VIP ME Enterprises LLC Limited Liability Company Nevada
v.
Frank Ma / Vipshop (US) Inc.
Claim Number: FA1611001702016
Complainant is VIP ME ENTERPRISES LLC LIMITED LIABILITY COMPANY NEVADA (“Complainant”), represented by Steven J. Miller of The Miller Law Offices, PLC, Florida, United States of America.
Respondent is FRANK MA / VIPSHOP (US) Inc. (“Respondent”), represented by Aaron S. Eckenthal of Lerner, David, Littenberg, Krumholz & Mentlik LLP, New Jersey, United States of America.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vipme.com> (the “Domain Name”), registered with GoDaddy.com, LLC.
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.
Clive Elliott Q.C. as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 8, 2016; the Forum received payment on November 8, 2016.
On November 9, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the Domain Name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 14, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 5, 2016 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@vipme.com. Also on November 14, 2016, 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.
A timely Response was received and determined to be complete on December 5, 2016.
On December 9, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Clive Elliott Q.C. as Panelist.
On December 12, 2016 the FORUM received a timely additional submission from Complainant in reply to response to Complaint.
On December 19, 2016 the FORUM received an additional submission from Respondent in reply to Complainant’s additional submission. At the time the additional submission was received the Panel had completed the decision and the submission was not taken into account.
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.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it has been using its registered service-mark VIPME (“Complainant’s Mark”) in commerce since April 4, 2013 by advertising third party goods and services on its website <vip-me.net> and also on the Apple Store.
Complainant notes that Respondent company, Vipshop (US) Inc., was incorporated on December 20, 2013. According to the Internet Archive Wayback Machine, the Domain Name was originally owned by a Croatian man, but was dormant from 2003 until 2014. During this 11 year period there was no website housed on the Domain Name and Complainant therefore submits the Domain Name was not used for any valid business purpose.
Complainant asserts that Respondent activated the Domain Name on November 1, 2014, which is after Complainant had filed for registration of Complainant’s Mark.
Complainant further asserts that the Domain Name is being used to advertise goods and services for third parties on the internet, and, because the Domain Name is made up of Complainant’s Mark in its entirety, it is causing confusion in the marketplace.
Complainant contends that Respondent has demonstrated use of the Domain Name in bad faith as Respondent knew, or should have known, that Complainant had applied for its trade mark with the USPTO even before the Respondent chose its company name and filed its Articles of Incorporation with the State of Delaware; and, certainly before Respondent acquired the dormant Domain Name from the Croatian owner.
Complainant notes that despite having made many requests to Respondent to cease and desist use of Complainant’s Mark, Respondent continues to use Complainants Mark in commerce.
Complainant understands that Apple has removed Respondent’s app from its App Store, which Complainant suggests is further evidence of Respondent’s bad faith use of the Domain Name.
B. Respondent
Respondent states that it is a subsidiary of VIP.com, a world-wide fashion flash sale online retailer, and that it operates its website through the Domain Name, offering for sale women’s apparel and accessories.
Respondent denies that the Domain Name causes confusion in the marketplace and contends that Complainant’s Mark is a plain word service mark used in connection with different services unrelated to Respondent’s services, and the goods Complainant sells, caters to a different clientele, and utilizes different channels of trade.
Respondent points out that Complainant’s website at <www.vip-me.net> invites visitors to the website to obtain Complainant’s mobile application (“App”) directing them to the Apple App Store to download the App. The App publishes deals 20%-30% off for VIP bottle services in night clubs. No services or detailed description of services are offered on Complainant’s website in connection with Complainant’s Mark.
Respondent goes on to say that its own website uses a stylized VIPME mark with a distinct visual appearance including a slanting font with an overarching design of a flower. The stylized mark integrates into the overall look and appearance of Respondent’s website to give a luxury appearance.
This stylized mark, Respondent points out, is in contrast with Complainant’s Mark, where it is in the form of “ViPme,” and uses two different fonts in connection with a martini glass. Respondent contends that this does not give the same impression as compared to Respondent’s own use. The overall appearance and feel of Complainant’s website is therefore quite different from that of Respondents.
