York Wallcoverings, Inc. v. Yang Zhi Chao
Claim Number: FA2206001999278
Complainant is York Wallcoverings, Inc. (“Complainant”), represented by Matthew A. Homyk of Blank Rome LLP, Pennsylvania, USA. Respondent is Yang Zhi Chao (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yorkwallpape.com> (the “Disputed Domain Name”), registered with eName Technology Co., Ltd.
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Douglas M. Isenberg (chair), The Honorable Neil Anthony Brown QC and Michael A. Albert as Panelists.
Complainant submitted a Complaint to the Forum electronically on June 6, 2022; the Forum received payment on June 6, 2022. The Complaint was submitted in English.
On June 10, 2022, eName Technology Co., Ltd. confirmed by e-mail to the Forum that the <yorkwallpape.com> domain name is registered with eName Technology Co., Ltd. and that Respondent is the current registrant of the name. eName Technology Co., Ltd. has verified that Respondent is bound by the eName 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 June 15, 2022, the Forum served the Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of July 5, 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@yorkwallpape.com. Also on June 15, 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 July 13, 2022, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Douglas M. Isenberg (chair), The Honorable Neil Anthony Brown QC and Michael A. Albert 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
The Complaint was submitted in English, and the Registrar informed the Forum that the language of the registration agreement is Chinese. Paragraph 11(a) of the Rules states: “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding” (emphasis added). As set forth in WIPO Overview 3.0, section 4.5, “panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement,” including, inter alia, “evidence showing that the respondent can understand the language of the complaint” and “any content on the webpage under the disputed domain name.”
Here, Complainant argued that “Respondent is capable of understanding the English language and, therefore, the proceedings should be conducted in English,” citing “a screenshot of the webpage to which Respondent’s domain name resolves” that “is exclusively in the English language,” which the Panel has confirmed is based on the annex provided by the Complainant. Given this, as well as the lack of a Response from the Respondent (noting that the Forum transmitted the Complaint to the Respondent with a notice in Chinese), the Panel concludes that it is appropriate for this proceeding to be conducted in English.
A. Complainant
Complainant states that it is “the oldest and largest wallcovering producer in the United States, manufacturing residential wallpaper, commercial wallcoverings and wall decals that can be found across 85 countries worldwide.”
Complainant further states, and provides evidence in support thereof, that it is the owner of two federal trademark registrations in the United States, U.S. Reg. Nos. 5,100,232 for YORK WALLCOVERINGS (design) for use in connection with “wallpaper” and “wallcoverings”; and 1,838,707 for YORK (registered June 7, 1994) for use in connection with “fabrics for use in the manufacture of products used in home decorating and interior design.” These registrations are referred to hereafter as the “YORK Trademark.”
Complainant also states that it owns “registrations for the YORK WALLCOVERINGS mark in International Class 27 in the European Union, Republic of Korea, Russian Federation, and United Kingdom, and the YORK mark in International Class 27 for wallpaper in Argentina, Australia, Azerbaijan, Bahrain, Belarus, Bolivia, Brazil, Cambodia, Canada, Chile, Colombia, Cuba, Ecuador, Egypt, Hong Kong, Indonesia, Israel, Japan, Jordan, Kazakhstan, Kuwait, Lebanon, Macao, Malaysia, Malaysia, Mexico, New Zealand, Norway, Oman, Paraguay, Peru, Philippines, Qatar, Republic of Korea, Saudi Arabia, Singapore, South Africa, Syrian Arab Republic, Taiwan, Thailand, Turkey, Ukraine, United Arab Emirates, Uruguay, Venezuela, and Yemen.” However, Complainant has provided no documentation of these registrations.
Complainant states, and provides evidence to support, that the Disputed Domain Name is being used in connection with a website that contains “pay-to-click advertisements for ‘Wall Wallpaper’ and ‘Wall Murals’.” An annex provided by Complainant shows the website containing links labeled “Free Background Checker,” “Wall Wallpaper,” and “Alteryx Desktop Download.”
Complainant asserts that the Disputed Domain Name is identical to the YORK Trademark because “Respondent has merely combined the registered YORK trademark with the misspelling of the generic term for Complainant’s goods, ‘wallpaper’.”
