Aquatalia IP LLC and RTW Retailwinds Acquisition LLC v. Jiying Luo / LuoJiying
Claim Number: FA2212002025615
Complainant is Aquatalia IP LLC and RTW Retailwinds Acquisition LLC (“Complainant”), represented by Renee Reuter, USA. Respondent is Jiying Luo / LuoJiying (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aqautalia.com> (“Domain Name”), registered with GMO Internet, Inc. d/b/a Onamae.com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint in both Japanese and English to Forum electronically on December 28, 2022; Forum received payment on December 28, 2022.
On Jan 03, 2023, GMO Internet, Inc. d/b/a Onamae.com confirmed by e-mail to Forum that the <aqautalia.com> domain name is registered with GMO Internet, Inc. d/b/a Onamae.com and that Respondent is the current registrant of the name. GMO Internet, Inc. d/b/a Onamae.com has verified that Respondent is bound by the GMO Internet, Inc. d/b/a Onamae.com 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 January 9, 2023, Forum served the Complaint and all Annexes, including a Japanese Written Notice of the Complaint, setting a deadline of January 30, 2023 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@aqautalia.com. Also on January 9, 2023, the Japanese 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 February 7, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith 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
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
Previous panels have interpreted the 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.
The Panel has reviewed the Complaint and is satisfied that that Aquatalia IP LLC and RTW Retailwinds Acquisition LLC are wholly-owned subsidiaries of Saadia Group LLC and they share ownership and usage of the relevant marks. This is sufficient to establish a sufficient nexus or link between the Complainants such that they should be treated as a single entity in this proceeding referred to in the singular, as “Complainant”.
The language of the Registration Agreement in this case is Japanese. The Complaint has been provided in English and Japanese and Complainant has indicated that pursuant to UDRP Rule 11(a) the language of the proceeding should be English. Respondent has not filed a Response or indicated a preference that the proceeding continue in Japanese.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Japanese-language Complaint and Commencement Notification, and, absent a formal Response, determines that the remainder of the proceedings may be conducted in English.
A. Complainant
Complainant designs and sells luxury footwear. Complainant has rights in the AQUATALIA mark through numerous national trademark registrations, including registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., USPTO Reg. No. 4,349,879, which was registered on June 11, 2013). Respondent’s <aqautalia.com> domain name is confusingly similar to the AQUATALIA mark as it merely misspells the mark by transposing the “u” and the “a” and adding the generic top-level domain (“gTLD”) “.com”.
Respondent lacks rights or legitimate interests in the <aqautalia.com> domain name since Complainant has never given permission to Respondent to use the AQUATALIA mark and Respondent is not commonly known by the Domain Name. Additionally, Respondent fails to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, Respondent uses the Domain Name to host links to adult-oriented content and gambling services. Further, Respondent’s registration and use of the Domain Name is an example of typosquatting.
Respondent registered and uses the <aqautalia.com> domain name in bad faith by trading off of Complainant’s mark to deceive users for Respondent’s own commercial benefit. Respondent is engaged in typosquatting and uses the Domain Name to divert users to a third-party website undoubtedly for commercial gain. Finally, Respondent registered the Domain Name through a privacy service and with constructive and/or actual knowledge of Complainant’s rights in the AQUATALIA mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the AQUATALIA mark. The Domain Name is confusingly similar to Complainant’s AQUATALIA mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the Domain Name and that Respondent registered and has used the Domain Name in bad faith.
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 has rights in the AQUATALIA mark under Policy ¶ 4(a)(i) through its registration of the mark with the USPTO (e.g., USPTO Reg. No. 4,349,879, which was registered on June 11, 2013). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
The Panel finds that the <aqautalia.com> domain name is confusingly similar to Complainant’s AQUATALIA mark because it merely transposes the letter “u” and second letter “a” to create a minor misspelling and adds the “.com” gTLD. Transposing two letters of a registered mark to create a minor misspelling (and adding a gTLD) is generally insufficient to create a distinction between a complainant’s mark and a disputed domain name under Policy ¶ 4(a)(i). See RingCentral, Inc. v. Aug.ine Rivera, FA 1562126 (Forum July 1, 2014) (“Transposition of letters in [a] trademark does not distinguish the domain name.”); see also Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) (“Respondent arrives at each of the disputed domain names by merely misspelling each of the disputed domain names and adding the gTLD ‘.com.’ This is insufficient to distinguish the disputed domain names from Complainant’s trademark.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the AQUATALIA mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “Jiying Luo / LuoJiying” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).
The Domain Name is presently inactive but prior to the commencement of the proceeding resolved to a Chinese-language website offering commercial content unrelated to the Complainant’s business (it offered links to adult content and gambling content) or any descriptive meaning of the Domain Name. The use of a domain name to divert users, for commercial gain, to a website containing unrelated content such as adult content is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Spike's Holding, LLC v. Nexperian Holding Limited, FA 1736008 (Forum July 21, 2017) (“Using a confusingly similar domain to display unrelated content can evince a lack of a bona fide offering of goods or services or legitimate noncommercial or fair use… The Panel therefore finds that Respondent’s unrelated use of the <finishnline.com> domain name evinces a lack of rights and legitimate interests under Policy ¶ 4(c)(i) & (iii).”). See also Altria Group, Inc. and Altria Group Distribution Company v. xiazihong, FA1732665 (Forum July 7, 2017) (holding that “[u]se of a domain name to display adult-oriented images is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy.”)
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds on the balance of probabilities that, at the time of registration of the Domain Name, June 12, 2022, Respondent had actual knowledge of Complainant’s AQUATALIA mark. There is no obvious explanation, and none has been provided by Respondent, for a party to register a domain name that consists of a minor misspelling of the registered and coined AQUATALIA mark and redirect it to a website offering links to adult and gambling content unrelated to any descriptive meaning of the Domain Name absent any awareness of Complainant and its AQUATALIA mark (and intention to capitalize on Complainant’s reputation in its AQUATALIA mark). In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Name in bad faith in order to resolve to a website that displays links to adult and gambling content for which Respondent would be expected to receive revenue. Use of a confusingly similar domain name to attract users to a website hosting adult-oriented content or other commercial content such as gambling links may be evidence of bad faith per Policy ¶ 4(a)(iv). See H-D U.S.A., LLC v. Nobuyoshi Tanaka / Personal, FA1312001534740 (Forum Jan. 31, 2014) (“Therefore, the Panel concludes that Respondent is acting in bad faith because Respondent is using the <harley-davidsonsales.com> domain name to tarnish Complainant’s HARLEY-DAVIDSON mark, as the Panel also finds that the content displayed on the resolving website constitutes adult-oriented content.”); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website).
The Panel finds Complainant has 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 <aqautalia.com> domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: February 8, 2023
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