Kipling Apparel Corp. v. Yan Feng Geng
Claim Number: FA1611001703296
Complainant is Kipling Apparel Corp. (“Complainant”), represented by Susan M. Kayser of JONES DAY, District of Columbia, USA. Respondent is Yan Feng Geng (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kiplingstores.com>, registered with HiChina Zhicheng Technology Limited.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 16, 2016; the Forum received payment on November 18, 2016.
On November 18, 2016, HiChina Zhicheng Technology Limited confirmed by e-mail to the Forum that the <kiplingstores.com> domain name is registered with HiChina Zhicheng Technology Limited and that Respondent is the current registrant of the name. HiChina Zhicheng Technology Limited has verified that Respondent is bound by the HiChina Zhicheng Technology Limited 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 22, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 12, 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@kiplingstores.com. Also on November 22, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On December 16, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
Policy ¶ 4(a)(i)
Complainant has rights in the KIPLING mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,159,124, registered May 19, 1998). Respondent’s <kiplingstores.com> domain name is confusingly similar to the KIPLING mark because it contains the mark along with the generic or descriptive term “stores.”
Policy ¶ 4(a)(ii)
Respondent is not commonly known by the <kiplingstores.com> domain name because it is not authorized to use the KIPLING mark and because the available WHOIS information does not indicate being so known. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website is used to purportedly sell Complainant’s products in a manner designed to pass off as being operated by Complainant.
Policy ¶ 4(a)(iii)
Respondent uses the <kiplingstores.com> domain name in bad faith because the resolving website purports to sell Complainant’s products and is used to pass off as Complainant. Respondent registered the <kiplingstores.com> domain name in bad faith because it did so more than 25 years after Complainant began using the KIPLING mark and through the use of a privacy service.
B. Respondent
Respondent failed to submit a Response in this proceeding. However, on
November 19, 2016 the Forum received an email communication from Respondent in the following form:
“Hello, I am a college student, just learn to this website, very sorry for this domain name, is similar to the brand keywords, before that, I don't know, just website for the first time, also a sense of achievement, oneself originally can make such a website, don't know will affect the interests of the brands, could you tell me how to go to my side need to do, very sorry,...”.
Panel Note: Supported Language Request
The Panel notes that Complainant makes a request that the language of this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Chinese language Registration Agreement. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would evince a familiarity with the English language, filing of a trademark registration with an entity which evinces an understanding of the English language, and any evidence (or lack thereof) evincing Respondent’s understanding of the Chinese language included in the Registration Agreement. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). Further, the Panel must weigh the relative time and expense in enforcing the Chinese language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”).
Complainant makes the following arguments:
Respondent’s familiarity with English is evidenced by its use of an English-language domain name consisting of Complainant’s mark KIPLING and the English word “stores”; the fact that its website is written in English and targeted to English speaking customers (See Exhibit F); and that Respondent has communicated with the Case Coordinator in English (See Exhibit I). The time and expense for Complainant to conduct the proceedings in Chinese and to enforce the Chinese language registrar agreement also favors conducting this proceeding in English. Complainant would be prejudiced if it was required to conduct the proceeding in Chinese, and Registrant, who understands and can communicate in English, will not be prejudiced if this proceeding is conducted in English.
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likelihood that Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
1. Complainant is a prominent United States company engaged in the manufacture, distribution, and retail of high-quality bags, luggage and accessories.
2. Complainant has rights in the KIPLING mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,159,124, registered May 19, 1998).
3. Respondent registered the <kiplingstores.com> domain name on April 20, 2015.
4. The website to which the disputed domain name resolves is used purportedly to sell Complainant’s products in a manner designed to pass itself off as being operated by Complainant.
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(f), 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 (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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant claims rights in the KIPLING mark through its registration with the USPTO (Reg. No. 2,159,124, registered May 19, 1998) which it uses for the manufacture, distribution, and retail of high-quality bags, luggage and accessories. Complainant has provided this registration in Exhibit B. Accordingly, the Panel finds that Complainant has rights in the KIPLING mark. See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i).).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s KIPLING mark. Complainant urges that Respondent’s <kiplingstores.com> domain name is confusingly similar to the KIPLING mark because it contains the mark along with the term “stores.” The Panel notes that the domain name also contains the gTLD “.com.” Complainant maintains that the term “stores” is generic or descriptive, and, therefore, of no consequence for the purpose of the present comparison. As the Panel agrees, it finds the <kiplingstores.com> domain name confusingly similar to the KIPLING mark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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 (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 (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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a)Respondent has chosen to take Complainant’s KIPLING trademark and to use it in its domain name, adding only the word “stores” which suggests that the domain name relates to the stores from which Complainant sells its products;
(b) Respondent registered the disputed domain name on April 20, 2015 and has used it to resolve to a website used purportedly to sell Complainant’s products in a manner designed to pass itself off as being operated by Complainant;
(c)Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant maintains that Respondent is not commonly known by the <kiplingstores.com> domain name because it is not authorized to use the KIPLING mark and because the available WHOIS information does not indicate being so known. Complainant has provided the WHOIS record, in Exhibit H, listing “Yan Feng Geng” as Registrant. As the Panel finds a lack of contrary evidence, it agrees that Respondent has not been commonly known by the <kiplingstores.com> domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark);
(e) Complainant contends that Respondent fails to use the <kiplingstores.com> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website is used to sell Complainant’s products in a manner designed to pass itself off as being operated by Complainant. Complainant has provided screenshots of its own website in Exhibit C and of the resolving website in Exhibit F to demonstrate this use. Complainant maintains that any products sold through the website are either counterfeit versions of Complainant’s goods or genuine products being resold without permission. Complainant urges that Respondent’s website uses a similar layout to Complainant’s website as well as the use of Complainant’s slogan and mark. The Panel has examined Respondent’s website and finds that Complainant’s arguments are valid. As the Panel agrees with these arguments, it finds that Respondent’s use of the <kiplingstores.com> domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. See Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015) (finding no bona fide offering of goods or legitimate noncommercial or fair use existed where Respondent used the resolving website to sell products branded with Complainant’s MERRELL mark, and were either counterfeit products or legitimate products of Complainant being resold without authorization); see also Kmart of Mich., Inc. v. Cone, FA 655014 (Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).
