Habidecor-Industria Textil para Habitacao, SA v. Lihua Peng
Claim Number: FA2206002000676
Complainant is Habidecor-Industria Textil para Habitacao, SA (“Complainant”), represented by Robert Clarida of Reitler Kailas & Rosenblatt, New York, USA. Respondent is Lihua Peng (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <abyssoutlet.com>, registered with Name.com, Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 16, 2022; the Forum received payment on June 16, 2022.
On June 16, 2022, Name.com, Inc. confirmed by e-mail to the Forum that the <abyssoutlet.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 June 20, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 11, 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@abyssoutlet.com. Also on June 20, 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, the Forum transmitted to the parties a Notification of Respondent Default.
On July 15, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a Portugal-based global textile company.
Complainant holds a registration for the ABYSS HABIDECOR trademark, which is on file with the World Intellectual Property Organization (“WIPO”) as Registry No. 1,621,751, registered September 14, 2021.
Respondent registered the domain name <abyssoutlet.com> on January 18, 2022.
The domain name is confusingly similar to Complainant’s ABYSS HABIDECOR trademark.
Respondent lacks both rights to and legitimate interests in the domain name.
Respondent has not been commonly known by the domain name.
Complainant has not authorized Respondent to use the ABYSS HABIDECOR mark in any way.
Respondent fails to use the domain name in connection with either a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent both registered and now uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is now being used by Respondent 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:
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
Complainant claims rights in the ABYSS HABIDECOR trademark by reason of its registration of the mark with an international trademark authority, the WIPO. Such registration is sufficient to demonstrate Complainant’s rights in that mark for purposes of standing to prosecute a complaint under Policy ¶ 4(a)(i). See, for example, Häfele Vietnam LLC v. Cong Hoan, FA 1813668 (Forum November 28, 2018):
Registration of a mark with the WIPO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <abyssoutlet.com> domain name is confusingly similar to Complainant’s ABYSS HABIDECOR mark. The domain name incorporates the defining portion of the mark, adding only the generic term “outlet,” which underscores Respondent’s commercial intent in creating and deploying the domain name, plus the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See, for example, Supercell Oy v. WhoisProxy.com Ltd / Jordan Rash, Application Automation LLC, D2015-1445 (WIPO October 9, 2015) (determining that a respondent’s incorporation of the word “clash” in a domain name supported a finding of confusing similarity where “clash” was lifted from a UDRP complainant’s CLASH OF CLANS mark).
As to Respondent’s inclusion of the commercial term “outlet” in the domain name, see, for example, Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding that adding to the mark of another the commercial term “finance,” which described a UDRP complainant’s financial services business conducted under that mark, did not distinguish the resulting domain name from the mark under Policy ¶ 4(a)(i)).
Further see Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum September 27, 2002):
[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
This is because every domain name requires a gTLD or other TLD.
Finally, under this head of the Policy, we observe that, while it is customary, in the ordinary course, to confine an examination of the question of confusing similarity to the content of the domain name alone, where, as here, a significant portion of Complainant’s mark has been omitted from the domain name while the defining portion of the mark (“ABYSS”) consists of a dictionary term, it is appropriate for us to look also at the use to which the domain name is put, via the content of the resolving website, in weighing any lingering doubt on the point of confusing similarity. See, for example, Schering-Plough Corp. v. Dan Myers, D2008-1641 (WIPO December 19, 2008), finding confusing similarity between a respondent’s two domain names and a UDRP complainant’s trademark:
The aural and visual comparison of the domain names with a complainant’s trademark is an important part of the issue of confusing similarity. In addition, the content of a website may provide indication as to a respondent’s targeting of a specific trademark through the domain name chosen. Accordingly, the context in which the domain names are being used may be helpful to assess confusing similarity (see Reuters Ltd. v. Global Net 2000, Inc., WIPO Case No. D2000-0441). Here the disputed domain names direct to webpages displaying commercial links reproducing Complainant’s trademarks.
In the case before us, the Complaint and supporting submissions show that Respondent uses the <abyssoutlet.com> domain name to profit by passing itself off as Complainant online, including by reproducing on its resolving website photographs from Complainant’s proprietary sales catalog as well as a counterfeit copy of Complainant’s mark, with the evident purpose of marketing Complainant’s products without its consent. These undenied facts remove any doubt that Respondent intended to and did achieve confusing similarity between its domain name and Complainant’s mark.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent has neither rights to nor legitimate interests in the contested <abyssoutlet.com> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP¶4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <abyssoutlet.com> domain name, and that Complainant has not authorized Respondent to use the ABYSS HABIDECOR mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Lihua Peng,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy¶4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner).
We next consider that Complainant asserts, without objection from Respondent, that Respondent employs the disputed domain name to pass itself off as Complainant online, with the evident purpose of profiting from the marketing of Complainant’s products without its consent. This employment is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, Travellers Exchange Corp. Ltd. v. FairFX Plc., D2010-1056 (WIPO July 29, 2010):
The Panel does not consider that the Respondent has used the Domain Name … in connection with a bona fide offering of goods or services. On the contrary, the Respondent has used the confusing similarity of this Domain Name to the Complainant’s mark to divert Internet users to the Respondent’s own web page and thereby to promote its own principal website and its own competing services….
* * * * *
The Panel also finds that the Respondent is not making legitimate non-commercial or fair use of this Domain Name without intent for commercial gain to misleadingly divert consumers or tarnish the Complainant’s mark. On the contrary, the Respondent is making unfair commercial use of this Domain Name with intent to divert consumers by confusion with the Complainant’s mark ….
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s employment of the <abyssoutlet.com> domain name, as alleged in the Complaint, disrupts Complainant’s business. Under Policy ¶ 4(b)(iii), this stands as proof of Respondent’s bad faith in registering and using the domain name.
See, for example, Tanger Properties, L.P. North Carolina Ltd. Pp. v. Zhong Qing Ma, FA1994703 (Forum May 27, 2022):
The use made of the Domain Name in relation to the Respondent’s site for competing retail services is confusing and disruptive in that visitors to the site might reasonably believe it was connected to or approved by the Complainant.
See also Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith registration and use of a domain name under Policy ¶ 4(b)(iii) where a respondent used the domain name to resolve to a website at which it passed itself off as a UDRP complainant in order to market goods and services in competition with that complainant’s business).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <abyssoutlet.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: July 20, 2022
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