Casper Sleep, Inc. v. YinSi BaoHu Yi KaiQi (Hidden by Whois Privacy Protection Service)
Claim Number: FA1609001695326
Complainant is Casper Sleep, Inc. (“Complainant”), represented by Aaron D. Hendelman of Wilson Sonsini Goodrich & Rosati, California, USA. Respondent is YinSi BaoHu Yi KaiQi (Hidden by Whois Privacy Protection Service) (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <casperchina.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 Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 23, 2016; the Forum received payment on September 23, 2016.
On September 27, 2016, HiChina Zhicheng Technology Limited confirmed by e-mail to the Forum that the <casperchina.com> domain name is registered with HiChina Zhicheng Technology Limited and that Respondent is the current registrant of the names. 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 October 3, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 24, 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@casperchina.com. Also on October 3, 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 November 1, 2016, 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.
Panel Note: Supported Language Request
Complainant requests that the language of this administrative proceeding proceed in the English language. Complainant makes this request in light of the Chinese language Registration Agreement. Pursuant to UDRP Rule 11(a), the Panel concludes that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. Therefore, the Panel decides that the proceeding should be in English.
A. Complainant
Complainant operates a direct-to-consumer bedding business. In the pursuit of its business efforts, Complainant has used the CASPER mark, and has registered the mark with a number of governmental authorities, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,762,027, filed March 27, 2014, registered June 15, 2015). Complainant therefore has rights in the mark. Respondent’s <casperchina.com> incorporates the CASPER mark entirely, and merely adds (a) the geographical term “China,” and (b) the “.com” generic top-level domain (“gTLD”), creating confusing similarity.
Respondent has no rights or legitimate interests in <casperchina.com>. Respondent has not acquired any trademark rights in the CASPER mark and is not commonly known by <casperchina.com>. Respondent operates the website associated with <casperchina.com> as a scam in pursuit of the following ends: (a) selling counterfeit mattresses and promising fraudulent services, (b) copying the look and feel of Complainant’s website to cause confusion among Internet users, or (c) inactively hold the domain name. Therefore, Respondent has not provided any use which may support a finding of a bona fide offering of goods or services or any legitimate noncommercial or fair use.
Respondent registered and used <casperchina.com> in bad faith. The copying of the look and feel of Complainant’s offerings, along with the incorporation of Complainant’s CASPER mark on the resolving website, presumably to offer counterfeit mattresses or services, suggests a bad faith intent to disrupt the business of Complainant per Policy ¶ 4(b)(iii), and to confuse Internet users for monetary gain per Policy ¶ 4(b)(iv). Further, in light of the mimicry Respondent has engaged in, Respondent likely had actual or constructive knowledge when registering and using the domain name under Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Casper Sleep, Inc., operates a direct-to-consumer bedding business. Complainant has rights in the CASPER mark through registration with a number of governmental authorities, including the USPTO (e.g., Reg. No. 4,762,027, filed March 27, 2014, registered June 15, 2015). Complainant therefore has rights in the mark. Respondent’s <casperchina.com> incorporates the CASPER mark entirely, and merely adds (a) the geographical term “China,” and (b) the “.com” generic top-level domain (“gTLD”), creating confusing similarity.
Respondent, YinSi BaoHu Yi KaiQi (Hidden by Whois Privacy Protection Service), registered the <casperchina.com> domain name on May 12, 2015.
Respondent has no rights or legitimate interests in <casperchina.com>. Respondent has not acquired any trademark rights in the CASPER mark and is not commonly known by <casperchina.com>. Respondent operates the website associated with <casperchina.com> as a scam in pursuit of the following ends: (a) selling counterfeit mattresses and promising fraudulent services, (b) copying the look and feel of Complainant’s website to cause confusion among Internet users, or (c) inactively hold the domain name. Therefore, Respondent has not made a bona fide offering of goods or services or any legitimate noncommercial or fair use of the domain name.
Respondent registered and used <casperchina.com> in bad faith. The copying of the look and feel of Complainant’s offerings, along with the incorporation of Complainant’s CASPER mark on the resolving website, presumably to offer counterfeit mattresses or services, shows a bad faith intent to disrupt the business of Complainant under Policy ¶ 4(b)(iii), and to confuse Internet users for monetary gain under Policy ¶ 4(b)(iv). Further, Respondent had actual knowledge when registering and using the domain name. Therefore, Respondent acted in bad faith under Policy ¶ 4(a)(iii).
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 CASPER mark through registration with a number of governmental authorities, including the USPTO. 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.). The relevant date of such rights dates back to the registered mark’s filing date. See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1 1589962 (Forum Jan. 1, 2015) (“The Panel finds that Complainant’s valid registration with the USPTO demonstrates Complainant’s rights in the CHEAPCARIBBEAN.COM mark, and that such rights extend back to the Feb. 7, 2007 filing date.”). Therefore, the Panel finds that Complainant has rights in the CASPER mark which date back to the mark’s filing date with the USPTO of March 27, 2014.
Respondent’s <casperchina.com> incorporates the CASPER mark entirely, and merely adds (a) the geographical term “China,” and (b) the “.com” generic top-level domain (“gTLD”). Therefore, Respondent’s domain name is confusingly similar to Complainant’s CASPER mark under Policy ¶ 4(a)(i).
Respondent has no rights or legitimate interests in <casperchina.com>. Respondent has not acquired any trademark rights in the CASPER mark. Respondent is not commonly known by <casperchina.com> under Policy ¶ 4(c)(ii). The WHOIS information for the <casperchina.com> domain name lists “YinSi BaoHu Yi KaiQi (Hidden by Whois Privacy Protection Service)” as registrant. See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).
Respondent operates the website associated with <casperchina.com> as a scam in pursuit of the following ends: (a) selling counterfeit mattresses and promising fraudulent services, (b) copying the look and feel of Complainant’s website to cause confusion among Internet users, or (c) inactively hold the domain name. Panels have determined that imitating the look and feel of a complainant’s web offerings, or offering counterfeit goods/services, cannot establish rights and legitimate interests. See Dream Horse Classifieds v. Mosley, FA 381256 (Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)); see also 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 the products were either counterfeit products or legitimate products of Complainant being resold without authorization). Therefore, the Panel concludes that Respondent has not demonstrated any bona fide offering of goods or services or any legitimate noncommercial or fair use of the domain name.
Respondent registered and used <casperchina.com> in bad faith. Respondent’s copying of the look and feel of Complainant’s offerings, along with the incorporation of Complainant’s CASPER mark on the resolving website, presumably to offer counterfeit mattresses or services, shows a bad faith intent to disrupt the business of Complainant per Policy ¶ 4(b)(iii), and to confuse Internet users for monetary gain per Policy ¶ 4(b)(iv). See H-D U.S.A., LLC v. Linchunming / linchunming, FA1411001589214 (Forum Dec. 22, 2014) (“As mentioned above, Respondent uses the domain name to promote counterfeit goods like those offered by Complainant. Doing so disrupts Complainant’s business and demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iii).”); see also H-D Michigan, LLC v. Ross, FA 1250712 (Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion). Accordingly, Respondent has engaged in bad faith to divert Internet users away from Complainant’s web offerings to purportedly sell counterfeit versions of Complainant’s products, thereby causing disruption per Policy ¶ 4(b)(iii) and attraction for commercial gain as per Policy ¶ 4(b)(iv).
Further, Respondent had actual knowledge of Complainant’s CASPER mark when registering and using the domain name. Therefore, Respondent acted in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
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 <casperchina.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: November 15, 2016
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