NBC Fourth Realty Corp. v. con lin niao / Fen Li / sfas asfaf / Dorothy Addison / CongLinNiao / nan ke / chen weiwei / Solution Bridge / Lillie Davis / Da Na / ergrgr / ergrgr ergrgr / Record Bar / Ashley Smith / Beta BetaBeta / Pantry Pride / Billy Angell / Semelatova Zeig / CongLinNiao / nan ke
Claim Number: FA2210002014577
Complainant is NBC Fourth Realty Corp. (“Complainant”), represented by Mary Grace Gallagher of Alston & Bird LLP, Georgia. Respondent is con lin niao / Fen Li / sfas asfaf / Dorothy Addison / CongLinNiao / nan ke / chen weiwei / Solution Bridge / Lillie Davis / Da Na / ergrgr / ergrgr ergrgr / Record Bar / Ashley Smith / Beta BetaBeta / Pantry Pride / Billy Angell / Semelatova Zeig / CongLinNiao / nan ke, US.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <lvtjmaxx.shop>, <lv-tjmaxx.shop>, <tj-atsmall.shop>, <tjbagats.shop>, <tj-bagmall.shop>, <tjbags.shop>, <tjcost-effective.shop>, <tj-fashion.shop>, <tjhot.shop>, <tjhotar.shop>, <tj-ladiscount.shop>, <tj-lafashion.shop>, <tj-lols.shop>, <tj-lovx.shop>, <tj-loxr.shop>, <tjluggage.shop>, <tj-luxurymall.shop>, <tj-lvbag.shop>, <tj-mallbag.shop>, <tjmallsbuy.shop>, <tj-mallsbuy.shop>, <tj-maxxbag.shop>, <tj-maxxbagyt.shop>, <tj-maxxfashion.shop>, <tj-maxxla.shop>, <tj-maxxlot.shop>, <tj-maxxltv.shop>, <tjmaxx-lv.shop>, <tj-maxxlx.shop>, <tjmaxxmall.shop>, <tj-maxxtx.shop>, <tjmaxxus.shop>, <tj-nydiscount.shop>, <tj-nyfashion.shop>, <tj-promotion.shop>, <tj-sfdiscount.shop> and <tj-wdcdiscount.shop> (“Disputed Domain Names”), registered with NameSilo, LLC. (“Registrar”)
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to Forum electronically on October 3, 2022; Forum received payment on October 3, 2022.
On October 4, 2022, the Registrar confirmed by e-mail to Forum that the Disputed Domain Names are registered with it and that the respondents are the current registrants of the names. The Registrar verified that the respondents are bound by its registration agreement and have 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 11, 2022, the served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 31, 2022 by which the respondents could file Responses to the Complaint, via e-mail to all entities and persons listed on the respondents’ registration as technical, administrative, and billing contacts, and to the respective postmaster addresses. Also on October 11, 2022, the Written Notices of the Complaint, notifying the respondents of the e-mail addresses served and the deadline for Responses, were transmitted to the respondents via post and fax, to all entities and persons listed on the respondents’ registrations as technical, administrative and billing contacts.
Having received no response from the respondents, Forum transmitted to the parties a Notification of Respondent Default.
On November 7, 2022, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from the respondents.
The Complaint requests that the Disputed Domain Names be transferred to the Complainant.
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.” The Panel has identified two procedural issues.
The Disputed Domain Names are not registered to one holder. Paragraph 3(c) of 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.” The approach taken to this issue by the majority of UDRP panelists is to allow a single administrative proceeding in respect of several domain names not commonly held if there are reasonable submissions and evidence of a claim to actual control by one person or entity. This Panel follows that approach.
The Complaint provides support for the proposition that the Disputed Domain Names are held by one entity. There is evidence of a constellation of commonalities which point to common ownership or control and the Panel determines that these Administrative Proceedings should continue against all the named respondents (hereinafter, “Respondent”) and in respect of all the Disputed Domain Names.
Paragraph 3(a) of the Rules provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
The Complaint and the Amended Complaint name two complainants, The TJX Companies, Inc. and NBC Fourth Realty Corp.. There is no explanation of the relationship between those companies. What is said is that:
The TJX Companies, Inc. and NBC Fourth Realty Corp. (collectively, “TJX”) base this Complaint upon TJX’s rights in the service marks TJX, T.J. MAXX and T.J.’S (the “TJ Marks”), which TJX uses in connection with retail department store services. TJX’s rights in these marks are reflected in U.S. Trademark Reg. Nos. 1,637,243; 1,495,462; 2,117,444 and 4,502,782.”
The Complaint provides details of the four registrations cited above. To the extent that the named complainants’ rights are reflected by those registrations with the United States Patent & Trademark Office (“USPTO”), the Panel observes that The TJX Companies, Inc. is the current proprietor of USPTO Reg. No. 2,117,444 for the mark, TJX, and NBC Fourth Realty Corp. is the current proprietor of USPTO Reg. No. 1637243 for T.J. MAXX; No.1,495,462 for T J MAXX (stylised); and No. 4,502,782 for T.J.’S.
