor is Respondent sponsored or legitimately affiliated with Complainant in any way. Third, Respondent uses the <modecloth.com> domain name to feature generic links to third-party websites, some of which directly compete with Complainant’s business. See Compl., at Attached Ex. H. Such use demonstrates Respondent’s lack of rights or legitimate interests in the <modecloth.com> domain name, as Respondent has failed to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent has engaged in bad faith registration and use of the <modecloth.com> domain name. Respondent has listed the disputed domain name for sale in violation of Policy ¶ 4(b)(i). Further, Respondent is a recalcitrant, serial cybersquatter and has engaged in an ongoing pattern of such behavior. Respondent’s use of the disputed domain name disrupts Complainant’s business by diverting Internet customers seeking Complainant’s website. Additionally, Respondent intentionally attracts, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark. Finally, Respondent has engaged in typosquatting, which is evidence of bad faith under Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding. The <modecloth.com> domain name was registered December 5, 2008.
As the Respondent has failed to file a Response in this matter, the Panel makes its determination based on the undisputed and reasonable allegations of the Complainant. As such, the Panel finds that the disputed domain name is confusingly similar to Respondent’s registered and common law trademark, that the Respondent has no rights or legitimate interests in or to the disputed domain name, and that the Respondent has continued here in its pattern of bad faith use and registration of the disputed domain name.
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.”).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s registered and common law trademark. The Respondent arrives at the disputed domain name by merely adding an “e” and the gTLD “.com” to Complainant’s mark. As the Complainant has secured a trademark registration for its MODCLOTH trademark (Reg. No. 3,760,045, first used in commerce June 28, 2002, filed Feb. 12, 2009, registered March 16, 2010), it is in possession of a valid trademark claim.
If the Respondent had filed a Response, it may have been able to claim that it registered the disputed domain name prior to the issuance of Complainant’s registered trademark. However, the Complainant has adequately proven that it has trademark rights emanating back to June of 2002, its date of first use. Complainant has clearly established that it had secondary meaning in the trademark MODCLOTH prior to Respondent’s registration of the disputed domina name. Complainant has shown that in 2012, it made over $100 million in revenue which showed a 40% year over year growth in the same year. That is, it has established that it has had success in the marketplace using its trademark. Further, Complainant has been featured in fashion magazines such as Lucky, Cosmopolitan, Glamour, InStyle, and Seventeen. That is, Complainant has been successful in receiving unsolicited media coverage. Complainant explains that with its rapid success and popularity, the company has been recognized from business publications such as Forbes Small Business/CNN Money, Inc. Magazine, The New York Times, and Fortune. See Compl., at Attached Ex. G. Complainant states that it enjoys wide consumer recognition and acceptance of its brands, and has spent millions of dollars in advertisement and promotion. Such efforts support a finding that it has had secondary meaning in its mark far prior to Respondent’s registration of the disputed domain name.
Therefore, the Panel finds that the Complainant has adequate and valid trademark rights to bring this claim and that the disputed domain name is confusingly similar to that registered and common law trademark.
The Panel finds that the Respondent has no rights or legitimate interests in or to the disputed domain name. First, Respondent is not commonly known by the disputed domain name, as the WHOIS record for the disputed domain name suggests Respondent is known as an entity other than the disputed domain name. The Complainant’s Attached Exhibit I demonstrates that the named registrant for Respondent’s WHOIS record refers to “jeonggon seo.” Second, the Respondent has not received permission to use the MODCLOTH mark in its domain name, nor is Respondent sponsored or legitimately affiliated with Complainant in any way. Lacking any evidence from Respondent that might prove it is commonly known by the disputed domain name, the Complainant’s contentions are sufficient to establish Respondent’s lack of rights to the disputed domain name according to Policy ¶ 4(c)(ii).
