Pendleton Woolen Mills, Inc. v. Liu Huiyong
Claim Number: FA2302002031629
Complainant is Pendleton Woolen Mills, Inc. (“Complainant”), represented by Parna A. Mehrbani of Tonkon Torp LLP, Oregon. Respondent is Liu Huiyong (“Respondent”), CN.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <salependleton.com>, registered with Name.com, Inc..
The undersigned certifies that he 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to Forum electronically on February 13, 2023; Forum received payment on February 13, 2023.
On February 14, 2023, Name.com, Inc. confirmed by e-mail to Forum that the <salependleton.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, Inc. 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 February 20, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 13, 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@salependleton.com. Also on February 20, 2023, 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 March 20, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the PENDLETON mark established by its ownership of the portfolio of trademark and service mark registrations described below, and by the goodwill established by the extensive use, promotion, and advertisement of the PENDLETON mark since at least as early as 1909, including its use in the <pendleton-usa.com> domain name since 1996. Complainant contends that by virtue of these efforts (and many others over 100+ years), the PENDLETON mark is well recognized by consumers as designating Complainant as the source of the goods and services so marked.
Complainant alleges that the disputed domain name is confusingly similar to the PENDLETON mark as it incorporates the mark in its entirety. Complainant argues that domain names that incorporate the entirety of a complainant’s registered trademark are confusingly similar to the trademark and submits that “[p]anels deciding cases under the usDRP and similar domain-name dispute policies such as the Uniform Domain Name Dispute Resolution Policy (‘UDRP’) have consistently held that a domain name comprised of a mark and/or terms relating to the complainant’s business is confusingly similar to the mark at issue.” Twentieth Century Fox Film Corporation v. Brando Bronzino, FA 1494970 (Forum May 13, 2013).
Complainant submits that the addition of the generic word “sale” is insufficient to differentiate the disputed domain name from the PENDLETON mark, because the addition is a generic or descriptive term that relates to the Complainant’s business..
Complainant next alleges that Respondent has no rights or legitimate interests in the disputed domain name arguing that Respondent is known as “Liu Huiyong” and is not commonly known by “Pendleton.” The WHOIS information lists Respondent as the registrant of record and upon filing the Complaint the Registar provided Forum with information listing “Liu Huiyong” as the registrant of record.
Complainant adds that it has not licensed or otherwise authorized Respondent, or any third party to use the PENDLETON mark in the disputed domain name or on the website to which it resolves.
Complainant further contends that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or making legitimate non-commercial or fair use of the PENTLETON mark.
Referring to a screen capture of the website to which the disputed domain name resolves which is exhibited in an annex to the Complaint, Complainant submits that website shows that Respondent is using the disputed domain name to maintain a fake, imposter website, which replicates the overall look and feel of Complainant’s website. Such use is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the PENDLETON mark. Dell Inc. v. Dell Tech Support / Dell Tech Support Phone Number / SNAB Corporation, FA 1903001832968 (Forum Mar. 31, 2019) (“The website poses to appear as if it were sponsored by Complainant via its confusingly similar domain name address and additionally by the website’s misappropriation of the look and feel of Complainant’s official website. Through such deception, Respondent attempts to pass itself off as Complainant presumably for commercial gain”).
Complainant adds that the screen capture shows that Respondent’s ruse goes so far as to even use Complainant’s logo for the imposter website’s favicon.
Furthermore, Complainant argues that the screen capture shows that Respondent is making unauthorized use of Complainant’s copyrighted product imagery on the website to pass itself off as Complainant.
Referring to Complainant’s own website, a screen capture of which is also exhibited in an annex to the Complainant, Complainant argues that Respondent is using the disputed domain name that is confusingly similar to its PENDLETON mark to create confusion, by misappropriating the look and feel of Complainant’s official website, including by misappropriating Complainant’s copyright-protected images, and goes so far as to use Complainant’s logo for the imposter website’s favicon. Complainant contends that such use of the disputed domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use under Policy ¶ 4(c)(iii).
Complainant next alleges that the confusingly disputed domain name was registered and is being used in bad faith arguing that Respondent created the disputed domain name to confuse and attract Complainant’s consumers for commercial gain.
Complainant submits that Respondent registered the disputed domain name to disrupt Complainant’s business, arguing that Respondent is taking predatory advantage of Complainant, its name, reputation, and goodwill in the PENDLETON mark.
Complainant argues that Respondent is using the disputed domain name to perpetuate an “imposter” scam and submits that Respondent is using the PENDLETON mark to mislead Internet users into believing they are purchasing Complainant’s products from Complainant (or at a minimum, a licensed retailer or distributor of Complainant).
The exhibited screen capture shows that Respondent’s website touts an array of Complainant’s products, by making unauthorized use of Complainant’s copyright-protected product images, and providing a checkout function for users to provide payment.
Complainant further argues that Respondent clearly had actual knowledge of the PENDLETON mark and is using Complainant’s trademarks in its domain name and is using copyright-protected images copied from Complainant’s website. JUUL Labs, Inc. v. T K, FA1906001847855 (Forum July 11, 2019) (“Respondent registered the disputed domain name with actual knowledge of Complainant’s mark: the resolving website displays Complainant’s mark and logo” and “displays material copied from Complainant’s website.”).
Complainant adds that the manner in which the disputed domain name is being used to resolve to a website on which the PENDLETON mark and images taken from Complainant’s website are prominently displayed evidences a clear intent to disrupt Complainant’s business.
