LightInTheBox Holding Co., Ltd. v. Zhong Wan / Wanzhongmedia
Claim Number: FA1711001758611
Complainant is LightInTheBox Holding Co., Ltd. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Zhong Wan / Wanzhongmedia (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <lifhtinthebox.com>, <lightihthebox.com>, <lightinthenox.com>, <lightintjebox.com>, <lightinyhebox.com>, and <lighyinthebox.com>, registered with EuroDNS S.A.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 15, 2017; the Forum received payment on November 15, 2017.
On November 16, 2017, EuroDNS S.A. confirmed by e-mail to the Forum that the <lifhtinthebox.com>, <lightihthebox.com>, <lightinthenox.com>, <lightintjebox.com>, <lightinyhebox.com>, and <lighyinthebox.com> domain names are registered with EuroDNS S.A. and that Respondent is the current registrant of the names. EuroDNS S.A. has verified that Respondent is bound by the EuroDNS S.A. 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 20, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 11, 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@lifhtinthebox.com, postmaster@lightihthebox.com, postmaster@lightinthenox.com, postmaster@lightintjebox.com, postmaster@lightinyhebox.com, postmaster@lighyinthebox.com. Also on November 20, 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 December 14, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant was founded in 2007 and is a global online retail company that delivers products directly to consumers around the world. Complainant registered the LIGHT IN THE BOX mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,402,293, registered Dec. 23, 2010). See Compl. Ex. E. Respondent’s <lifhtinthebox.com>, <lightihthebox.com>, <lightinthenox.com>, <lightintjebox.com>, <lightinyhebox.com>, and <lighyinthebox.com> domain names are identical or confusingly similar to Complainant’s mark as they contain Complainant’s mark with either the addition of one character, the removal of one character, one character which is incorrect, or two juxtaposed characters, along with the addition of the generic top-level domain (“gTLD”) “.com.”
ii) Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain names to redirect Internet users to Complainant’s own website in violation of Complainant’s affiliate program, a violation of the affiliate agreement between Complainant and Respondent. See Compl. Ex. H (screenshots of the resolving domains) & Ex. M (copy of the affiliate agreement between Complainant and Respondent).
iii) Respondent registered and uses the disputed domain names in bad faith. Respondent, on the WHOIS page for some or all of the domain names, lists the domain names for sale to the public. See Compl. Ex. I. Further, Respondent is a recalcitrant, serial cybersquatter and has numerous adverse UDRP decisions against it. See Compl. Ex. N (prior UDRP decisions against Respondent). Additionally, Respondent uses the disputed domain names to redirect Internet users to Complainant's own website through Complainant's affiliate program, which is in direct violation of the affiliate agreement which governs Respondent's relationship as an affiliate of Complainant. See Compl. Ex. H & M. Moreover, Respondent’s typosquatting behavior is, in and of itself, evidence of bad faith. Finally, Respondent must have had actual knowledge of Complainant’s rights in the LIGHT IN THE BOX mark as Respondent was a part of Complainant’s affiliate program. See Compl. Ex. H.
B. Respondent
Respondent failed to submit a response in this proceeding. The Panel notes that Respondent registered the disputed domain names on February 11, 2013.
Complainant established that it had rights in the mark contained in the disputed domain names. Each of the disputed domain names is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain names.
Respondent registered and used the disputed domain names 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 claims it registered the LIGHT IN THE BOX mark with the USPTO (e.g. Reg. No. 4,402,293, registered Dec. 23, 2010). See Compl. Ex. E. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has established rights in the LIGHT IN THE BOX mark.
Complainant next argues that Respondent’s disputed domain names are identical or confusingly similar to Complainant’s mark as they contain Complainant’s mark with either the addition of one character, the removal of one character, one character which is incorrect, or two juxtaposed characters, along with the addition of the generic top-level domain (“gTLD”) “.com.” Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See Am. Online, Inc. v. David, FA 104980 (Forum Apr. 10, 2002) (“The misspelling of a famous mark does not diminish the confusingly similar nature between the marks and the disputed domain names.”); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel therefore finds that the disputed domain names are confusingly similar to the LIGHT IN THE BOX 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 (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.”).
