Helen of Troy Limited v. Chen Xi Long
Claim Number: FA1708001743070
Complainant is Helen of Troy Limited (“Complainant”), represented by David J. Stewart of Alston & Bird LLP, Georgia, USA. Respondent is Chen Xi Long (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hydroflask.store>, registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE 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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 4, 2017; the Forum received payment on August 4, 2017.
On August 08, 2017, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED confirmed by e-mail to the Forum that the <hydroflask.store> domain name is registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED and that Respondent is the current registrant of the name. ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED has verified that Respondent is bound by the ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE 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 August 17, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 6, 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@hydroflask.store. Also on August 17, 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 September 11, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn appointed 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.
Supported Language Request
The Panel notes that Complainant requests 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 demonstrate familiarity with the English language, filing of a trademark registration with an entity which shows an understanding of the English language, and any evidence (or lack thereof) exhibiting 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 weighs 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 contends that Respondent is conversant in English because the registration agreement is available on the Registrar’s website in four languages, including English. Additionally, the resolving website is written entirely in English and purports to sell Complainant’s goods in U.S. dollars.
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Helen of Troy Limited, is a global consumer products company which designs, develops and markets a large number of well-recognized and widely trusted brands. Complainant uses its HYDRO FLASK mark to promote its business. Complainant registered the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,055,784, registered Nov. 15, 2011). Respondent’s <hydroflask.store> domain name is identical to Complainant’s mark because it eliminates the spacing in the mark and appends the descriptive top-level domain (“TLD”) “.store.”
Respondent does not have rights or legitimate interests in the disputed domain name. Complainant has not licensed or otherwise authorized Respondent to use its HYDRO FLASK mark in any fashion, and Respondent is not commonly known by the domain name. Respondent is not using the <hydroflask.store> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent attempts to pass itself off as Complainant and offers counterfeit versions of Complainant’s products for purchase.
Respondent has registered and is using the <hydroflask.store> domain name in bad faith. Respondent’s registration was intended to prevent Complainant from registering the <hydroflask.store> domain name. Respondent attempts to attract Internet traffic and commercially benefit from the goodwill of the HYDRO FLASK mark by creating confusion as to the source, sponsorship, affiliation, or endorsement of its website by purporting to sell Complainant’s products. Further, Respondent has engaged a privacy service to conceal its true identity.
B. Respondent
Respondent failed to submit a Response in this proceeding. The Panel notes that the<hydroflask.store> domain name was registered on April 7, 2017.
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 contends it has rights in the HYDRO FLASK mark due to its registration with the USPTO (e.g. Reg. No. 4,055,784, registered Nov. 15, 2011). Registration of a mark with a trademark authority, such as the USPTO, confers rights in a 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). Thus, the Panel finds that Complainant has rights in the HYDRO FLASK mark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <hydroflask.store> domain name is identical to Complainant’s mark because it eliminates the spacing and appends the descriptive TLD “.store.” The elimination of spacing and appendage of a TLD is not sufficient to distinguish a domain name from a mark. See Health Republic Insurance Company v. Gustavo Winchester, FA 1622089 (Forum July 7, 2015) (finding, “Domain name syntax requires TLDs. Domain name syntax prohibits spaces. Therefore, omitted spacing and adding a TLD must be ignored when performing a Policy ¶4(a)(i) analysis.”). Further, a descriptive TLD can enhance confusing similarity per Policy ¶ 4(a)(i). See Altria Group, Inc. and Altria Group Distribution Company v. xiazihong, FA 1732665 (Forum July 1, 2017) (“Appending a top-level domain that describes a complainant’s business adds to confusing similarity.”). As such, the Panel holds that Respondent’s <hydroflask.store> domain name is identical to Complainant’s mark.
Complainant asserts that Respondent does not have rights or legitimate interests in the disputed domain name. Complainant claims it has not licensed or otherwise authorized Respondent to use its HYDRO FLASK mark in any fashion. The absence of evidence in the record showing that a respondent was authorized to use a complainant’s mark in a domain name can be evidence of a lack of rights and legitimate interests. See Navistar International Corporation v. N Rahmany, FA 1620789 (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). Additionally, WHOIS information can be used to support that a respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA 1626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The Panel notes that the <hydroflask.store> WHOIS information of record lists “Chen Xi Long” as the registrant. Therefore, the Panel finds that Respondent is not commonly known by the <hydroflask.store> domain name.
Complainant alleges that Respondent is not using the <hydroflask.store> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent attempts to pass itself off as Complainant and offers counterfeit versions of Complainant’s products for purchase. A respondent’s use of disputed domain name to pass itself off as a complainant cannot be construed as bona fide offerings of goods or services or legitimate noncommercial or fair use of a domain name. See Kmart of Mich., Inc. v. Cone, FA 655014 (Forum Apr. 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); see also eLuxury.com Inc. v. WangJunJie, FA 1075554 (Forum Nov. 30, 2007) (concluding that the sale of counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name). Here, Complainant provided screenshots of the <hydroflask.store> resolving website which displays Complainant’s marks and counterfeit versions of Complainant’s products for purchase. The Panel agrees that this evidence supports a finding that Respondent has not made a bona fide offering of goods or services or legitimate noncommercial or fair use of the disputed domain name per Policy ¶¶ 4(c)(i) or (iii).
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent attempts to attract Internet traffic and commercially benefit from the goodwill of the HYDRO FLASK mark by creating confusion as to the source, sponsorship, affiliation, or endorsement of its website by purporting to sell Complainant’s products. Attempts to commercially benefit from Internet users’ confusion of a complainant’s connection to a disputed domain name is evidence of bad faith registration and use of a disputed domain name per Policy ¶ 4(b)(iv). Affliction, Inc. v. Chinasupply, FA 1223521 (Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain by creating confusion as to the complainant’s connection with the website by selling counterfeit products). Screenshots of the <hydroflask.store> resolving website show that the website was purportedly used to sell counterfeit versions of Complainant’s products. As such, the Panel concludes that this evidence leads to a finding of bad faith per Policy ¶ 4(b)(iv).
Further, Complainant alleges that Respondent has falsified the<hydroflask.store> WHOIS information of record to conceal its true identity. Falsified WHOIS information is evidence of bad faith. See Home Dir., Inc. v. HomeDirector, D2000-0111, (WIPO Apr. 11, 2000) (finding that providing false or misleading information in connection with the registration of the domain name is evidence of bad faith). Here, Complainant contends, and this Panel accepts, that Respondent updated the <hydroflask.store> WHOIS information to reflect a non-existent address. This is further evidence of bad faith per Policy ¶ 4(a)(iii).
Thus, Complainant has also satisfied 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 <hydroflask.store> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: September 25, 2017
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