Aquatalia IP LLC and RTW Retailwinds Acquisition LLC v. Client Care / Web Commerce Communications Limited
Claim Number: FA2210002017567
Complainant is Aquatalia IP LLC and RTW Retailwinds Acquisition LLC (“Complainant”), represented by Renee Reuter, Missouri. Respondent is Client Care / Web Commerce Communications Limited (“Respondent”), MY.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aquatalia-canada.com>, 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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to Forum electronically on October 26, 2022; Forum received payment on October 26, 2022.
On October 27, 2022, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED confirmed by e-mail to Forum that the <aquatalia-canada.com> domain name is registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED and that Respondent is the current registrant of the names. 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 October 31, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 21, 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@aquatalia-canada.com. Also on October 31, 2022, 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, Forum transmitted to the parties a Notification of Respondent Default.
On November 29, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. 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 Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: Multiple Complainants
There are two (2) Complainants in this matter: Aquatalia IP LLC and RTW Retailwinds Acquisition LLC. Complainant submits that a sufficient nexus exists between Aquatalia IP LLC and RTW Retailwinds Acquisition LLC to be treated as a single entity against Respondent as RTW Retailwinds Acquisition LLC, the owner of the domain name, <aquatalia.com>, is owned by Saadia Group, LLC following an acquisition in 2000. Aquatalia IP LLC, the owner of the Aquatalia trademark registrations in the United Sates, was also acquired by Saadia Group LLC in 2021. Complainant has provided exhibits to support its submission. As such, there is a sufficient nexus between the two complainants to file this Complaint together.
The relevant rules governing multiple complainants are UDRP Rule 3(a) and Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” 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.”
Previous panels have interpreted Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
The Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus between the two complainants, and thus the Panel determines to treat them all as a single entity in this proceeding. The two complainants will be collectively referred to as “Complainant.”
A. Complainant
i) Complainant claims rights in the AQUATALIA mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 85,755,059, registered June 11, 2013). The disputed domain name is confusingly similar to Complainant’s AQUATALIA mark as it wholly incorporates the mark, and adds a geographical term “Canada,” a hyphen and the “.com” generic top-level domain (“gTLD”).
ii) Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its AQUATALIA mark in the disputed domain name. Respondent does not use the domain name in connection with any bona fide offering of goods or services, nor a legitimate non-commercial or fair use as Respondent passes itself off as Complainant.
iii) Respondent registered and uses the disputed domain name in bad faith. The disputed domain name’s resolving webpage purports to be the "legitimate" store when it has no authorization from Complainant or any right to use the AQUATALIA mark. Respondent has created a webpage which is stylized to look like Complainant’s own website and sells competing or counterfeit goods that contain the AQUATALIA mark. Respondent registered the disputed domain name using a privacy service, concealing Respondent’s identity. Respondent had constructive or actual knowledge of Complainant’s rights in the AQUATALIA mark.
B. Respondent
Respondent did not submit a Response in this proceeding.
1. The disputed domain name was registered on November 2, 2021.
2. Complainant has established rights in the AQUATALIA mark through its registration with the USPTO (e.g., Reg. No. 85,755,059, registered June 11, 2013).
3. The disputed domain name’s resolving website mimics the design of Complainant’s own website.
4. The disputed domain name's resolving website displays the AQUATALIA mark and offers competing or counterfeit goods under the AQUATALIA mark.
5. Respondent passes itself off as 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."
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”).
Complainant claims rights in the AQUATALIA mark through its registration with the USPTO (e.g., Reg. No. 85,755,059, registered June 11, 2013). Registration with the USPTO is generally sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i). As Complainant provides evidence of its trademark registration for the AQUATALIA mark, the Panel finds Complainant has rights in the AQUATALIA mark under Policy ¶ 4(a)(i).
Complainant next argues that the disputed domain name <aquatalia-canada.com> is confusingly similar to the AQUATALIA mark because it incorporates the mark in its entirety and merely adds a geographical term “canada,” a hyphen and the “.com” gTLD.
The mere addition of a generic term, a hyphen and gTLD is not enough to differentiate a disputed domain name from a mark. See MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”); see also Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis.); Health Devices Corporation d/b/a Doc Johnson Enterprises v. Aspen S T C, FA158254 (Forum July 1, 2003) (“The addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i)”). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s AQUATALIA mark.
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), 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”).
Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed to Respondent any rights in the AQUATALIA mark. The Panel notes that there is no evidence to suggest that Respondent was authorized to use Complainant’s AQUATALIA mark in the disputed domain name or is commonly known by the disputed domain name.
Complainant contends that Respondent does not use the domain name in connection with any bona fide offering of goods or services, nor a legitimate non-commercial or fair use as Respondent passes itself off as Complainant. Complainant provides screenshots of each of Complainant’s own website and Respondent’s. The Panel notes that Respondent has created a webpage that looks like Complainant's own website. The disputed domain name’s resolving website displays the AQUATALIA mark and offers competing counterfeit goods under the AQUATALIA mark. The Panel finds that the use of the disputed domain name to pass Respondent off as Complainant does not constitute a bona fide offering of goods or services, nor any legitimate non-commercial or fair use.
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. 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 has no rights or legitimate interests in the disputed domain name.
Complainant contends that Respondent registered and uses the disputed domain name in bad faith. The disputed domain name’s resolving webpage purports to be the "legitimate" store selling products under the AQUATALIA mark. The Panel notes that Respondent has created a webpage that looks like Complainant's own website. The Panel finds that it is likely to confuse consumers into believing that they are purchasing products under Complainant’s AQUATALIA mark.
Use of a disputed domain name to pass off as a complainant and offer competing or counterfeited goods may be evidence of bad faith per Policy ¶ 4(b)(iii) and (iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business), see also Guess? IP Holder L.P. and Guess?, Inc. v. LI FANGLIN, FA 1610067 (Forum Apr. 25, 2015) (finding respondent registered and used the domain name in bad faith per Policy ¶ 4(b)(iii) because the respondent used the resolving website to sell the complainant’s products, using images copied directly from the complainant’s website), see also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”).
The Panel recalls that Complainant has provided the Panel with screenshots of the disputed domain name's resolving website which displays the AQUATALIA mark and is stylized to look like Complainant’s own website, and offers competing or counterfeit goods bearing the AQUATALIA mark. Therefore, the Panel agrees and finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) or (iv).
Additionally, Complainant contends that Respondent registered the disputed domain name with constructive and/or actual knowledge of Complainant’s rights in the AQUATALIA mark. While constructive knowledge is insufficient for finding bad faith, per Policy ¶ 4(a)(iii) actual knowledge of a complainant’s trademark rights is sufficient to establish bad faith and may be demonstrated by the respondent’s use of the disputed domain name as an email address to impersonate complainant. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum January 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). The Panel infers, due to the notoriety of Complainant’s mark and the manner of use of the disputed domain name that Respondent had knowledge of Complainant’s rights in the AQUATALIA mark at the time of its registering the disputed domain name, and finds that Respondent registered the disputed domain in 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 <aquatalia-canada.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: December 5, 2022
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