Tailgate Clothing Company, Corp. and American Eagle Outfitters, Inc. v. Guo Min Hua
Claim Number: FA2302002032152
Complainant is Tailgate Clothing Company, Corp. and American Eagle Outfitters, Inc. (“Complainant”), represented by AJ Schumacher of Kelly IP, LLP, District of Columbia. Respondent is Guo Min Hua (“Respondent”), CN.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <toddsnyders.store>, registered with DNSPod, Inc..
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 KC as Panelist.
Complainant submitted a Complaint to Forum electronically on February 16, 2023; Forum received payment on February 16, 2023.
On Feb 22, 2023, DNSPod, Inc. confirmed by e-mail to Forum that the <toddsnyders.store> domain name is registered with DNSPod, Inc. and that Respondent is the current registrant of the name. DNSPod, Inc. has verified that Respondent is bound by the DNSPod, 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 22, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 14, 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@toddsnyders.store. Also on February 22, 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 The Honorable Neil Anthony Brown KC 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 ISSUES:
The Panel notes that the Registration Agreement is written in the Chinese language, thereby making the language of the proceedings to be Chinese. However, pursuant to Rulle 11 (a) it is open to the Panel to find that having regard to all the circumstances it is more appropriate that the Proceeding should be conducted in another language. The question now is whether Complainant has made out a case for such a finding by the Panel.
Complainant has submitted that because Respondent is conversant and proficient in English, the proceeding should be conducted 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). Complainant contends Respondent’s website available at the disputed domain name uses English characters and words therein, suggesting that Respondent is at least proficient in the English language. Further, Complainant submits that it is not conversant nor proficient in the Chinese language and that it would require delay and unnecessary costs to translate the relevant documents into Chinese.
After considering all the circumstance of the present case, the Panel finds that Respondent is conversant and proficient in the English language and that the proceeding should therefore be conducted in English. The matter may therefore go forward on that basis.
In the instant proceedings, there are two Complainants, Tailgate Clothing Company, Corp. and American Eagle Outfitters, Inc.. Complainant American Eagle Outfitters, Inc. is a corporate subsidiary and/or entity of Complainant Tailgate Clothing Company, Corp. 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. 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 or link between the Complainants and that it should treat them all as a single entity in this proceeding. Nonetheless, throughout the below memo, the Complainants will be collectively referred to as “Complainant”. The matter may therefore go forward on that basis.
A. Complainant
Complainant made the following contentions.
Complainant, Tailgate Clothing Company, Corp. and American Eagle Outfitters, Inc., offers apparel, bags, jewelry, sunglasses, other accessories, and retail store services for sale. Complainant has rights in the TODD SNYDER mark through its registration of the mark with multiple trademark organizations including the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,266,697, registered on January 1, 2013). See Compl. Ex. 5. Respondent’s <toddsnyders.store> domain name is identical or confusingly similar to Complainant’s mark as it pluralizes Complainant’s mark while adding the “.store” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <toddsnyders.store> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its TODD SNYDER mark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use, but instead passes off as Complainant and most recently hosts an inactive webpage.
Respondent registered and uses the <toddsnyders.store> domain name in bad faith. Respondent disrupts Complainant’s business while attracting users for commercial gain and passing off as Complainant. Additionally, Respondent’s page is currently inactive. Furthermore, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the TODD SNYDER mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that offers apparel, bags, jewelry, sunglasses, other accessories and retail store services for sale.
2. Complainant has established its rights in the TODD SNYDER mark through its registration of the mark with multiple trademark organizations including the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,266,697, registered on January 1, 2013).
3. Respondent registered the <toddsnyders.store> domain name on April 18, 2022.
4. Respondent has caused the domain name to be used to pass itself off as Complainant and to host an inactive webpage.
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”).