Complainant asserts that Respondent has no rights or legitimate interests in the Disputed Domain Name because, inter alia, “Respondent’s only use for the domain name is to trade off of the goodwill of the famous YORK and YORK WALLCOVERINGS trademarks in order to confuse Internet users into thinking that by entering the domain name, they would be taken to a website operated by Complainant”; “Respondent cannot establish use of, or establish 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”; “Respondent cannot show that it has ever been commonly known by the domain name or has ever acquired any trademark or trademark rights in the domain name. See Policy Paragraph 4(c)(ii). Because Complainant’s YORK and YORK WALLCOVERINGS trademarks have been extensively used for over one hundred years, more than a century prior to Respondent’s acquisition of the domain in 2022”; and “Respondent cannot show that it has made a legitimate noncommercial or fair use of the domain name.”
Complainant asserts that the Disputed Domain Name was registered and is being used in bad faith because, inter alia, “Respondent’s use of the domain name here is simply an attempt to attract consumers 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.
Complainant is the owner of U.S. Reg. Nos. 5,100,232 for YORK WALLCOVERINGS (design) for use in connection with “wallpaper” and “wallcoverings”; and 1,838,707 for YORK (registered June 7, 1994) for use in connection with “fabrics for use in the manufacture of products used in home decorating and interior design.” These registrations are referred to hereafter as the “YORK Trademark.”. The Disputed Domain Name was created on April 21, 2022, and is being used in connection with a website that provides what appear to be pay-per-click (“PPC”) links, including at least one labeled “Wall Wallpaper.”
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 Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 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”).
Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the YORK Trademark.
As to whether the Disputed Domain Name is identical or confusingly similar to the YORK Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “yorkwallpape”) because “[t]he applicable Top-Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”. WIPO Overview 3.0, section 1.11.1.
As set forth in section 1.7 of WIPO Overview 3.0: “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” Here, the Disputed Domain Name incorporates the entirety of U.S. Reg. No. 1,838,707 for YORK. In addition, the Disputed Domain Name incorporates the entirety of the textual element of U.S. Reg. No. 5,100,232 for YORK WALLCOVERINGS (design) (noting that, as set forth in section 1.10 of WIPO Overview 3.0, “[t]o the extent that design (or figurative/stylized) elements would be incapable of representation in domain names, these elements are largely disregarded for purposes of assessing identity or confusing similarity under the first element”), other than the typographical word “wallpape” instead of “wallpaper.” As set forth in section 1.9 of WIPO Overview 3.0: “A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element.” Indeed, previous domain dispute panels have found that a domain name that is identical to a complainant’s trademark except for a single letter – as is the case here – is confusingly similar to the trademark. See, e.g., Instra Corporation Pty Ltd v. Domain Management SPM, WIPO Case No. D2009-1097 (a domain name that is “simply missing a single letter in the mark” is confusingly similar to the mark).
Accordingly, the Panel finds that Complainant has proven the first element of the Policy.
Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “Respondent’s only use for the domain name is to trade off of the goodwill of the famous YORK and YORK WALLCOVERINGS trademarks in order to confuse Internet users into thinking that by entering the domain name, they would be taken to a website operated by Complainant”; “Respondent cannot establish use of, or establish 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”; “Respondent cannot show that it has ever been commonly known by the domain name or has ever acquired any trademark or trademark rights in the domain name. See Policy Paragraph 4(c)(ii). Because Complainant’s YORK and YORK WALLCOVERINGS trademarks have been extensively used for over one hundred years, more than a century prior to Respondent’s acquisition of the domain in 2022”; and “Respondent cannot show that it has made a legitimate noncommercial or fair use of the domain name.”
WIPO Overview 3.0, section 2.1, states: “[w]hile the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
The Panel finds that Complainant has established its prima facie case and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the Policy.
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).
Numerous UDRP panels have found the registration and use of a domain name that is confusingly similar to a complainant’s trademark to constitute bad faith pursuant to paragraph 4(b)(iv) of the Policy where, as here, the disputed domain name is associated with a monetized parking page that contains links for goods or services competing with the complainant. See, e.g., Wal-Mart Stores, Inc. v. Whois Privacy, Inc., WIPO Case No. D2005-0850 (“where, as here, the links are apparently to competitive websites, especially when there is no indication that the links are not sponsored by or affiliated with the relevant trademark owner, such activity indicates bad faith under the Policy”).
Accordingly, the Panel finds that Complainant has proven the third element of the Policy.
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 <yorkwallpape.com> domain name be TRANSFERRED from Respondent to Complainant.
Douglas M. Isenberg (chair), The Honorable Neil Anthony Brown QC and Michael A. Albert, Panelists
Dated: July 19, 2022
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