York Wallcoverings, Inc. v. Zhichao Yang
Claim Number: FA2201001980154
Complainant is York Wallcoverings, Inc. (“Complainant”), represented by Timothy D. Pecsenye of Blank Rome LLP, Pennsylvania, USA. Respondent is Zhichao Yang (“Respondent”), of Zhengqu District, Hefei, Anhui, China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yorkwallcoverins.com> (the “Domain Name”), registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn).
The undersigned certify that they each have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Mr Clive L Elliott Q.C. as Chair, and Mr Debrett Gordon Lyons and Ms Katalin Szamosi as Panelists.
Complainant submitted a Complaint to the Forum electronically on January 12, 2022; the Forum received payment on January 12, 2022. The Complaint was received in English.
On January 14, 2022, Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) confirmed by e-mail to the Forum that the 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 January 20, 2022, 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 February 9, 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@yorkwallcoverins.com. Also on January 20, 2022, 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 February 17, 2022, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Mr Clive L Elliott Q.C. as Chair, and Mr Debrett Gordon Lyons and Ms Katalin Szamosi as Panelists.
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
Pursuant to UDRP Rule 11(a), the Panel finds that sufficient evidence has been adduced by Complainant to suggest the likely possibility that Respondent is sufficiently conversant and proficient in the English language to read and understand the Complaint. The single submission is that Respondent’s competency in English is demonstrated by the English language links from the resolving site. The Panel is not convinced by that argument given that those links were in all likelihood auto-generated and this says little about Respondent’s ability with English. The Panel does however note that an argument might be made that the omission of the letter “g” from the Domain Name showed an understanding of English. Nonetheless, past panelists as a whole appear to have set the bar on this issue relatively low. Having considered the circumstance of the present case, the Panel decides that the proceeding should be in English.
A. Complainant
Complainant is a wallpaper manufacture located in Pennsylvania, United States.
Complainant owns the United States registered trademarks YORK and YORK WALLCOVERINGS (“Complainant’s Marks”) in connection with wallpaper. It also has International Class 27 registrations in many other countries worldwide. Complainant is also the owner of the domain name <yorkwallcoverings.com> (“Complainant’s Domain Name”).
According to the publicly available WhoIs the Domain Name was registered on December 27, 2021 and Complainant advises that the Domain Name currently resolves to an active website displaying pay-per-click advertisements for ‘York Wallpaper’, ‘Wall Coverings’ and ‘York Wall coverings’.
Complainant asserts that the Domain Name is almost identical to Complainant’s Marks and Complainant’s Domain Name, with the deletion of the letter “g” at the end of ‘York Wallcoverings’. This alteration of Complainant’s well-known Mark fails to create a separate and distinct mark and thus renders the Domain Name confusingly similar to Complainant’s Marks.
Complainant contends that Respondent has registered the Domain Name in a blatant attempt to capitalize on Complainant’s fame and goodwill. It further states that Respondent has no rights or legitimate interests with respect to the Domain Name.
Complainant claims that the Domain Name has been registered and is being used in bad faith for Respondent’s own commercial gain by creating a likelihood of confusion between the goods advertised on its website and the legitimate goods offered by Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set out below the Panel finds for Complainant and orders a transfer of the Domain Name.
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, provided they are not mere conclusory or unsubstantiated arguments.
Complainant asserts rights in Complainant’s Marks based on evidence of registration of the marks with the United States Patent & Trademark Office, a national trademark authority. The Panel finds that Complainant has rights in the Complainant’s Marks under Policy ¶ 4(a)(i).
Complainant argues that the Domain Name is confusingly similar to Complainant’s Marks since it merely misspells the YORK WALLCOVERINGS mark by omitting the letter “G.” In terms of the YORK WALLCOVERINGS mark, it is well-established that misspelling a mark by omitting a single letter does not distinguish the disputed domain name from the mark it incorporates. See for example, Compaq Info. Techs. Group, L.P. v. Seocho, FA 103879 (Forum Feb. 25, 2002) (finding that the domain name <compq.com> is confusingly similar to the complainant’s COMPAQ mark because the omission of the letter “a” in the domain name does not significantly change the overall impression of the mark). On that basis the Panel is satisfied that the Domain Name is confusingly similar to YORK WALLCOVERINGS under Policy ¶ 4(a)(i) on the basis set out above or in the case of the YORK mark confusing similarity where a purely descriptive term is added to a distinctive mark.
The Panel accordingly finds that Complainant has satisfied the first element of the Policy.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in Domain Name to then enable the burden to shift to Respondent to show it does have rights or legitimate interests.
Here, Complainant contends that Respondent does not have rights or legitimate interests in the Domain Name because Respondent is not commonly known by the disputed domain name. Given no response is submitted, WHOIS information can be called upon to inform this issue. It shows that Respondent is not, on the face of it, commonly known by the Domain Name. Further, there is nothing else in the evidence to suggest that that is the case.
Complainant argues that Respondent is using the Domain Name to host pay-per-click advertisements to competing goods. Such conduct offering monetized advertisements to competing goods or services does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See for example, TGI Friday’s of Minnesota, Inc. v. Tulip Company / Tulip Trading Company, FA 1691369 (Forum Oct. 10, 2016) (”Respondent uses the domain for a parking page displaying various links that consumers are likely to associate with Complainant, but that simply redirect to additional advertisements and links that divert traffic to third-party websites not affiliated with Complainant… The Panel here finds that Respondent is not using the domain name in connection with a bona fide offering of goods or services.”). In this particular case, Complainant has provided a screenshot showing the Domain Name resolves to a parked webpage with pay-per-click hyperlinks to various “wallcovering”. Under the circumstances the Panel finds that Respondent is not using the Domain Name for 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).
The Panel accordingly finds that Complainant has satisfied the second element of the Policy.
Picking up on the same point as above, Complainant argues that Respondent registered and uses the Domain Name in bad faith because Respondent uses the Domain Name to host pay-per-click advertisements to competing goods. The Panel considers this argument has merit insofar as it points to be evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv).
Actual knowledge of a complainant’s trademark rights is sufficient to establish bad faith and can be demonstrated by the fame of the mark and the use the respondent makes of the domain name. Given the similarity between Complainant’s Marks and the Domain Name, Complainant’s prior registration rights in Complainant’s Marks and Respondent’s monetization of the Domain Name the Panel finds Respondent had actual knowledge of Complainant’s rights in Complainant’s Marks and accordingly that bad faith registration is made out.
Further, the Panel finds bad faith use by inferring commercial gain in some form or another by Respondent.
Finally, in terms of the use by Respondent of a WHOIS privacy service to conceal its identity the Panel does not place a great deal of weight on this but does take it into account. That is, to the extent that Respondent has utilized a privacy shield in a manner which materially adversely affects or obscures the facts of this proceeding, supports the view that Respondent has registered and used the Domain Name in bad faith under Policy ¶ 4(a)(iii).
The Panel accordingly finds that Complainant has satisfied the third and final element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <yorkwallcoverins.com> domain name be TRANSFERRED from Respondent to Complainant.
Clive L Elliott Q.C. Chair of the Panel,
and Debrett Gordon Lyons and Katalin Szamosi as Panelists
Dated: March 2, 2022
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