OOFOS, INC. v. sun yue lan / chen chun feng / chen er dong / lin jian zhong / feng li shuai / chen cheng jian
Claim Number: FA2206002001213
Complainant is OOFOS, INC. (“Complainant”), represented by CORSEARCH, INC., California, USA. Respondent is sun yue lan / chen chun feng / chen er dong / lin jian zhong / feng li shuai / chen cheng jian (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <buyoofos.club>, <oofos.club>, <oofosbase.club>, <oofosbest.club>, <oofoscenter.club>, <oofoscore.club>, <oofoslife.club>, <oofosline.club>, <oofoslive.club>, <oofosmall.club>, <oofosmarkets.club>, <oofosonline.club>, <oofosplaza.club>, <oofossale.club>, <oofosshoes.club>, <oofosshoes.info>, <oofosshop.club>, <oofosshoping.club>, <oofosstore.club>, <oofostore.club>, <oofosuper.club>, <oofoshop.club>, registered with Alibaba Cloud Computing Ltd. D/B/A Hichina (Www.Net.Cn).
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 Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 21, 2022; the Forum received payment on June 21, 2022. The Complaint was submitted in English.
On June 23, 2022 and June 30, 2022, Alibaba Cloud Computing Ltd. D/B/A Hichina (Www.Net.Cn) confirmed by e-mail to the Forum that the <buyoofos.club>, <oofos.club>, <oofosbase.club>, <oofosbest.club>, <oofoscenter.club>, <oofoscore.club>, <oofoslife.club>, <oofosline.club>, <oofoslive.club>, <oofosmall.club>, <oofosmarkets.club>, <oofosonline.club>, <oofosplaza.club>, <oofossale.club>, <oofosshoes.club>, <oofosshoes.info>, <oofosshop.club>, <oofosshoping.club>, <oofosstore.club>, <oofostore.club>, <oofosuper.club>, <oofoshop.club> domain names are registered with Alibaba Cloud Computing Ltd. D/B/A Hichina (Www.Net.Cn) and that Respondent is the current registrant of the names. Alibaba Cloud Computing Ltd. D/B/A Hichina (Www.Net.Cn) has verified that Respondent is bound by the Alibaba Cloud Computing Ltd. D/B/A Hichina (Www.Net.Cn) 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 June 30, 2022, the Forum served the Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of July 20, 2022 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@buyoofos.club, postmaster@oofos.club, postmaster@oofosbase.club, postmaster@oofosbest.club, postmaster@oofoscenter.club, postmaster@oofoscore.club, postmaster@oofoslife.club, postmaster@oofosline.club, postmaster@oofoslive.club, postmaster@oofosmall.club, postmaster@oofosmarkets.club, postmaster@oofosonline.club, postmaster@oofosplaza.club, postmaster@oofossale.club, postmaster@oofosshoes.club, postmaster@oofosshoes.info, postmaster@oofosshop.club, postmaster@oofosshoping.club, postmaster@oofosstore.club, postmaster@oofostore.club, postmaster@oofosuper.club, postmaster@oofoshop.club. Also on June 30, 2022, the Chinese and English language 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 July 28, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honorable 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 names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has submitted that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant contends that the disputed domain names are similar, resolve to identical websites, and were registered in batches with the same registrar.
Having considered all of the evidence and contentions, the Panel finds the domain names are commonly owned/controlled by a single Respondent who is using multiple aliases. The matter may therefore go forward on that basis.
PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDINGS
Complainant has submitted that because Respondent is familiar with the English language, the proceeding should be conducted in English. The Panel has the discretion under UDRP Rule 11(a) to determine the appropriate language of the proceedings taking into consideration the particular circumstances of the administrative proceeding. In that regard, the Panel notes that the disputed domain names contain English words and the resolving websites are written entirely in English. See FilmNet Inc. v. Onetz, FA 96196 (Forum Feb. 12, 2001) (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English).
Accordingly, the Panel finds that the proceeding should be conducted in the English language.
A. Complainant
Complainant made the following contentions.
Complainant, OOFOS Inc., is a retailer of footwear and apparel. Complainant has rights in the OOFOS mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,140, 410 registered May 8, 2012). See Compl. Ex. E. Respondent’s <buyoofos.club>, <oofos.club>, <oofosbase.club>, <oofosbest.club>, <oofoscenter.club>, <oofoscore.club>, <oofoslife.club>, <oofosline.club>, <oofoslive.club>, <oofosmall.club>, <oofosmarkets.club>, <oofosonline.club>, <oofosplaza.club>, <oofossale.club>, <oofosshoes.club>, <oofosshoes.info>, <oofosshop.club>, <oofosshoping.club>, <oofosstore.club>, <oofostore.club>, <oofosuper.club>, and <oofoshop.club> domain names (hereinafter the “disputed domain names”) are virtually identical and confusingly similar to Complainant’s mark because each one incorporates the OOFOS mark in its entirety and adds a generic term and either the “.info” or “.club” generic top-level domain (“gTLD”).