All of these matters go to make out the prima facie case against Respondent.
Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it. However, as previously noted, on
November 19, 2016 the Forum received an email communication from Respondent in the following form:
“ Hello, I am a college student, just learn to this website, very sorry for this domain name, is similar to the brand keywords, before that, I don't know, just website for the first time, also a sense of achievement, oneself originally can make such a website, don't know will affect the interests of the brands, could you tell me how to go to my side need to do, very sorry,...”.
This communication does not address the substantive issues in the case and accordingly cannot be used as a basis for a finding that Respondent has rebutted the prima facie case against it.
The Panel therefore finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant claims that Respondent uses the <kiplingstores.com> domain name in bad faith because the resolving website purports to sell Complainant’s products. Complainant maintains that any products sold through the website are either counterfeit or genuine products being resold without authorization. Complainant has provided screenshots of its own website in Exhibit C and of the resolving website in Exhibit F to demonstrate this use. As the Panel finds this evidence sufficient, it agrees that this use is in bad faith. See H-D U.S.A., LLC v. Janis Vecvanags, FA1503001608165 (Forum Apr. 6, 2015) (holding that the respondent’s use of the disputed domain name to sell counterfeit HARLEY-DAVIDSON products disrupted the complainant’s business and indicated bad faith under Policy ¶ 4(b)(iii)); see also Fossil, Inc. v. NAS, FA 92525 (Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant).
Secondly, Complainant submits that Respondent uses the <kiplingstores.com> domain name in bad faith because the resolving website is used to pass itself off as Complainant. Complainant has provided screenshots of its own website in Exhibit C and of the resolving website in Exhibit F to demonstrate that Respondent uses a similar layout to that used by Complainant as well as Complainant’s slogan and KIPLING mark. As the Panel finds this sufficient to demonstrate that Respondent attempts to pass itself off as Complainant, it may agree that such use is done in bad faith. See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness).
Thirdly, Complainant then argues that Respondent registered the <kiplingstores.com> domain name in bad faith because it did so more than 25 years after Complainant began using the KIPLING mark. As the Panel finds this argument sufficient to demonstrate that Respondent had actual knowledge of Complainant’s rights in the KIPLING mark at the time of domain name registration, it finds that such registration was done in bad faith. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
Fourthly, Complainant claims that Respondent registered the <kiplingstores.com> domain name in bad faith because it did so through the use of a privacy service. The consensus view amongst panels is that use of a privacy service, without more, cannot reach the threshold of bad faith registration and use. See WWF-World Wide Fund for Nature aka WWF International v. Moniker Online Services LLC and Gregory Ricks, D2006-0975 (WIPO November 1, 2006) (finding use of proxy registration service does not of itself indicate bad faith; there are many legitimate reasons for proxy registration services); see also Divex Limited v. ZJ, Sam Chang and Tim NG, D2007-0861 (WIPO September 21, 2007) (finding privacy services may be justified by the need to avoid spam and identity theft). However, the totality of the circumstances which surround a respondent’s engagement of a privacy service may give rise to a finding of bad faith registration and use. See, e.g., HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, D2007-0062 (WIPO June 4, 2007) (finding a change of privacy service after notice of complaint indicative of bad faith); see also Sermo, Inc. v. CatalystMD, LLC, D2008-0647 (WIPO July 2, 2008) (stating that use of privacy shield can be “treated as evidence of bad faith . . . when serial registrants use privacy shields to mask each registrant’s actual date of registration”). Therefore, as the Panel agrees that Respondent has utilized a privacy shield in a manner which materially adversely affects or obscures the facts of this proceeding, it finds that Respondent has registered and used the disputed domain name in bad faith under 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 <kiplingstores.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC ,
Panelist
Dated: December 20, 2016
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