Complainant adequately establishes that Respondent’s use of the <modecloth.com> domain name, in which Respondent features generic links to third-party websites, some of which directly compete with Complainant’s business, is with no rights or legitimate interests. See Compl., at Attached Ex. H. Respondent lacks of rights or legitimate interests in the <modecloth.com> domain name because Respondent has failed to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Some of the hyperlinks reached through Respondent’s resolving website include “50 Vintage Dresses,” Ladies Fashion Clothes,” and “Latest Style Dresses.” Id. Past panels have found that the use of hyperlinks to redirect Internet users to a complainant’s competitors is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively. See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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)).
Accordingly, the Panel finds that Respondent’s use of the disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii), respectively and therefore it has no rights or legitimate interests in or to the disputed domain name.
Complainant alleges that Respondent has listed the disputed domain name for sale in violation of Policy ¶ 4(b)(i). The Complainant’s Attached Exhibit I shows that a WHOIS search for the disputed domain name reveals that “ModeCloth" is for sale!” Past panels have found that the general offer to sell a disputed domain name is evidence of bad faith under ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”). The Panel finds that Respondent’s general offer to sell the disputed domain name constitutes bad faith under Policy ¶ 4(b)(i).
Further, Complainant contends that Respondent is a recalcitrant, serial cybersquatter and has engaged in an ongoing pattern of such behavior. According to Complainant, Respondent has engaged in a pattern of cybersquatting and typosquatting and has been involved in numerous prior UDPR proceedings. Complainant has provided examples of adverse UDRP decisions against Respondent in its Attached Exhibit N. See Adorama, Inc. v. jeonggon seo, FA 1508789 (Nat. Arb. Forum Aug. 26, 2013); Lenovo (Beijing) Limited Corporation China v. jeonggon seo, FA 1591638 (Nat. Arb. Forum Jan. 16, 2015; The Gap, Inc. v. jeonggon seo, FA 1504399 (Nat. Arb. Forum July 19, 2013). Prior panels have agreed that having multiple prior UDRP decisions that result in findings of bad faith or transfer indicate a respondent’s bad faith registration. See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”).
As such, it appears that Respondent has simply continued its serial bad faith use and registration of disputed domain names. Therefore, the Panel finds that Respondent has engaged in bad faith under Policy ¶ 4(b)(ii).
According to Complainant, Respondent’s use of the disputed domain name disrupts Complainant’s business by diverting Internet customers seeking Complainant’s website. Complainant asserts that the pay-per-click links displayed on the resolving websites promote products that compete with Complainant, and these links divert potential customers away from Complainant to third-party websites, which disrupts Complainant’s business. Previous panels have found that competing hyperlinks result in a disruption to a complainant’s business, which is evidence of bad faith under Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
As such, the Panel concludes that Respondent’s use of competing hyperlinks demonstrates evidence of bad faith use and registration under Policy ¶ 4(b)(iii).
Additionally, Complainant insists that Respondent intentionally attracts, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark. Complainant argues that, as Respondent’s website features pay-per-click hyperlinks, Respondent presumably receives revenue through click through fees. As such, Complainant argues that Respondent has registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv) by using the <modecloth.com> domain name to mislead consumers for profit. Past panels have agreed that using a disputed domain name to feature competing hyperlinks on the resolving website demonstrates bad faith registration and use. See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Accordingly, the Panel finds that Respondent has engaged in bad faith use and registration of the disputed domain name under Policy ¶ 4(b)(iv).
Finally, Complainant asserts that Respondent has engaged in typosquatting, which is evidence of bad faith under Policy ¶ 4(a)(iii). Internet users merely need to mistype only one character to be mistakenly directed to Respondent’s website rather than Complainant’s. Past panels have found that respondents who take advantage of common typing errors engage in bad faith use and registration under Policy ¶ 4(a)(iii). See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form).
Accordingly, the Panel finds that Respondent’s typosquatting conduct is additional evidence of bad faith use and registration pursuant to Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <modecloth.com> domain name be transferred from the Respondent to the Complainant.
Kenneth L. Port, Panelist
Dated: August 29, 2015
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