Respondent denies Complainant’s characterization of its use of the Domain Name is to advertise goods and services for third parties online on the internet, and says further that it uses the Domain Name to provide on-line retail store services to allow its customers access to its website for flash sales of non-branded women’s apparel and women’s fashion products. A visitor to Respondent’s website purchases women’s apparel products directly from Respondent.
Respondent contends that, given the different services offered by Complainant and Respondent, the parties are not in direct or indirect competition and they do not provide overlapping services, and claims that Complainant has not provided evidence to support its allegation of causing confusion.
Respondent notes that Complainant claims Respondent has no rights or legitimate interest in the Domain Name because:
1) Respondent did not exist until December 20, 2013, roughly 8 months after Complainant alleges first use of Complainant’s Mark;
2) that Respondent acquired the Domain Name after Complainant filed for registration of Complainant’s Mark; and
3) that the Domain Name was activated by Respondent on November 1, 2014, two days after Complainant’s Mark was registered.
However, Respondent submits that whilst these facts are true, they are insufficient by themselves to establish a prima facie case that Respondent has no rights or legitimate interest in the Domain Name. Respondent addresses each of Complainant’s allegations more specifically in order to explain why it has a legitimate right and interest to the Domain Name.
Respondent states that it owns and operates a website accessed through the Domain Name, which provides on-line retail store services. Respondent is a subsidiary of VIP.com, which is the largest flash sale online retailer in the world. The use of the Domain Name is an extension of its prior use of “VIP” within a domain name for use in connection with a North American website. For example, Respondent’s parent company is the owner of both VIP.com and VIPSHOP.com domain names, which were registered in 1994 and 2003, respectively. The VIP.com and VIPSHOP.com domain names are associated with websites operated by Respondent’s parent company in China. Respondent has therefore been associated with the use of “VIP” and has used a domain name that includes “VIP” well before the existence of Complainant and before Complainant’s use of Complainant’s Mark.
Respondent further states that it developed a website and launched it through the Domain Name for purposes of reaching customers in North America and making bona fide offering of goods. The website provides on-line retail store services featuring women’s fashion apparel, a subset of goods that is offered through its parent VIP.com. Respondent’s use of the Domain Name is a bona fide offering of goods commensurate in scope with its established business of flash fashion apparel sales.
Respondent states that Complainant has failed to present any evidence that Respondent was aware of the existence of Complainant either at the time Respondent acquired the Domain Name or at the time it launched its website through the Domain Name. And in addition, Complainant fails to set out an explanation or provide any evidence of Respondent’s illegitimate use of the website accessed through the Domain Name.
Respondent argues that the timeline and history of use in commerce of the Domain Name as set out in the Complaint does not establish that Respondent knew or should have known about Complainant’s Mark.
Respondent agrees with Complainant’s assertion that the Domain Name was used in commerce in connection with adult content when it was first registered, but argues that whilst the website featuring adult content ceased to exist and no website was housed through the Domain Name for an extended period of time after, this does not establish that the Domain Name was acquired for purposes of cybersquatting.
Respondent argues that due to the use of VIPME, as a domain name and through its website, in connection with the on-line sales of women’s fashion apparel Respondent has established its own common law trade mark rights to VIPME in the United States. Accordingly, it submits that because of its established trade mark rights, Respondent cannot be considered to be using the Domain Name in bad faith.
Respondent adds that Complainant has not provided any evidence to support its assertion that it had sent many requests to cease and desist use of Complainant’s Mark.
Finally, Complainant asserts bad faith because Apple, Inc. had removed Respondent’s App from the Apple App Store worldwide. In response, Respondent points out that Apple has a procedure to report trade mark infringement through its App store, and attempts to have both parties work directly with each other to resolve the dispute. Following Apple’s removal of Respondent’s App, Respondent responded with a legal letter detailing the fact that there is no trade mark infringement, no confusion and requested that Respondent’s App be reinstated. Respondent has since been notified from Apple by email that its App will be reinstated. Respondent claims that Apple’s decision to restore Respondent’s App shows that no bad faith exists.
