Five Below, Inc. v. 380137842
Claim Number: FA2110001970100
Complainant is Five Below, Inc. (“Complainant”), represented by Paul J. Kennedy of Troutman Pepper Hamilton Sanders LLP, Pennsylvania, USA. Respondent is 380137842 (“Respondent”), represented by Marcus F. Chaney of Johnson & Pham, LLP, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fivebelowvip.com>, registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn).
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 October 21, 2021; the Forum received payment on October 21, 2021. The Complaint was received in English.
On October 28, 2021, Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) confirmed by e-mail to the Forum that the <fivebelowvip.com> domain name is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) and that Respondent is the current registrant of the name. Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) has verified that Respondent is bound by the Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) 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 October 29, 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 November 22, 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@fivebelowvip.com. Also on October 29, 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.
A timely Response was received and determined to be complete on July 19, 2021.
On or about November 30, 2021, Complainant submitted its First Additional Submission to the dispute resolution provider.
On December 14, 2021, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Although the language of the relevant registration agreement is not in English and thus might raise an issue as to the language to be used in the instant proceeding under UDRP Rule 11(a), neither party raises any such issue. Therefore since by their silence the parties’ appear to “otherwise agree” per Rule 11(a), the Panel determines that the instant proceedings will be English.
A. Complainant
Complainant contends as follows:
Complainant, Five Below, Inc., is the leading retailer of trend-right, extreme value merchandise.
Complainant has rights in the FIVE BELOW mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <fivebelowvip.com> domain name is confusingly similar to Complainant’s mark since it incorporates Complainant’s mark in its entirety, only removing the mark’s space and adding the generic term “vip,” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <fivebelowvip.com> domain name. Respondent is not commonly known by the at-issue domain name, nor has Complainant licensed or authorized Respondent to use the FIVE BELOW mark. Additionally, Respondent does not use the domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. Respondent uses the domain name to operate an e-commerce site, where Respondent passes off as Complainant for commercial gains, either by offering competing products on Respondent’s website or by collecting personal information from consumers who attempt to make a purchase.
Respondent registered and uses the <fivebelowvip.com> domain name in bad faith because Respondent created a likelihood of confusion and sells directly competing products on its <fivebelowvip.com> website. Moreover, Respondent had actual knowledge of Complainant’s rights in the FIVE BELOW mark based on the fame of the FIVE BELOW mark and the fact that on Respondent’s website, Respondent displays Complainant’s mark in the same stylized form used by Complainant and offers competing products.
B. Respondent
Respondent contends as follows:
The <fivebelowvip.com> domain name is not confusingly similar to Complainant’s FIVE BELOW mark since the domain name adds the term “vip” to “fivebelow” followed by the gTLD “.com”. Moreover, Complainant’s FIVE BELOW trademark is weak since it is merely descriptive of Complainant’s business of selling consumers’ goods at $5.00 or less.
Respondent uses the <fivebelowvip.com> domain name for a bona fide offering of goods and services as it manufactures and sells electronics and electronics accessories bearing the stylized FIVE BELOW VIP design mark. Moreover, Respondent’s goods and services are unrelated to Complainant’s goods and services. Additionally, Complainant does not hold a monopoly over all uses or variations of the FIVE BELOW mark.
Respondent did not register or use the <fivebelowvip.com> domain name in bad faith since Respondent is not actually competing with Complainant. Additionally, Complainant’s bad faith allegations are inadequate. Specifically, there are no facts to show that Respondent primarily registered the <fivebelowvip.com> domain name for the purpose of selling or renting it to Complainant, or to disrupt Complainant’s business, or to divert consumers who may be seeking Complainant’s website.
B. Complainant’s Additional Submission
Complainant additionally contends via its First Additional Submission as a threshold matter that since Respondent failed to provide proof that it is the real respondent in interest (“true registrant”) regarding the at-issue domain name, the Response should be struck. Alternatively, Complainant goes on to reiterate its substantive positions under Policy 4(a) taking into account specific argument made by Respondent in the Response.
Complainant has rights in the FIVE BELOW mark as demonstrated by its registration of such mark with the USPTO.
Complainant’s rights in the FIVE BELOW mark existed prior to Respondent’s registration of the at-issue domain name.
Respondent is not authorized to use Complainant’s trademark.
Respondent uses the <fivebelowvip.com> domain name to offer goods for sale that compete with Complainant’s offering.
