PlanetArt, LLC v. Wei Zhang
Claim Number: FA2102001932339
Complainant is PlanetArt, LLC (“Complainant”), represented by Lara A. Holzman of Culhane Meadows PLLC, California, USA. Respondent is Wei Zhang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <simplytoimpress.co>, registered with Chengdu West Dimension Digital Technology Co., Ltd.
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 17, 2021. The Forum received payment on February 17, 2021. The Complaint was received in English.
On February 18, 2021, Chengdu West Dimension Digital Technology Co., Ltd. confirmed by e-mail to the Forum that the <simplytoimpress.co> domain name is registered with Chengdu West Dimension Digital Technology Co., Ltd. and that Respondent is the current registrant of the name. Chengdu West Dimension Digital Technology Co., Ltd. has verified that Respondent is bound by the Chengdu West Dimension Digital Technology Co., Ltd. registration agreement, which is in Chinese, 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 18, 2021, the Forum served the English language Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of March 10, 2021 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@simplytoimpress.co. Also on February 18, 2021, the Chinese and English language 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 March 16, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDING
As noted, the Registration Agreement is in Chinese. Pursuant to Rule 11(a), the language of the proceeding shall be Chinese unless otherwise determined by the Panel, having regard to the circumstances of the proceeding.
Complainant has requested that the language of the proceeding be English.
The Panel notes that the domain name and the website to which it resolves are in English and that Complainant has shown that Respondent has been involved in 15 other proceedings under the Policy conducted in English involving disputed domain names containing English words, namely:
Dr. Martens International Trading GmbH v. Wei Zhang, WIPO Case No. D2020- 0624 (WIPO May 5, 2020);
Fitbit, Inc. v. Wei Zhang, WIPO Case No. D2020-0317 (WIPO April 13, 2020);
LEGO Juris A/S v. Wei Zhang, WIPO Case No. D2019-0756 (WIPO May 29, 2019);
GOLDEN GOOSE S.P.A. v. Wei Zhang, WIPO Case No. D2018-2442 (WIPO Dec. 19, 2018);
Golden Goose S.p.A. v. Wei Zhang, WIPO Case No. D2018-1027 (WIPO July 3, 2018);
Golden Goose S.p.A. v. Wei Zhang, WIPO Case No. D2018-0287 (WIPO April 10, 2018);
Golden Goose S.P.A. v. Wei Zhang, WIPO Case No. D2017-2444 (WIPO Jan. 17, 2018);
Bottega Veneta SA v. Wei Zhang, WIPO Case No. Case No. D2017-1836 (WIPO Nov. 8, 2017);
Golden Goose S.P.A. v. Wei Zhang, WIPO Case No. D2017-1654 (WIPO Oct. 18, 2017);
Puff Corporation d/b/a Puffco v. Wei Zhang, WIPO Case No. DCO2019-0036 (WIPO Nov. 6, 2019);
Red Wing Shoe Co. Inc. v. Wei Zhang, FA 1911001873163 (Forum Jan. 3, 2020;
Mediacom Communications Corp. v. Wei Zhang, FA1905001845412 (Forum July 22, 2019);
Postmates Inc. v. Wei Zhang, FA1902001831831 (Forum Mar. 27, 2019);
Guru Denim Inc. d/b/a True Religion Brand Jeans. v. Wei Zhang, FA1606001679472 (Forum July 28, 2016); and
Google Inc. v. Wei Zhang, FA1403001551141 (Forum May 6, 2014).
In the absence of any Response, these circumstances satisfy the Panel that Respondent is likely to be conversant with English; that there would be no undue prejudice to Respondent if English were the language of the proceeding; and that it would be unnecessarily time-consuming and costly to require Complainant to translate the Complaint into Chinese.
Accordingly, pursuant to Rule 11(a), the Panel determines that the proceeding should be in English.
A. Complainant
Complainant operates an online retail platform that allows customers to create and order personalized greeting cards and other gift items. Complainant has rights in the SIMPLYTOIMPRESS mark based on registration with the United States Patent and Trademark Office (“USPTO”). Respondent’s <simplytoimpress.co> domain name is confusingly similar to Complainant’s mark.
Respondent does not have rights or legitimate interests in the <simplytoimpress.co> domain name. Respondent is not commonly known by the disputed domain name and is not affiliated with Complainant, nor has Complainant licensed Respondent to use the SIMPLYTOIMPRESS mark. Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain to divert Internet users to an inactive webpage and phish for users’ information and/or prompt users to download malware. Respondent also engages in typosquatting.
Respondent registered and uses the <simplytoimpress.co> domain name in bad faith. Respondent offers to sell the disputed domain name for a price in excess of its out-of-pocket costs. Respondent engages in a pattern of bad faith registration as evidenced by the 15 previous UDRP proceedings in which it has been involved. Furthermore, Respondent engages in typosquatting in order to conduct a phishing scheme.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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 has shown that it has rights in the SIMPLYTOIMPRESS mark based on registration with the USPTO (Reg. No. 4,133,112, registered Apr. 24, 2012). Respondent’s <simplytoimpress.co> domain name is identical to Complainant’s mark because it incorporates the entire SIMPLYTOIMPRESS mark and adds the inconsequential “.co” country-code top-level domain (“ccTLD”), which may be ignored for the purposes of this element.
Complainant has established this element.
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in a disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The disputed domain name <simplytoimpress.co> was registered on July 24, 2020, many years after Complainant registered its SIMPLYTOIMPRESS trademark and many years after Complainant started using the domain name <simplytoimpress.com> for its website in 2004. The disputed domain name differs from Complainant’s <simplytoimpress.com> domain name only by the use of the ccTLD “.co” instead of the gTLD “.com”. It resolves to a webpage that requires a user to input personal information and/or download phishing software to proceed.
These circumstances, coupled with Complainant’s assertions, constitute a prima facie case that Respondent lacks rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii). Accordingly, the burden shifts to Respondent to show it does have rights or legitimate interests. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014). Respondent has made no attempt to do so.
In the circumstances of this case, the Panel finds that Respondent has no rights or legitimate interests in respect of the <simplytoimpress.co> domain name.
Complainant has established this element.
Registration and Use in Bad Faith
This element requires Complainant to establish, on the balance of probability, that Respondent both registered the disputed domain name in bad faith and is using it in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on its website or location.
By the omission of the letter “m” from the gTLD “.com”, the disputed domain name constitutes typosquatting (itself a basis for finding bad faith), designed to divert Internet users who mistype Complainant’s website address to a phishing platform intended induce consumers to provide Respondent with personal information which can be used for illegitimate purposes.
Accordingly, the Panel finds that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website and that the disputed domain name was registered and is being used in bad faith.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <simplytoimpress.co> domain name be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: March 22, 2021
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