Five Below, Inc. v. Li Ann
Claim Number: FA2009001912680
Complainant is Five Below, Inc. (“Complainant”), represented by Brittany Birnbaum, New York, USA. Respondent is Li Ann (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <5belowtoys.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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 17, 2020; the Forum received payment on September 17, 2020.
On September 17, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <5belowtoys.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 September 21, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 13, 2020 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@5belowtoys.com. Also on September 21, 2020, 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 October 14, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco as Panelist.
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 any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant, Five Below, Inc., offers customers an assortment of extreme value merchandise, including a variety of toys.
Complainant has rights in the FIVE BELOW mark based on registration with the United States Patent and Trademark Office (“USPTO”). Additionally, Complainant has rights in the 5 BELOW mark based on a notice of allowance from the USPTO.
Respondent’s <5belowtoys.com> domain name is confusingly similar to Complainant’s mark because it simply removes the space between the “5” and “BELOW” in Complainant’s mark and adds the term “toys” and the “.com” generic top level domain (“gTLD”) to form the disputed domain name.
Respondent does not have rights or legitimate interests in the <5belowtoys.com> domain name. Respondent is not commonly known by the at-issue domain name and Complainant has not given Respondent permission to use the FIVE BELOW and 5 BELOW marks in any domain name. Additionally, Respondent does not use the domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the at-issue domain name to pass itself off as Complainant for commercial gain. Furthermore, since Complainant sent cease and desist notices the disputed domain name has resolved to an error page and thus Respondent inactively holds the domain.
Respondent registered and uses the <5belowtoys.com> domain name in bad faith. Respondent disrupts Complainant’s business and attempts to attract Internet users to its website for commercial gain by passing off as Complainant. Additionally, Respondent inactively holds the disputed domain name since it now resolves to an error page. Furthermore, Respondent had actual knowledge of Complainant’s rights in the FIVE BELOW and 5 BELOW marks based on the fame of the marks and the use of the term “toys” in the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the 5 BELOW mark.
Complainant’s rights in the 5 BELOW mark existed prior to Respondent’s registration of the at-issue domain name.
Respondent is not authorized to use Complainant’s trademark.
Respondent holds the at-issue passively.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s USPTO Notice of Allowance for 5 BELOW is sufficient evidence of its rights in a mark under Policy ¶ 4(a)(i). See Love City Brewing Company v. Anker Fog/Love City Brewing Company, FA1753144 (Forum Nov. 17, 2017) pending trademark application which had been issued a Notice of Allowance held to sufficiently establish rights in the mark under ICANN Rule ¶ 4(a)(i)). Complainant has rights in its FIVE BELOW mark by virtue of its registration with the USPTO.
Additionally, Respondent’s <5belowtoys.com> domain name contains Complainant’s 5 BELOW mark less its space, followed by the suggestive term “toys,” with all followed by the top-level domain name “com.” The differences between Complainant’s mark and Respondent’s at-issue domain name fail to distinguish the domain name from the 5 BELOW mark under Policy ¶ 4(a)(i). The Panel also notes that Complainant’s FIVE BELOW trademark is likewise confusingly similar to Respondent’s <5belowtoys.com> domain name. The FIVE BELOW mark when recited sounds identical to and is identical in meaning to the “5below” term that is embedded in Respondent’s at-issue domain name. Therefore, the Panel finds that Respondent’s <5belowtoys.com> domain name is confusingly similar to Complainant’s 5 BELOW trademark. See Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015) (concluding that “Panels have consistently held that the addition of a gTLD does not distinguish a domain name from a mark, and that the removal of spaces between words of a mark is irrelevant.”); see also The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”).
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 interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the <5belowtoys.com> domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
The WHOIS information for the at-issue domain name identifies its registrant as “Li Ann.” Additionally, the record before the Panel contains no evidence that tends to show that Respondent is commonly known by the <5belowtoys.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the at-issue domain name for the purposes of Policy ¶ 4(c)(ii). See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).
Respondent’s prior use of the <5belowtoys.com> domain name to pass itself off as Complainant and to address a website that offers products that compete with those offered by Complainant and likewise Respondent’s current passive holding of the at-issue domain name where browsing to the domain name now returns an error message, show neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a non-commercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website addressed by the at-issue domain name featured the complainant’s mark and various photographs related to the complainant’s business); see also Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“both Domain Names resolve to a web site that shows the words, ‘Not Found, The requested URL / was not found on this server.’ Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii).”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
Respondent’s <5belowtoys.com> domain name was registered and used in bad faith. As discussed below without limitation, circumstance are present which compel the Panel to conclude that Respondent acted in bad faith regarding the at-issue domain name pursuant to paragraph 4(a)(iii) of the Policy.
First, Respondent’s prior use of the <5belowtoys.com> domain name to pass itself as Complainant and offer products that compete with those offered by Complainant is disruptive to Complainant’s business and shows bad faith under Policy ¶¶ 4 (b)(iii) and (b)(iv). See Disney Enters., Inc. v. Noel, FA 198805 (Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (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.”).
Next as also discussed above regarding rights and legitimate interests, Respondent currently holds <5belowtoys.com> passively. Browsing to the domain name returns an error message. Respondent’s failure to actively use <5belowtoys.com> indicates Respondent’s bad faith registration and use pursuant to Policy ¶ 4 (a)(iii). See Dermtek Pharmaceuticals Ltd. v. Sang Im / Private Registration, FA1310001522801 (Forum Nov. 19, 2013) (holding that because the respondent’s website contained no content related to the domain name and instead generated the error message “Error 400- Bad Request,” the respondent had registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii)); see also, VideoLink, Inc. v. Xantech Corporation, FA 1608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
Finally, Respondent registered the <5belowtoys.com> domain name knowing that Complainant had trademark rights in 5 BELOW. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademarks and from Respondent’s inclusion of the suggestive term “toys” within the at-issue domain name. Therefore, it is clear that Respondent intentionally registered the at-issue domain name precisely to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark shows that Respondent registered and used its <5belowtoys.com> domain name in bad faith pursuant to 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").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <5belowtoys.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: October 14, 2020
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page