Identical and/or Confusingly Similar
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 TODD SNYDER mark through its registration of the mark with multiple trademark organizations including the USPTO (e.g. Reg. No. 4,266,697, registered on January 1, 2013). See Compl. Ex. 5. Registration with multiple trademark agencies including the USPTO is generally sufficient in demonstrating rights in the mark under Policy ¶ 4(a)(i). See Red Hat, Inc. v. Muhammad Shahzad, FA 1787738 (Forum June 19, 2018) (“Registration of a mark with multiple trademark agencies is sufficient to demonstrate rights to a mark per Policy ¶ 4(a)(i).”). Since Complainant has its mark registered with multiple trademark organizations including the USPTO, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s TODD SNYDER mark. Complainant argues that Respondent’s <toddsnyders.store> domain name is identical or confusingly similar to Complainant’s TODD SNYDER mark. Under Policy ¶ 4(a)(i), adding an “s” to a mark along with a gTLD is insufficient in differentiating from the mark. See Paperless Inc. v. ICS Inc, FA 1629515 (Forum Aug. 17, 2015) (establishing a confusing similarity between the <paperlessspost.com> domain name and the PAPERLESS POST trademark in part because the domain name contained the entire mark and added an additional “s”); see also Bittrex, Inc. v. Privacy protection service - whoisproxy.ru, FA 1759828 (Forum Jan. 12, 2018) (“The Panel here finds that the <bittrex.market> domain name is identical to the BITTREX mark under Policy ¶4(a)(i).”). The disputed domain name pluralizes Complainant’s mark while adding the “.store” gTLD. The result is that the trademark is still the dominant portion of the domain name and the domain name is virtually identical to the mark. The Panel therefore finds that Respondent’s <toddsnyders.store> domain name is confusingly similar to Complainant’s TODD SNYDER mark under 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 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
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s TODD SNYDER mark and to use it in its domain name which pluralizes Complainant’s mark and adds the “.store” gTLD, which do not negate the confusing similarity between the domain name and the mark;
(b) Respondent registered the <toddsnyders.store> domain name on April 18, 2022;
(c) Respondent has caused the domain name to be used to pass itself off as Complainant and to host an inactive webpage;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant submits that Respondent is not commonly known by the <toddsnyders.store> domain name, nor has Complainant authorized or licensed Respondent to use its TODD SNYDER mark in the disputed domain name. Under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name. See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Radio Flyer Inc. v. er nong wu, FA 2011001919893 (Forum Dec. 16, 2020) (“Here, the WHOIS information lists “er nong wu” as the registrant and no information suggests Complainant has authorized Respondent to use the RADIO FLYER mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”). Here, the WHOIS information identifies Respondent as “Guo Min Hua.” See Registrar Verification Email. Thus, as the Panel agrees, it finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent is not using the <toddsnyders.store> domain name for any bona fide offering of goods or services, nor any noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), passing off as a Complainant is not a bona fide offering of goods or services, nor any noncommercial or fair use. See Dell Inc. v. Devesh Tyagi, FA 1785301 (Forum June 2, 2018) (“Respondent replicates Complainant’s website and displays Complainant’s products. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (iii).”). Complainant provides screenshots of the website to which the domain name resolves and which displays Complainant’s mark and copyrighted photos. See Compl. Ex. 6. As the Panel agrees, it finds Respondent is not using the disputed domain name for any bona fide offering of goods or services, nor any noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii);
(g) Complainant contends Respondent is not using the <toddsnyders.store> domain name for any bona fide offering of goods or services, nor any noncommercial or fair use by hosting an inactive webpage. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to host an inactive webpage is not a bona fide offering of goods or services, nor any noncommercial or fair use. See CrossFirst Bankshares, Inc. v Yu-Hsien Huang, FA 1785415 (Forum June 6, 2018) (“Complainant demonstrates that Respondent fails to actively use the disputed domain name as it resolves to an inactive website. Therefore, the Panel finds that Respondent fails to actively use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).”). Complainant notes that the impersonating content was removed as a result of Complainant’s takedown request and the website is now inaccessible. See Compl. Ex. 7. Thus, as the Panel agrees, it finds that Respondent is not using the disputed domain name for any bona fide offering of goods or services, nor any noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a formal 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 name.
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 name was registered in bad faith and has 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 name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues Respondent registered and uses the <toddsnyders.store> domain name in bad faith by disrupting Complainant’s business. Under Policy ¶ 4(b)(iii), using a disputed domain name to pass off as a complainant is a disruption of a complainant’s business and thus evidence of bad faith registration and use. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)). The Panel recalls that Respondent’s webpage displays Complainant’s TODD SNYDER mark and its copyrighted photos. See Compl. Ex. 6. Therefore, the Panel finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iii).
Secondly, Complainant contends that Respondent registered and uses the <toddsnyders.store> domain name in bad faith by attracting users for commercial gain while passing itself off as a complainant. Under Policy ¶ 4(b)(iv), attracting users to respondent’s website for its own commercial gain while passing itself off as a complainant is evidence of bad faith registration and use. See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”); 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 notes Complainant’s screenshots of the resolving webpage which purports to pass Respondent off as Complainant for commercial gain. See Compl. Ex. 6. As the Panel agrees, it finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Thirdly, Complainant submits that Respondent registered and uses the <toddsnyders.store> domain name in bad faith by inactively holding the domain name and the resolving webpage. Under Policy ¶ 4(a)(iii), inactively holding a disputed domain name is generally considered evidence of bad faith registration and use. See Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (“Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.”). The Panel notes that the domain name remains inaccessible as a result of Complainant’s takedown request. See Compl. Ex. 7. Thus, as the Panel agrees, it finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Fourthly, Complainant argues that Respondent registered the <toddsnyders.store> domain name with bad faith actual knowledge of Complainant’s rights in the TODD SNYDER mark. Under Policy ¶ 4(a)(iii), actual knowledge is generally sufficient in demonstrating bad faith, and may be established where a respondent attempts to pass itself off as a complainant at the resolving webpage. See WordPress Foundation v. mich delorme / mich d dots tlds, FA1410001584295 (Forum, Nov. 25, 2014) (“Because Respondent here relies on the WORDPRESS mark in the disputed domain name and also makes use of Complainant’s services at the resolving page, the Panel finds that Respondent had actual knowledge of Complainant’s mark, and that such knowledge evidences Policy ¶ 4(a)(iii) bad faith.”). The Panel notes that Respondent uses Complainant’s mark and copyrighted images at the resolving webpage. See Compl. Ex. 6. Thus, the Panel finds that Respondent had actual knowledge of Complainant’s rights in the TODD SNYDER mark under Policy ¶ 4(a)(iii) and therefore registered the disputed domain name in bad faith.
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 <toddsnyders.store> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC
Panelist
Dated: March 21, 2023
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page