Respondent has no legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed Respondent any rights in the OOFOS mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the disputed domain names resolve to a website selling counterfeit versions of Complainant’s goods, or to an inactive webpage.
Respondent registered and uses the disputed domain names in bad faith. Respondent registered the disputed domain name in order to disrupt Complainant’s business and divert customers for commercial gain. Some of the disputed domain names resolve to inactive webpages. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the OOFOS mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is a retailer of footwear and apparel.
2. Complainant has established its rights in the OOFOS mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,140, 410 registered May 8, 2012).
3. Respondent registered the disputed domain names on the following dates:
April 8, 2022 -<buyoofos.club>; <oofosbase.club>; <oofoscenter.club>; <oofoscore.club>; <oofoslife.club>; <oofosline.club>; <oofosonline.club>; <oofossale.club>; <oofosshoes.club>; <oofosshoping.club>; <oofosstore.club>; and <oofosuper.club>; March 25, 2022 - <oofos.club>; March 29, 2022- <oofosbest.club>;<oofoslive.club>;<oofosmarkets.club>;<oofosplaza.club>; <oofosshop.club>; <oofostore.club>; and <oofoshop.club>; March 28, 2022 - <oofosmall.club>; and March 16, 2022 - <oofosshoes.info.
4. Respondent has caused the disputed domain names to resolve to websites selling counterfeit versions of Complainant’s goods, or to inactive webpages.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the OOFOS mark based upon the registration of the mark with the USPTO (e.g., Reg. No. 4,140, 410 registered May 8, 2012). See Compl. Ex. E. Registration of a mark with the USPTO is a valid showing of rights in a mark under Policy ¶ 4(a)(i). See Brooks Sports, Inc. v. Joyce Cheadle, FA 1819065 (Forum Dec. 28, 2018) (finding that Complainant’s registration of the BROOKS mark with the USPTO sufficiently conferred its rights in the mark under Policy ¶ 4(a)(i).”). Since Complainant provides evidence of registration of the OOFOS mark with the USPTO, the Panel finds that the Complainant has rights in the mark under Policy 4(a)(i).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s OOFOS mark. Complainant argues Respondent’s disputed domain names are identical or confusingly similar to Complainant’s OOFOS mark. The addition of a gTLD and a generic term fails to distinguish a disputed domain name sufficiently from a mark per Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). Here, the disputed domain names each contain the OOFOS mark in its entirety while adding in a generic term and either the“.club” or “.info” gTLD. Therefore, the Panel finds the disputed domain names are confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
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 names under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
(a) Respondent has chosen to take Complainant’s OOFOS mark and to use it in its domain names adding only the respective generic words as specified above to the mark;
(b) Respondent registered the domain names on the following dates: April 8, 2022 -<buyoofos.club>; <oofosbase.club>; <oofoscenter.club>; <oofoscore.club>; <oofoslife.club>; <oofosline.club>; <oofosonline.club>; <oofossale.club>; <oofosshoes.club>; <oofosshoping.club>; <oofosstore.club>; and <oofosuper.club>;March 25, 2022 - <oofos.club>; March 29, 2022 -<oofosbest.club>;<oofoslive.club>;<oofosmarkets.club>;<oofosplaza.club>; <oofosshop.club>; <oofostore.club>; and <oofoshop.club>; March 28, 2022 - <oofosmall.club>; and March 16, 2022 - <oofosshoes.info.