Furthermore Complainant argues that Respondent’s imposter website is being used to perpetrate a phishing scam aimed at redirecting Complainant’s consumers to its websites to supposedly “purchase” Complainant’s goods. Mattel Inc. v. Peter G., FA 1007001336093 (Forum Aug. 24, 2010) (holding that a respondent that attracts potential customers of a complainant who are looking for complainant’s goods and promotes similar products are activities that dispute a complainant’s business).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant carries out a retail and mail order business in which it uses the PENDLETON service mark and for which it holds an international portfolio of registered service mark registrations including:
· United States trademark and service mark registration PENDLETON, registration number 3,049,323, registered on the Principal Register on January 24 2006 for goods and services in international classes 18, 24 and 35;
· United States trademark and service mark registration PENDLETON, registration number 4,574,834 registered on the Principal Register on July 29, 2014, for services in international classes 3 and 35;
· United States service mark registration PENDLETON HOME registration number 2713136, registered on the Principal Register on May 6, 2003 for services in international class 35.
Complainant has an established Internet presence and maintains a website at <www.pendleton-usa.com> through which its goods and services are offered.
The disputed domain name was registered on August 4, 2022, and resolves to a website that purports to impersonate Complainant including by using copyright material owned by Complainant without permission.
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the request by Forum for details of the registration of the disputed domain name in the course of this proceeding.
Respondent availed of a privacy service to conceal his identity on the published WhoIs and the Registrar has confirmed that Respondent is the registrant of the disputed domain name.
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’s Rights
Complainant has provided convincing, uncontested evidence that it has rights in the PENDLETON, mark, established by the ownership of the portfolio of trademark and service mark registrations described above.
Furthermore, the Complainant’s uncontested evidence is that it has an established reputation in the PENDLETON mark established by long and extensive use of the mark in its retail and mail order business for over 100 years.
Confusing Similarity
The disputed domain name < salependleton.com> consists of Complainant’s PENDLETON mark in its entirety in combination with the descriptive term “sale” and the generic Top Level Domain (“gTLD”) extension <.com>.
Complainant’s PENDLETON mark is the dominant and only distinctive element in the disputed domain name. The descriptive term “sale” adds no distinguishing character to the disputed domain name and does not prevent a finding that the disputed domain name is confusingly similar to Complainant’s mark.
Similarly, the gTLD extension <.com> does not prevent a finding of confusing similarity as the circumstances of this proceeding, it would be considered to be a necessary technical requirement for a domain name registration,
This Panel finds therefore that the disputed domain name is confusingly similar to the PENDLETON mark in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights legitimate interests in the disputed domain name arguing that
· Respondent is known as “Liu Huiyong” and is not commonly known by “Pendleton”;
· The WHOIS information for the disputed domain name lists Respondent as the registrant of record and upon filing the Complaint the Registar provided the Forum with information listing “Liu Huiyong” as the registrant of record.
· Complainant adds that it has not licensed or otherwise authorized Respondent, or any third party to use the PENDLETON mark in the disputed domain name or on the website to which it resolves.
· Complainant contends that Respondent is not using the domain name in connection with a bona fide offering of goods or services or making legitimate non-commercial or fair use of the PENTLETON mark.
· the screen capture of the website to which the disputed domain name resolves which is exhibited in an annex to the Complaint, shows that Respondent is using the disputed domain name to maintain a fake, imposter website, which replicates the overall look and feel of Complainant’s website;
· such use is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the PENDLETON mark;
· Respondent’s ruse goes so far as to even use Complainant’s logo for the imposter website’s favicon;
· the screen capture also shows that Respondent is making unauthorized use of Complainant’s copyrighted product imagery on the website to pass itself off as Complainant;
· a comparison of Respondent’s website and the screen capture of Complainants own website, which is also exhibited in an annex to the Complainant, shows Respondent is using the disputed domain name that is confusingly similar to its PENDLETON mark to create confusion by misappropriating the look and feel of Complainant’s official website;
· Complainant is misappropriating Complainant’s copyright-protected images, and goes so far as to use Complainant’s logo for the imposter website’s favicon.
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.
Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Complainant has adduced clear and convincing, uncontested evidence that it has trademark and service mark rights in the PENDLETON mark which predate the registration and first use of the disputed domain name on August 4, 2022.
The record shows that Complainant had a long established reputation and goodwill established in the PENDLTON mark to distinguish its retail and mail order business.
The disputed domain name is a combination of Complainant’s PENDLETON mark, which is the dominant element, and the word “sale” which is a term related to retail and mail order services.
The PENDLETON mark is distinctive and there is no obvious reason why the registrant of the disputed domain name would have chosen this combination of elements, particularly in circumstances where Respondent is not commonly known by the PENDLETON name and there is no evidence that Respondent has any connection with the mark.
This Panel finds therefore that on the balance of probabilities the disputed domain name was registered in bad faith with Complainant and its PENDLETON mark in mind.
The uncontested evidence in the form of screen captures of Complainant’s own website and the website to which the disputed domain name resolves which have adduced in evidence by Complainant shows that Respondent is purporting to present itself as Complainant on the website to which the disputed domain name resolves.
Such use of a domain name for the purposes of impersonating Complainant, and confusing and misdirecting unsuspecting Internet users constitutes use of the disputed domain name in bad faith for the purposes of the Policy.
This Panel finds therefore that Respondent is using the disputed domain name in bad faith in an intentional attempt to attract, for commercial gain, Internet users to Respondent’s web site by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site and products or services that Respondent purports to offer to the public.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has succeeded in the third element of the test in Policy paragraph 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 <salependleton.com> domain name be TRANSFERRED from Respondent to Complainant.
_________________________________________
James Bridgeman SC
Panelist
Dated: March 21, 2023
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