Whilst the trademark registration details show The TJX Companies, Inc. and NBC Fourth Realty Corp. as having the same address, there is no evidence to satisfy Supplemental Rule 1(e) by demonstrating that the named complainants “can each claim to have rights to all domain names”.
In particular, there is nothing to show that The TJX Companies, Inc. has a claim to rights in domain names incorporating either T.J. MAXX or T.J.’S., and conversely, there is nothing to show that NBC Fourth Realty Corp has a claim to rights in domain names incorporating the mark, TJX.
However, the Panel notes that despite the apparent failure to satisfy Supplemental Rule 1(e), none of the Disputed Domain Names takes the TJX mark. This raises the question why The TJX Companies, Inc. has been named at all but the practical outcome is that The TJX Companies, Inc. can be removed from these Administrative Proceedings without prejudice to the Complaint. The Panel therefore has taken that action to remove The TJX Companies, Inc. from the proceedings.
A. Complainant
Complainant asserts trademark rights in T.J. MAXX and T.J.’S. and submits that the Dispute Domain Names are confusingly similar to one or other of its trademarks.
Complainant alleges that Respondent has no rights or legitimate interests in the Disputed Domain Names.
Complainant alleges that Respondent registered and used the Disputed Domain Names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant sells clothing, handbags, home goods and other wares by reference to the trademarks T.J. MAXX and T.J.’S. which are the subject of registrations with the USPTO;
2. the Disputed Domain Names were all created long after registration of the trademarks and resolve to webpages described in detail later; and
3. there is no association between the parties and Complainant has not authorized Respondent to use its trademarks or register any domain name incorporating its trademark.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights[i]. Complainant therefore has rights in T.J. MAXX and T.J.’S. since it provides proof of its registration of those trademark with the USPTO, a national trademark authority.
For the purposes of comparison of the Relevant Domain Names with the trademarks, the gTLD can in each case be disregarded since it is an essential part of any domain name and, to the extent that it has influence at all, “.store”, can be seen as exacerbating the likelihood of confusion, given the nature of Complainant’s business[ii]. Thereafter, the Disputed Domain Names take one or other of the trademarks to which they add various descriptive terms of no distinctive value. In each case the trademark remains the recognizable part of the domain name and the Panel finds the Disputed Domain Names to be confusingly similar to the trademarks[iii].
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the Disputed Domain Names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests[iv].
The names of the underlying domain name holders, as disclosed by the Registrar, not provide any indication that Respondent might be commonly known by any of the Disputed Domain Names.
There is no evidence that Respondent has any trademark rights. Complainant states that there is no association between the parties and Respondent has no authority to use the trademarks.
Complainant provides screenshots of the resolving websites which show, variously, sites purporting to sell Louis Vuitton handbags, wallets, and luggage; a purported website for Costco Wholesale selling homeware products; a purported retail page for Danner shoes; and a site selling women’s tote bags and travel bags.
Complainant states its belief that most of the goods so offered for sale are counterfeit but whether that is so makes no difference since the Panel finds in either case that Respondent has no rights or legitimate interests in the Disputed Domain Names. Clearly the sale of counterfeit products does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name under the Policy. Alternatively, the trademark has been used without permission. Further still, the redirection of internet users to competitive goods from another source is not bona fide use[v].
The onus shifts to Respondent and, in the absence of a Response, Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy in respect of the Disputed Domain Names.
Complainant must prove on the balance of probabilities both that the Disputed Domain Names were registered in bad faith and used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.
The Panel finds that Respondent’s actions fall under paragraph 4(b)(iv) above. The Panel has already found confusing similarity in each case. The resolving websites exists for commercial gain. In terms of the Policy, the Panel finds that Respondent has intentionally used the names to attract, for commercial gain, internet users to its website or other online locations by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of those websites by implying to internet users that they will reach a site either operated by Complainant or someone affiliated with Complainant[vi].
Panel finds that Complainant has satisfied the third and final element of the Policy.
Having established all three elements required under the ICANN Policy in respect of the Disputed Domain Names, the Panel concludes that relief shall be GRANTED.
The Complaint requests that the Disputed Domain Names be transferred “to the complainant” without specifying what that meant given that the Complaint named two complainants. Given the deletion of one of those complainants from these proceedings for reasons given above, the only outcome is for an Order that the Disputed Domain Names be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: November 21, 2022
[i] See, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)).
[ii] See, for example, Deutsche Lufthansa AG v. Lin HAO, FA 1679906 (Forum July 8, 2016) finding that the gTLD .store does not reduce the similarity with Complainant’s trademark.
[iii] See, for example, Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); Kipling Apparel Corp. v. liu yanping, FA 1620620 (Forum, June 22, 2015) finding confusing similarity when domain added the generic terms “bag,” “online,” and “shop,” to Complainant’s KIPLING mark; 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).”).
[iv] See, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
[v] See, for example, 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, which were either counterfeit products or legitimate products of complainant being resold without authorization; Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“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” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”)
[vi] See, for example, MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark.
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