(c) Respondent has caused the disputed domain names to resolve to websites selling counterfeit versions of Complainant’s goods, or to an inactive webpage;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain names since Respondent is not commonly known by the disputed domain names and Complainant has not authorized or licensed to Respondent any rights in the OOFOS mark. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). In addition, a lack of authorization to use a complainant’s mark may also indicate that a respondent is not commonly known by the disputed domain name. See Deutsche Lufthansa AG v. Mohamed elkassaby, FA 1801815 (Forum Sep. 17, 2018) (“The WHOIS lists “Mohamed elkassaby” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).”). The WHOIS information for the disputed domain names lists the registrants as “sun yue lan”, “chen chun feng”, “chen er dong”, “lin jian zhong”, “feng li shuai”, and “chen cheng jian”. See Registrar Email Verifications. Complainant further submits it has not licensed or otherwise authorized Respondent to use Complainant’s OOFOS mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent fails to use the disputed domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as the disputed domain names instead resolve to websites advertising counterfeit versions of Complainant’s goods as for sale. Where the Respondent uses a domain name to sell counterfeit goods, the Panel may find the respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). 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). Here, Complainant provides evidence of the disputed domain names resolving to pages displaying for sale products bearing Complainant’s mark. See Compl. Ex. H. Therefore, the Panel finds that Respondent fails to use the disputed domain names for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii);
(g) Complainant argues that Respondent fails to use the disputed domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use because some disputed domain names resolve to inactive webpages. Where the Respondent fails to make active use of a domain name, the Panel may find the respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“both Domain Names resolve to a web site that shows the words, ‘Not Found, The requested URL / was not found on this server.’ Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii).”). Here, Complainant provides evidence of some of the disputed domain names resolving to inactive webpages. See Compl. Ex. H. Therefore, the Panel finds that Respondent fails to use the disputed domain names for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain names.
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 names were registered in bad faith and have 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 names were registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the disputed domain names in bad faith because Respondent disrupts Complainant’s business and attempts to attract Internet users to its competing websites for commercial gain. Use of a disputed domain name to sell counterfeit versions of Complainant’s goods can be evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See Ontel Products Corporation v. waweru njoroge, FA1762229 (Forum Dec. 22, 2017) (“Respondent’s primary offering seem to be counterfeits of Complainant’s toy car products. Respondent’s use of the <magictrackscars.com> domain name is thus disruptive to Complainant’s business per Policy ¶ 4(b)(iii)”); see also Affliction, Inc. v. Chinasupply, FA 1223521 (Forum Oct. 23, 2008) (finding that the respondent attempts to gain commercially and thus demonstrating bad faith per Policy ¶ 4(b)(iv) by creating confusion as to the complainant’s connection with the website by selling counterfeit products). As previously noted, Complainant provides evidence of the disputed domain names resolving to websites displaying products bearing Complainant’s mark. See Compl. Ex. H. Therefore, the Panel agrees and finds that Respondent registered and used the disputed domain names in bad faith per Policy ¶ 4(b)(iii) or (iv).
Secondly, Complainant argues that Respondent registered and uses the disputed domain names in bad faith because Respondent attempts to take advantage of confusion with Complainant’s well-known mark to attract Internet users to its competing websites for commercial gain. Use of a domain name that is confusingly similar to a well-known mark can be evidence of a bad faith attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See Sandhills Publishing Company v. sudeep banerjee / b3net.com, Inc., FA 1674572 (Forum June 17, 2016) (finding that the respondent took advantage of the confusing similarity between the <machinerytraderparts.com> domain name and the complainant’s MACHINERY TRADER mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). Here, Complainant provides evidence to establish the notoriety of its mark. See Compl. Ex. G. As the Panel agrees, the Panel finds that Respondent registered and used the disputed domain names in bad faith per Policy ¶ 4(b)(iv).
Thirdly, Complainant argues that, because some of the disputed domain names resolve to inactive webpages, Respondent has demonstrated bad faith registration and use. Inactive holding may in and of itself be considered evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). As previously mentioned, Complainant provides evidence that some of the disputed domain names resolve to inactive webpages. See Compl. Ex. H. As the Panel agrees, the Panel finds that Respondent’s registration and use of the disputed domain names to be in bad faith, pursuant to Policy ¶ 4(a)(iii).
Fourthly, Complainant contends that in light of the fame and notoriety of Complainant’s OOFOS mark, it is inconceivable that Respondent could have registered the disputed domain names without actual and/or constructive knowledge of Complainant's rights in the mark. A Panel may find that any arguments of bad faith based on constructive notice are not conclusive, however, as prior UDRP decisions decline to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of 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). Here, the Panel notes Respondent’s extensive use of Complainant’s mark and product photos at the resolving websites. As the Panel determines that Respondent had actual knowledge of Complainant’s rights in the mark, the Panel finds that Respondent registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <buyoofos.club>, <oofos.club>, <oofosbase.club>, <oofosbest.club>, <oofoscenter.club>, <oofoscore.club>, <oofoslife.club>, <oofosline.club>, <oofoslive.club>, <oofosmall.club>, <oofosmarkets.club>, <oofosonline.club>, <oofosplaza.club>, <oofossale.club>, <oofosshoes.club>, <oofosshoes.info>, <oofosshop.club>, <oofosshoping.club>, <oofosstore.club>, <oofostore.club>, <oofosuper.club>, and <oofoshop.club> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown QC
Panelist
Dated: July 28, 2022
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