Carhartt, Inc. v. liu xuemei
Claim Number: FA1701001713347
Complainant is Carhartt, Inc. (“Complainant”), represented by Nicole M. Meyer of Dickinson Wright PLLC, District of Columbia, USA. Respondent is liu xuemei (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <carharttwipshop.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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 Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 19, 2017; the Forum received payment on January 19, 2017.
On January 21, 2017, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <carharttwipshop.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.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 January 23, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 13, 2017 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@carharttwipshop.com. Also on January 23, 2017, 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 February 20, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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, Carhartt, Inc., is a producer and seller of clothing and accessories. Complainant sells goods under the CARHARTT WIP mark. Complainant has rights in the CARHARTT WIP mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 5,023,397, published Sept. 29, 2015, registered Aug. 16, 2016). Respondent’s <carharttwipshop.com> is confusingly similar to Complainant’s mark, as the domain name contains the mark in its entirety—less the space—and merely differs through the addition of the word “shop” and the generic top-level domain name (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <carharttwipshop.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use Complainant’s mark. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the disputed domain name resolves to a website that purports to be an online retail store for Complainant’s goods, and which prominently displays Complainant’s marks in an attempt by Respondent to pass off as Complainant.
Respondent has registered and is using <carharttwipshop.com> in bad faith. Respondent’s registration and use of the disputed domain name is an attempt to pass off as Complainant and disrupt Complainant’s business by confusing Internet users. Further, Respondent had at minimum constructive knowledge of Complainant and its rights in the CARHARTT WIP mark at the time it registered and subsequently used the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Carhartt, Inc., is a producer and seller of clothing and accessories. Complainant sells goods under the CARHARTT WIP mark. Complainant has rights in the CARHARTT WIP mark based upon registration with the USPTO. (Reg. No. 5,023,397, published Sept. 29, 2015, registered Aug. 16, 2016). Respondent’s <carharttwipshop.com> is confusingly similar to Complainant’s mark.
Respondent, liu xuemei, created the <carharttwipshop.com> domain name on August 25, 2016.
Respondent has no rights or legitimate interests in the <carharttwipshop.com> domain name. The <carharttwipshop.com> domain name resolves to a website that purports to be an online retail store for Complainant’s goods, and which prominently displays Complainant’s marks in an attempt by Respondent to pass off as Complainant.
Respondent has registered and is using <carharttwipshop.com> 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(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.”).
Complainant has rights in the CARHARTT WIP mark under Policy ¶ 4(a)(i) based upon registration of the mark with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in that mark. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office).
Respondent’s <carharttwipshop.com> is confusingly similar to the CARHARTT WIP mark under Policy ¶ 4(a)(i), as the domain name contains the mark in its entirety—less the space—and merely differs through the addition of the word “shop” and the gTLD “.com.”
Respondent has no rights or legitimate interests in the <carharttwipshop.com> domain name. Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). Complainant has not authorized Respondent to use the CARHARTT WIP mark. The WHOIS information lists “liu xuemei” as the registrant of the domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA 1613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)).
Respondent has failed to use the <carharttwipshop.com> domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, the disputed domain name resolves to a website that purports to be an online retail store for Complainant’s goods. Attempts to pass off as a complainant show a lack of legitimate rights and interests in a domain name pursuant to Policy ¶ 4(c)(i) or (iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name). Additionally, the offering of goods bearing a complainant’s logos or marks at a disputed domain name is not indicative of rights or legitimate interests in the domain name per Policy ¶¶ 4(c)(i) and (iii), respectively. See Fadal Engineering, LLC v. DANIEL STRIZICH,INDEPENDENT TECHNOLOGY SERVICE INC., FA 1581942 (Forum Nov 13, 2014) (finding that Respondent’s use of the disputed domain to sell products related to Complainant without authorization “does not amount to 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).”).
Respondent registered and uses the <carharttwipshop.com> domain name in bad faith. Use of a disputed domain name to pass off as a complainant is bad faith under Policy ¶ 4(b)(iv). See Tower Labs. Ltd. v. Seltzer, FA 791325 (Forum Oct. 16, 2006) (concluding that the respondent registered and was using the <bromoseltzer.com> domain name in bad faith because it displayed a logo similar to the complainant’s BROMO SELTZER mark, which was likely to confuse the public as to the source of the material exhibited at the respondent’s website). Additionally, the use of a disputed domain name and a complainant’s mark to offer for sale competing or counterfeit goods is evidence of bad faith under Policy ¶¶ 4(b)(iii) and (iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (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 Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”).
Respondent registered the <carharttwipshop.com> domain name with actual knowledge of Complainant’s rights in the CARHARTT WIP mark. Therefore, Respondent registered the domain name in bad faith under Policy ¶ 4(a)(iii). See, e.g., 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.”).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <carharttwipshop.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: March 4, 2017
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page