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain names. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “ZHONG WAN / WANZHONGMEDIA” as the registrant. See Compl. Ex. I. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the LIGHT IN THE BOX mark. Panels may use these assertions as evidence of lacking rights or legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the domain names prior to their registration, and Complainant has not given Respondent permission to use the disputed domain names. Accordingly, the Panel agrees that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Further, Complainant claims that Respondent uses the disputed domain names to redirect Internet users to Complainant’s own website in violation of Complainant’s affiliate program, and a violation of the affiliate agreement between Complainant and Respondent. Using a disputed domain name to redirect users to a complainant’s own website, and violations of affiliate agreements, can establish a failure to make a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Direct Line Ins. plc v. Low-cost-domain, FA 1337658 (Forum Sept. 8, 2010) (“The Panel finds that using Complainant’s mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant’s actual site, is not consistent with the requirements of Policy ¶ 4(c)(i) or ¶ 4(c)(iii) . . .”); see also Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Forum May 3, 2006) (finding that the respondent’s use of the disputed domain names to divert Internet users attempting to reach the complainant’s website and in breach of the complainant’s affiliate program is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii)).) Complainant provides screenshots of the resolving webpages for the disputed domain names, as well as the affiliate agreement between the parties, both of which corroborate Complainant’s assertions. See Compl. Ex. H (screenshots of the resolving domains) & Ex. M (copy of the affiliate agreement between Complainant and Respondent).
Complainant claims that Respondent offers the disputed domain names for sale. Offering a confusingly similar domain name for sale can evince bad faith registration under Policy ¶ 4(b)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”). Complainant points to the WHOIS registration pages for the domain names, which displays the message “The owner of the domain you are researching has listed it for sale” for all of the domain names. See Compl. Ex. I. Accordingly, the Panel uses Respondent’s offering of the domain name for sale to the general public as evidence of bad faith registration per Policy ¶ 4(b)(i).
Complainant further argues that Respondent registered the disputed domain names in bad faith as Respondent has a propensity for registering confusingly similar domain names and has prior adverse UDRP decisions against it. A complainant may use prior adverse UDRP decisions against a respondent in the current proceeding to evince bad faith under Policy ¶ 4(b)(ii). See Fandango, LLC v. 21562719 Ont Ltd, FA1209001464081 (Forum November 2, 2012) (“Respondent’s past conduct and UDRP history establishes a pattern of registered domain names in bad faith under Policy ¶ 4(b)(ii).”). Complainant provides examples of previous adverse UDRP decisions against Respondent. See Compl. Ex. N. Accordingly, the Panel finds that Respondent registered the disputed domain name in bad faith based on Respondent’s prior adverse UDRP decisions against it.
Additionally, Complainant claims that Respondent uses the disputed domain names to redirect Internet users to Complainant's own website through Complainant's affiliate program, directly violating the affiliate agreement which governs Respondent's relationship as an affiliate of Complainant. Redirecting users to a complainant’s own domain in violation of an affiliate agreement can establish bad faith under Policy ¶ 4(a)(iii). See Verizon Trademark Servs. LLC v. Boyiko, FA 1382148 (Forum May 12, 2011) (“The Panel finds that Respondent’s registration and use of the confusingly similar disputed domain name, even where it resolves to Complainant’s own site, is still registration and use in bad faith pursuant to Policy ¶ 4(a)(iii).”); see also LifeLock v. Sparta Trading S.A., FA1408001577367 (Forum Oct. 14, 2014) (“Respondent is using the disputed domain name to redirect Internet users to Complainant’s website, which is a violation of its affiliate agreement with Complainant. Therefore, Respondent is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii).”). As noted previously, Complainant provides screenshots of the resolving webpages and the affiliate agreement between Complainant and Respondent, which, again, corroborates Complainant’s allegations. See Compl. Ex. E & H. As such, the Panel holds that Respondent, by redirecting Internet users to Complainant’s own website in violation of the affiliate agreement between the parties, registered and used the domain names in bad faith.
Moreover, Complainant contends that by substituting various letters with letters in Complainant’s mark, Respondent engages in typosquatting. A finding of typosquatting can evince bad faith under Policy ¶ 4(a)(iii). See Adorama, Inc. v. Moniker Privacy Services, FA1503001610020 (Forum May 1, 2015) (“Respondent has also engaged in typosquatting, which is additional evidence of bad faith registration and use under Policy ¶ 4(a)(iii). Respondents who capitalize on common typing errors engage in bad faith registration under Policy ¶ 4(a)(iii).”). All of Respondent’s domain names contain one misspelling of Complainant’s mark by removing a letter and replacing it with a letter in close proximity on a generic keyboard. Thus, the Panel agrees and finds that Respondent’s changes to Complainant’s mark constitutes typosquatting, further evincing bad faith by Respondent.
Finally, Complainant claims that Respondent had actual knowledge of Complainant’s LIGHT IN THE BOX mark. Actual knowledge of a complainant’s mark prior to registration of a confusingly similar domain name can evince bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Complainant contends that Respondent must have had actual knowledge of the LIGHT IN THE BOX mark as Respondent was a part of Complainant’s affiliate program. See Compl. Ex. H. The Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating 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 <lifhtinthebox.com>, <lightihthebox.com>, <lightinthenox.com>, <lightintjebox.com>, <lightinyhebox.com>, and <lighyinthebox.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: December 19, 2017
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