BEIJING POP MART CULTURAL CREATIVE CO., LTD. v. Nano Techan
Claim Number: FA2304002041868
Complainant is BEIJING POP MART CULTURAL CREATIVE CO., LTD. (“Complainant”), represented by Tiffany Salayer of Procopio, Cory, Hargreaves and Savitch LLP, California, USA. Respondent is Nano Techan (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <popmartglobal.com>, registered with NameCheap, 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 April 26, 2023; Forum received payment on April 26, 2023.
On April 26, 2023, NameCheap, Inc. confirmed by e-mail to Forum that the <popmartglobal.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 April 27, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 17, 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@popmartglobal.com. Also on April 27, 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 May 22, 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.
A. Complainant
Complainant made the following contentions.
Complainant,
BEIJING POP MART CULTURAL CREATIVE CO., LTD. is in the toy business. Complainant asserts rights in the POP MART mark based upon
registration with the United States Patent and Trademark Office (“USPTO”) (e.g.,
Reg. No. 5,166,916, registered March 21, 2017). See Compl. Annex 13.
Respondent’s <popmartglobal.com> is confusingly similar to Complainant’s POP
MART trademark because it incorporates the
mark in its entirety, removes the space between the words, and adds the generic
word “global” and the generic top-level domain name (“gTLD”) “.com”.
Respondent does not have rights or legitimate interests
in the <popmartglobal.com> domain name. Respondent is not licensed
or authorized to use Complainant’s POP
MART mark and is not commonly known by the
disputed domain name. Respondent also does not use the disputed domain name for
any bona fide offering of goods or services or legitimate noncommercial
or fair use. Rather, Respondent offers Complainant’s products or
counterfeit products for sale.
Respondent registered and uses the <popmartglobal.com> domain name in bad faith. Respondent disrupts Complainant’s business by offering its products or counterfeit products for sale. Respondent creates a likelihood of confusion by attempting to pass itself off as Complainant for commercial gain. Respondent had actual and/or constructive knowledge of Complainant’s rights in the POP MART mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a Chinese company that is an entertainment company engaged in the toy industry.
2. Complainant has established its rights in the POP MART mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. no. 5,166,916, registered March 21, 2017).
3. Respondent registered the <popmartglobal.com> domain name on August 8, 2022.
4. Respondent has caused the disputed domain name to be used to pass itself off as Complainant and to offer Complainant’s products or counterfeit products for sale.
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”).
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 POP MART mark based upon its registration of the mark with the USPTO (e.g., Reg. no. 5,166,916, registered March 21, 2017). See Compl. Annex 13. Registration of a mark with the USPTO is considered a valid showing of rights under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Since Complainant has provided evidence of registration of the POP MART mark with the USPTO, the Panel finds that Complainant has established its 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 POP MART mark. Complainant argues that the <popmartglobal.com> domain name is confusingly similar to Complainant’s POP MART trademark. The deletion of a space and addition of a generic term and gTLD are insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i). See Research Now Group, Inc. v. Pan Jing, FA 1735345 (Forum July 14, 2017) (“The … elimination of spacing [is] considered irrelevant when distinguishing between a mark and a domain name.”); see also Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).”). The disputed domain name incorporates the mark in its entirety, removes the space between the words, and adds the generic word “global” and the gTLD “.com”. Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s POP MART 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)).
(a) Respondent has chosen to take Complainant’s POP MART mark and to use it in its domain name, removing the space between the words and adding the generic word “global”;
(b) Respondent registered the <popmartglobal.com> domain name on August 8, 2022;
(c) Respondent has caused the disputed domain name to be used to offer Complainant’s products without authorization or counterfeit products for sale;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent does not have rights or legitimate interests in the <popmartglobal.com> domain name because Respondent is not licensed or authorized to use Complainant’s POP MART mark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Emerson Electric Co. v. Cai Jian Lin / Shen Zhen Shi colorsun Zi Dong Hua You Xian Gong Si, FA 1798802 (Forum Aug. 31, 2018) (“UDRP panels have consistently held that evidence of a registrant name that is materially different from the domain name at issue is competent evidence that the respondent is not commonly known by the 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 SPTC, Inc. and Sotheby’s v. Tony Yeh shiun, FA 1810835 (Forum Nov. 13, 2018) (finding no rights or legitimate interests in the <sothebys.email> domain name where the WHOIS identified Respondent as “Tony Yeh shiun,” Complainant never authorized or permitted Respondent to use the SOTHEBY’S mark, and Respondent failed to submit a response.). The WHOIS information for the disputed domain name lists the registrant as “Nano Techan.” See Registrar Verification Email. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);
(f)Complainant contends that Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent has passed itself off as Complainant and offers Complainant’s products without authorization or counterfeits for sale. Use of a disputed domain to sell a complainant’s or counterfeit products without authorization does not amount to a bona fide offering of goods or services under policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Caterpillar Inc. v. Huth, FA 169056 (Forum Sept. 2, 2003) (“Respondent lacks rights in the disputed domain names because Respondent competes with Complainant by selling Complainant's used parts without a license from Complainant to do so.”) Here, Complainant provides screenshots of the disputed domain name’s resolving webpage showing use of Complainant’s mark and offerings of similar toy figurines for sale. See Compl. Annex 15. Thus, the Panel finds that Respondent does not provide a bona fide offering of goods or services under policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(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 disrupts Complainant’s business by offering Complainant’s products or counterfeit products for sale. Unauthorized use of a complainant’s mark to sell complainant’s products without authorization or counterfeit products represents bad faith use under Policy ¶ 4(b)(iii). See Fossil, Inc. v. NAS, FA 92525 (Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant). Here, the Panel notes that Complainant provides screenshots of the disputed domain name’s resolving webpage showing use of Complainant’s mark and offerings of similar toy figurines for sale. See Compl. Annex 15. Thus, the Panel finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iii).
Secondly, Complainant submits that Respondent creates a likelihood of confusion by passing itself off as Complainant for commercial gain. Attempts by the registrant of a domain name to pass itself off as a complainant and create a likelihood of confusion evidences bad faith per Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain). Here, the Panel again notes that Complainant provides screenshots of the disputed domain name’s resolving webpage showing use of Complainant’s mark and offerings of similar toy figurines for sale. See Compl. Annex 15. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Thirdly, Complainant contends that Respondent had actual and/or constructive knowledge of Complainant’s rights in the POP MART mark because of its registrations of the mark and Respondent’s use of the mark. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, it is open to the Panel to find that Respondent had actual knowledge of Complainant's mark and rights and therefore to find that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name"). Here, the Panel again notes that Complainant provides its registrations of the mark and screenshots of the disputed domain name’s resolving webpage showing use of the mark. As the Panel agrees, it finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
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 <popmartglobal.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC
Panelist
Dated: May 23, 2023
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page