IMY, LLC v. Xu Hu
Claim Number: FA2301002028310
Complainant is IMY, LLC (“Complainant”), represented by Michelle Emeterio of SNELL & WILMER L.L.P, California, USA. Respondent is Xu Hu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ymijeansale.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 known conflict in serving as Panelist in this proceeding.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to Forum electronically on January 20, 2023; Forum received payment on January 20, 2023.
On January 23, 2023, Name.com, Inc. confirmed by e-mail to Forum that the <ymijeansale.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 January 23, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 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@ymijeansale.com. Also on January 23, 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 February 20, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Petter Rindforth 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, founded in 2000, is a contemporary jeans and clothing brand company. Complainant has rights in the YMI trademark through Complainant’s registration of the trademark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,750,862, registered on August 12, 2003).
Respondent’s <ymijeansale.com> domain name is identical or confusingly similar to Complainant’s YMI trademark as it merely adds the generic words “jean” and “sale” and the “.com” generic top-level-domain name ("gTLD").
Respondent lacks rights or legitimate interests in the <ymijeansale.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Respondent been authorized by Complainant to use the YMI trademark. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as Respondent passes off as Complainant by offering counterfeit versions of Complainant’s products for sale while using Complainant’s trademarks. In addition, Respondent uses the disputed domain name to phish for personal and financial information when purchasing these products.
Respondent registered and uses the <ymijeansale.com> domain name in bad faith. Respondent’s website attracts users for commercial gain to the disputed domain name by causing confusion as to the owner of the site. In addition, Respondent had actual knowledge of Complainant’s rights to the YMI trademark prior to registering the disputed domain name as evidenced by Respondent’s use of the trademark in addition to Respondent’s resolving website directly copying images from Complainant’s resolving website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of a number of national and international trademark registrations around the world of the word and or letter combination YMI, including but not limited to:
- U.S. national trademark registration No. 2,750,862 YMI (word), registered August 12, 2003 in Intl. Class 25;
- U.S. national trademark registration No. 4,161,881 YMI (word), registered June 19, 2012 in Intl. Class 25;
- International Trademark registration No. 823117 Y.M.I. (word), registered November 25, 2013 in Intl. Class 25, designating Australia, Colombia, Japan and Republic of Korea; and
- National Chinese Trademark registration No. 28580631 YMI (word), registered February 28, 2019 in Intl. Class 25;
The disputed domain name <ymijeansale.com> was registered on August 16, 2022.
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 asserts rights in the YMI trademark through Complainant’s registration of the trademark with the USPTO (e.g. Reg. No. 2,750,862, registered on August 12, 2003), as well as WIPO, EUIPO, CNIPA and other national trademark authorities.
Registration of a trademark with the USPTO or CNIPA is sufficient to establish rights in a trademark per Policy ¶ 4(a)(i). See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)). Here, Complainant has provided the Panel with copies of its registration for the trademark in a number of countries and regions around the world, including People's Republic of China (the home country of the Respondent). Therefore, the Panel find that Complainant has rights in the trademarks per Policy ¶ 4(a)(i).
Next, Complainant argues Respondent’s <ymijeansale.com> domain name is identical or confusingly similar to Complainant’s YMI trademark as it merely adds the generic words “jean”, “sale” and the “.com” gTLD. The addition of a generic or descriptive term and a gTLD fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See MTD Products Inc v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”).
The Panel note that the disputed domain name is a combination of the Complainant’s trademark YMI and “jeansale”, which may be a misspelling of the two words “jeans” and “sale”, or even referring to the word “jean” – from the French jean fustian, referring to the type of twilled cotton that is the original base for “jeans”. Thereby the disputed domain name is an obvious combination of the Complainant’s registered trademark and descripted words directly related to Complainant’s business. Therefore, the Panel find that the disputed domain name is confusingly similar to Complainant’s trademark per Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See 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.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Complainant contends that Respondent lacks rights or legitimate interests in the <ymijeansale.com> domain name as Respondent is not commonly known by the disputed domain name nor has Complainant authorized or licensed to Respondent any rights in the YMI trademark. When 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 Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). In addition, lack of authorization to use a complainant’s trademark may indicate the respondent is not commonly known as 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 “Xu Hu” and Complainant asserts there is no other evidence to suggest that Respondent was authorized to use the YMI trademark. Therefore, the Panel find that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent fails to use the <ymijeansale.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent passes off as Complainant by offering versions of Complainant’s products for sale while using Complainant’s trademarks. Using a disputed domain name to pass off as a complainant for the purpose of the unauthorized sale of either counterfeit or legitimate complainant’s products may indeed not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See ShipChain, Inc. v. 谢东东 / 谢东东, FA 1785189 (Forum June 21, 2018) (“The resolving webpages between Complainant’s and Respondent’s websites are virtually the same. Respondent’s use of the disputed domain name does not confer rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii).”). Complainant provides screen shots of Complainant’s authorized website compared to Respondent’s website which uses identical photos as well as Complainant’s trademark. The Panel therefore find that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Finally, Complainant argues that Respondent fails to use the <ymijeansale.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent asks users for personal and financial information. Panels have found that phishing for personal and financial information is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See United States Postal Service v. Kehinde Okunola / Genuine ICT Centre, FA 1785420 (Forum June 6, 2018) (“Respondent uses the <uspscouriers.com> domain name both to sell services competing with the business of Complainant and to phish for personal identification information from Internet users. Neither of these uses of the domain name constitutes 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) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy.”). Here, Complainant provides screen shots of the disputed domain name requesting personal and financial information from users. The Panel therefore clearly find that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant contends that Respondent registered and uses the <ymijeansale.com> domain name in bad faith in order to attract internet traffic to Respondent’s website for commercial gain. Registration of a confusingly similar domain name with the intent to attract internet traffic for commercial gain by causing confusion as to the source of the site may indeed evince bad faith registration per Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). As noted above, the Complainant has provided side-by-side screenshots of Complainant’s website and Respondent’s resolving website showing the Respondent directly copied images from Complainant as well as Complainant’s registered mark. The Panel therefore find that Respondent registered and uses the domain name to attract users for commercial gain per Policy ¶ 4(b)(iv).
Complainant further argues that Respondent registered the <ymijeansale.com> domain name with actual knowledge of Complainant’s rights in the YMI trademark based on Respondent’s use of the YMI trademark and Respondent’s resolving website directly copying images from Complainant’s website. Use of a trademark to divert Internet traffic to a disputed domain name where a respondent passes off as a complainant clearly demonstrates actual knowledge of a complainant’s rights in a trademark at registration and show bad faith per Policy ¶ 4(a)(iii). See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”); see also iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum January 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Complainant argues that Respondent’s use of the YMI trademark on Respondent’s resolving website as well as using Complainant’s copyrighted images on Respondent’s resolving website demonstrates that Respondent had actual knowledge of Complainant’s rights in the registered trademark prior to registering the disputed domain name. As also noted above, the disputed domain name is a combination of the Complainant’s trademark and related descriptive words. The Panel thereby clearly find that Respondent registered the disputed domain name in bad faith per 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 <ymijeansale.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: February 23, 2023
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