Seven for all Mankind International SAGL v. Yan Yan
Claim Number: FA2204001993198
Complainant is Seven for all Mankind International SAGL (“Complainant”), represented by Matthew Anderson of Munck Wilson Mandala, LLP, Texas, USA. Respondent is Yan Yan (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <storemankind.com>, registered with Name.com, Inc.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 20, 2022; the Forum received payment on April 20, 2022.
On April 21, 2022, Name.com, Inc. confirmed by e-mail to the Forum that the <storemankind.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 April 22, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 12, 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@storemankind.com. Also on April 22, 2022, 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 May 17, 2022, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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, Seven for All Mankind International SAGL, is a Switzerland-based multinational corporation which manufactures, markets, and sells clothing and other textiles. Complainant claims rights in the 7 FOR ALL MANKIND mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,890,644, registered Oct. 5, 2004). The domain name <storemankind.com> is functionally identical or confusingly similar to Complainant’s 7 FOR ALL MANKIND mark because the word MANKIND is a dominant feature of the relevant mark and is recognizable in the disputed domain name, only differing by adding the generic term “store” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <storemankind.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the 7 FOR ALL MANKIND mark in any way. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain to pass off as Complainant and offers unauthorized goods branded with Complainant’s 7 FOR ALL MANKIND mark.
Respondent registered and uses the <storemankind.com> domain name in bad faith. Respondent uses the disputed domain name to pass off as Complainant to sell goods to commercially benefit, unfairly and opportunistically, from the goodwill associated with Complainant’s Mark. Respondent had actual knowledge of Complainant’s rights into the 7 FOR ALL MANKIND mark based on Respondent’s efforts to pass off as Complainant on the resolving website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, based upon the uncontested allegations and evidence, the Panel finds that Complainant is entitled to the requested relief of transfer of the <storemankind.com> 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; 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 rights to the 7 FOR ALL MANKIND mark through its registration with the USPTO (e.g., Reg. No. 2,890,644, registered Oct. 5, 2004). Registration of a mark with a trademark agency such as the USPTO is generally sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Complainant has provided evidence of registration with the USPTO. The Panel finds that Complainant has rights in the 7 FOR ALL MANKIND mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <storemankind.com> domain name is functionally identical and confusingly similar to Complainant’s 7 FOR ALL MANKIND mark because it incorporates the word “mankind,” which is a dominant feature of Complainant’s mark, and is preceded by the term “store” before also adding the “.com” gTLD. The addition of a generic or descriptive phrase and gTLD generally fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). Furthermore, adoption of a dominant portion of a legitimate mark into a domain name has been held to bolster claims of confusing similarity. See Supercell Oy v. WhoisProxy.com Ltd / Jordan Rash, Application Automation LLC, D2015-1445 (WIPO Oct 9, 2015) (determining that Respondent’s incorporation of the word “clash” into a domain conferred standing because “clash was identical to Complainant’s CLASH OF CLANS mark). Additionally, Respondent attempts to pass off as Complainant at the website by offering counterfeit goods branded with Complaint’s mark and logo. The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has proved this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”). The Panel finds that Complainant has made a prima facie case.
Complainant argues Respondent lacks rights or legitimate interest in the <storemankind.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been given license or consent to use the 7 FOR ALL MANKIND mark or a register domain name using Complainant’s mark. Where 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. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. 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)”). The WHOIS information associated with the disputed domain name lists the registrant as “Yan Yan” and there is no evidence that Respondent has rights in the domain name nor was known by the domain name. The Panel finds that Respondent is not commonly known by the disputed domain name and was not granted usage rights per Policy ¶ 4(c)(ii).
Complainant argues that Respondent failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use of the disputed domain name. Instead, Respondent uses the <storemankind.com> domain to pass itself off as Complainant. Use of a disputed domain name in an attempt to pass off as complainant is not a bona fide offer or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Nokia Corporation v. John Eagle, FA0801001125685 (Forum Feb. 7, 2008) (finding the Respondent’s use of the disputed domain name to pass itself off as the Complainant in order to advertise and sell unauthorized products of the Complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)). Complainant provides screenshots of the disputed domain name’s resolving page and its own webpage to substantiate its claim. The Panel finds that Respondent failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii) and Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has proved this element.
Complainant argues that Respondent registered and uses the <storemankind.com> domain name in bad faith because Respondent disrupts Complainant’s business and attempts to attract Internet users to its competing website for commercial gain. Where the respondent uses a disputed domain name to pass itself off as a complainant, the Panel may find 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). See 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.”) Complainant provides screenshots of the disputed domain name’s resolving page and its own webpage. This is evidence that Respondent registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and/or (iv).
Complainant argues that Respondent had actual knowledge of Complainant’s rights in the 7 FOR ALL MANKIND mark at the time of registering the <storemankind.com> domain name. Actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name can adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 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”). To support this assertion, Complainant points to its trademark registrations along with the fact that Respondent impersonates Complainant through the disputed domain name and through usage of its logo on the resolving website. The Panel finds that Respondent did have actual knowledge of Complainant’s right in its mark, and registered and uses the domain name in bad faith.
Complainant has proved this element.
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 <storemankind.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
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