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.
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of the FIVE BELOW mark with the USPTO sufficiently demonstrates Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Recreational Equipment, Inc. v. Liu Chan Yuan, FA 2107001954773 (Forum Aug. 9, 2021) (“Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i)”).
Respondent’s <fivebelowvip.com> domain name incorporates Complainant’s entire FIVE BELOW trademark less its domain name impermissible space, followed by the generic term “vip and by the top-level domain name “.com.” Respondent’s alterations to Complainant’s trademark in creating the at-issue domain name fail to distinguish the domain name from Complainant’s trademark under the Policy. Therefore, the Panel concludes that Respondent’s <fivebelowvip.com> domain name is confusingly similar to Complainant’s FIVE BELOW trademark pursuant to Policy ¶ 4(a)(i). See Indeed, Inc. v. Mohit Kumar, FA2107001956689 (Forum Aug. 23, 2021) (“the addition of the generic designation ‘vip’ to the Complainant's mark does not prevent confusing similarity . . . [and t]he gTLD ‘.com’ does not serve to distinguish the Domain Name from the Complainant’s mark”); see also 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 additionally Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
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, absent evidence of Policy ¶ 4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, and 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 fact that Respondent recently applied for a similar trademark registration with the USPTO does not, without more, give Respondent rights in the subject mark superior to those of Complainant who owns a USPTO registration for the FIVE BELOW mark. Therefore, Complainant has put forth a prima facie showing that Respondent lacks both rights and interest regarding <fivebelowvip.com> under Policy ¶ 4(a)(ii). 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)”).
The WHOIS information for <fivebelowvip.com> shows that “380137842” is the domain name’s registrant. Additionally, there is nothing in the record before the Panel that indicates that Respondent is otherwise known by the <fivebelowvip.com> domain name or by FIVE BELOW. Therefore, Respondent does cannot show its rights or legitimate interests by claiming that it was commonly known by the at-issue domain name per Policy ¶ 4(c)(ii). See Emerson Electric Co. v. check log101 / check log101 101, FA2004001892094 (Forum May 26, 2020) (finding that Respondent is not commonly known by the disputed domain name because the WHOIS information for the disputed domain name lists the registrant as “check log101/check log101 101”).
Respondent’s confusingly similar <fivebelowvip.com> domain name addresses a website offering retail products for sale that compete with products offered by Complainant. Notable all the products on Respondent’s website are also apparently priced at $5.00; a five dollar price point is the dominant feature of Complainant’s marketing model. Upon visiting Respondent’s website visitors are likely to be confused as the source or sponsorship of Respondent’s domain name and referenced website. Respondent’s use of the confusingly similar domain name <fivebelowvip.com> to operate a website the competes with Complainant by capitalizing on the similarity between the at-issue domain name and Complainant’s trademark is not indicative of a bona fide offering of goods or services under Policy ¶ 4(c)(i). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Alcon, Inc. v. ARanked, FA 1306493 (Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”);
Given the forgoing, Complainant satisfies its initial burden under Policy ¶ 4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
Respondent’s <fivebelowvip.com> domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present that compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, Respondent uses the <fivebelowvip.com> domain name to address a website offering goods that compete with offerings by Complainant and that features an identical unit price point to that conspicuously featured by Complainant. Respondent’s use of <fivebelowvip.com> to sell competing goods is evidence of bad faith disruption of Complainant’s business under Policy ¶ 4(b)(iii) and also shows an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum Jan. 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”); see additionally Gardens Alive, Inc. v. D&S Linx, FA 203126 (Forum Nov. 20, 2003) (“Respondent registered and used the <my-seasons.com> domain name in bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv) because Respondent is using a domain name that is confusingly similar to the MYSEASONS mark for commercial benefit by diverting Internet users to the <thumbgreen.com> website, which sells competing goods and services.”).
Moreover, Respondent had actual knowledge of Complainant’s rights in the FIVE BELOW mark when it registered <fivebelowvip.com> as a domain name. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark from Respondent’s use of the <fivebelowvip.com> domain name and website to offer competing goods for sale as discussed elsewhere herein. Registering and using a confusingly similar domain name with knowledge of Complainant’s rights in such domain name shows Respondent’s bad faith registration and use of <fivebelowvip.com> 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); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION 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 <fivebelowvip.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: December 15, 2021
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