C. Complainant Further Submissions
Complainant denies that it has failed to provide evidence that Respondent established its VIPSHOP (US), Inc. entity five months after Complainant had filed its application for Complainant’s Mark. Respondent is a sophisticated entity; its parent is a publically traded entity with a market capitalization of 7.06 Billion US Dollars, and with substantial resources to have properly conducted standard due diligence to have Complainant’s already filed application for VIPME before it chose to purchase the dormant Domain Name.
From the list of goods/services associated with Complainant’s Mark, and from a review of the evidence submitted by Respondent, Complainant asserts that the evidence shows that Respondent is advertising third party’s goods, in this case women’s apparel, on its website, and the advertisement is also one of the covered services under Complainant’s Mark.
Complainant also asserts that Respondent displays Complainant’s Mark in a stylized font on the top of its webpage and use of a stylized font does not evade liability for infringing registered standard character trade mark.
Complainant contends further that Respondent’s assertion that the relevant buying public or consumer would not confuse the source of the goods/services is conclusory and made without submitting any independent expert consumer survey evidence.
Complainant points out that the actual goods/services on its website also show advertisement for third party services, which include apparel.
Complainant asserts that Respondent had offered Complainant US$150,000.00 to purchase all rights in Complainant’s Mark. Complainant believed the actual costs for Complainant to completely rebrand its products/services through its entire chain of third parties would be closer to US$500,000.00 and has declined Respondent’s offer.
Complainant notes that Respondent’s affiliate company filed for the VIPME trade mark in Canada; which includes not only those products/services listed in Complainant’s Mark, but also additional products and services, well beyond what Respondent asserts it is currently advertising on its VIPME.com domain. Included in services referred to in the Canadian trade mark application for VIPME is “Advertising by transmission of on-line publicity for third parties through electronic communications networks”. This is also one of Complainant’s listed services under Complainant’s Mark, and is a core issue in this Domain Name dispute.
Complainant contends that this is evidence that Respondent had prior knowledge of the existence of Complainant’s Mark before it chose to build and expand its advertising for third parties on its Domain Name
Contrary to Respondent’s assertions in its Response, Complainant has set out its prima facie case, with evidence and cited cases, that Respondent is infringing Complainant’s Mark, that Complainant’s actual goods/services do overlap some of Respondent’s goods/services and that Respondent advertises said overlapping products for third parties on VIPME.com.
Complainant claims that any legitimate rights Respondent asserts it has acquired through the use of the Domain Name, were generated by Respondent’s substantial increase in the third party advertised goods services it placed on VIPME.com, well after the Respondent actually knew of Complainant’s Mark in October 2014, and well after Respondent then filed for the same trade mark VIPME with overlapping and expanded products/services in Canada.
In summary Complainant submits that any legitimate interests that Respondent may assert in the Domain Name have been generated fraudulently, improperly and in bad faith.
For the reason set out below Complainant has failed to establish all three elements of the Policy and accordingly the Complaint is denied.
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 trade mark 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.
Complainant claims rights in Complainant’s Mark through its registration with the USPTO (Reg. No. 4,612,288, registered on September 30, 2014). Complainant has provided details of this regsitration in its Annex 1. As such, the Panel accepts that Complainant holds rights in the VIPME mark.
Complainant maintains that the Domain Name uses the VIPME mark either in its entirety or in substance. There is obvious merit in this argument. If the Domain Name is not identical it is at least confusingly similar to Complainant’s Mark.
Respondent contends that the Domain Name is not confusingly similar to Complainant’s Mark because each party uses the mark in differently stylized manners in connection to different types of goods or services. This may be true but it is generally accepted by panels that in relation to this specific ground the particular use of a domain name is not relevant to Policy.
Accordingly, the Panel concludes that the Domain Name is either identical or confusingly similar to a trade mark or service mark in which Complainant has rights, namely Complainant’s Mark.
The next question is whether Complainant has established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)).
Respondent argues that it has been commonly known by the <vipme.com> domain name as it is a subsidiary of “VIP.com,” uses the Domain Name as an extension of this parent company, and such association between subsidiary and parent predates Complainant’s USPTO registration and filing. Respondent has provided information regarding its parent company. Complainant does not satisfactorily challenge this assertion and the Panel finds this evidence sufficient to establish that Respondent, through its parent, has been commonly known by the Domain Name or a name similar thereto. See Digitronics Inventioneering Corp. v. @Six.Net Registered, D2000-0008 (WIPO Mar. 1, 2000) (finding that the respondent was commonly known by the <six.net> and <sixnet.com> domain names even though the complainant had registered the SIXNET trade mark because the respondent demonstrated that its customers associated the respondent’s company with the domain names).
Respondent contends that the Domain Name is used for a legitimate offering of on-line retail services featuring women’s fashion apparel which is unrelated to Complainant’s use of the VIPME mark. Respondent refers to its Annex 1 to demonstrate this use. The Panel considers that, on balance, there is no reliable evidence to show that Respondent’s use of the Domain Name is related to or draws on Complainant’s reputation or on Complainant’s Mark.
On that basis, the Panel considers that Respondent has sufficiently demonstrated rights or legitimate interests in the Domain Name through its use. See Burke Inc v. Leader Techs. LLC, FA 102822 (Forum Mar. 29, 2002) (finding that the respondent’s use of the disputed domain name to offer non-competing goods and services in commerce, starting twelve months prior to the complainant’s registration, was evidence that the respondent had rights or legitimate interests in the disputed domain name).
On that basis, the Panel concludes that Complainant has not established that Respondent lacks rights or legitimate interests in the Domain Name or alternatively that Respondent has such rights or legitimate interests.
Having concluded that Respondent has rights or legitimate interests in the Domain Name pursuant to Policy ¶ 4(a)(ii), the Panel is inclined to find that Respondent did not register or use the Domain Name pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name). However, for the sake of completeness the Panel will address this ground separately.
Respondent contends that the original registration of the Domain Name predates Complainant’s use of the VIPME mark and maintains that Complainant has failed to provide evidence suggesting that Respondent acquired the Domain Name while knowing of or targeting Complainant’s Mark. The Panel accepts that there is a paucity of evidence to support Complainant’s argument on the question of bad faith. On the other hand, Respondent points to prior use of the key part of the Domain Name the initials “VIP” in 1994 and 2003 respectively by its parent company. This was well before any use or registration of Complainant’s Mark by Complainant.
Accordingly, there is no evidence of any disentitling knowledge on Respondent’s part. If anything there is evidence in the other direction. Accordingly, The Panel is unable to draw an inference Respondent targeted Complainant, and thereby registered or acquired the Domain Name in bad faith. See Way Int’l Inc. v. Peters, D2003-0264 (WIPO May 29, 2003) (“As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy. The essence of the complaint is an allegation of bad faith, bad faith targeted at the complainant. For that bad faith to be present, the cybersquatter must have actual knowledge of the existence of the complainant, the trade mark owner.”).
Further, Respondent contends that its use of the Domain Name is not in bad faith because it is a legitimate retail use unrelated to Complainant’s use of the VIPME mark and done without the creation of confusion or competition. Respondent has provided evidence of its use in its Annex 1. Respondent maintains that Complainant has not provided any evidence of confusion or competition. Further, Respondent argues that its use of the Domain Name has been sufficient to demonstrate common law rights in the VIPME mark and that unrelated parties may hold rights in identical marks when used in differing fields. There is merit in this argument, given that Respondent’s parent company used the “VIP” mark in the course of trade, prior to Complainant.
Both parties refer to the purported removal and reinstatement of Respondent’s app from the Apple App store. There is nothing probative in these allegations and counter allegations and the Panel does not take them into account in making this decision.
Accordingly, Complainant has not established this ground.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <vipme.com> domain name REMAIN WITH Respondent.
Clive Elliott Q.C. Panelist
Dated: December 20, 2016
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