Hypebeast Hong Kong Limited v. Thinh Huynh
Claim Number: FA2207002003720
Complainant is Hypebeast Hong Kong Limited (“Complainant”), represented by Jorge Arciniega of Loeb & Loeb LLP, California, USA. Respondent is Thinh Huynh (“Respondent”), Viet Nam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hypebeaststores.com>, registered with NameCheap, Inc..
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 11, 2022; the Forum received payment on July 11, 2022.
On July 12, 2022, NameCheap, Inc. confirmed by e-mail to the Forum that the <hypebeaststores.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 July 12, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 1, 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@hypebeaststores.com. Also on July 12, 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 August 3, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 states that it operates a leading online destination for men’s contemporary fashion and culture. Complainant’s history dates back to 2005, when Complainant’s founder, journalist and businessman Kevin Ma, started a “Hypebeast” blog originally catering towards the world of sneakers and streetwear. The blog has subsequently expanded into a world-famous website and one of the leading online destinations for men’s contemporary fashion and culture at <hypebeast.com>. Complainant owns copyright in the contents of this website, which has diversified itself to include features and interviews that profile designers and brands; a full-fledged video platform offering a unique cinematic outlook; a guest blogger section that features the lives and insights of industry insiders; and finally a community where users can interact and connect. The website attracts a vast and diverse readership from around the globe with over 5 million visitors a month and over 35 million page views per month. Complainant operates an online retail store at the cited website. Complainant’s online retail store has given visitors the opportunity to conveniently shop and purchase some of Complainant’s favorite clothing, footwear and accessories brands spanning streetwear to contemporary and high fashion. The store offers a one-stop destination for numerous innovative and highly sought-after brands. Complainant claims rights in the HYPEBEAST mark through its registration with multiple trademark agencies, including in the United States in 2009.
Complainant alleges that the disputed domain name is identical or confusingly similar to its HYPEBEAST mark as it incorporates the mark in its entirety and merely adds the generic term “stores”, as well as the “.com” generic top-level domain (“gTLD”). Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent lacks rights or legitimate interests in the disputed domain name. Complainant has not licensed or authorized Respondent to use its HYPEBEAST mark. Respondent does not use the domain name in connection with any bona fide offering of goods or services, nor for a legitimate non-commercial or fair use. Rather, the resolving website offers competing goods and services that are identical to those offered by the Complainant. The resolving website reproduces certain copyrighted contents taken from Complainant’s website. Consumers shopping at the store at the resolving website understood the store to be operated by Complainant and misdirected their consumer complaints pertaining to the orders placed through this website to Complainant. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. Respondent uses the disputed domain name to attract users and disrupt Complainant’s business in bad faith by selling competing products and services. Further, Respondent uses the confusingly similar domain name to pass off as Complainant and create a false impression of affiliation with Complainant. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the HYPEBEAST mark. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark HYPEBEAST and uses it to provide a clothing blog and online store.
Complainant’s rights in its mark date back to 2009.
The disputed domain name was registered in 2019.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The resolving website displays Complainant’s mark, images of Complainant’s products, and material copied from Complainant’s website; it offers for sale products that compete with those of Complainant.
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”).
The disputed domain name incorporates Complainant’s HYPEBEAT mark in its entirety and merely adds the generic term “stores”, as well as the “.com” generic top-level domain (“gTLD”). Under Policy ¶ 4(a)(i), the addition of a generic term and a gTLD does not sufficiently distinguish a disputed domain name from a protected mark. See MTD Products Inc v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”). Therefore the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use its HYPEBEAST mark. Respondent is not commonly known by the disputed domain names: under Policy ¶ 4(c)(ii), the Panel may reference WHOIS information to determine whether a respondent is commonly known by a disputed domain name. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Here, the WHOIS information for the disputed domain name shows that the registrant is “Thinh Huynh”. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
The resolving website offers competing goods and services that are identical to those offered by Complainant and reproduces content from Complainant’s legitimate website. Use of a disputed domain name’s resolving webpage to offer unauthorized versions of Complainant’s goods does not qualify as any bona fide offering of goods or services, nor a legitimate non-commercial or fair use within the meaning of Policy ¶¶ 4(c)(i) and (iii). See Nike, Inc. v. Dias, FA 135016 (Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors). Additionally, impersonating a complainant in a confusingly similar domain name’s resolving webpage is neither a bona fide offering of goods or services, nor a legitimate non-commercial or fair use. See Nokia Corp. v. Eagle, FA 1125685 (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)). Thus the Panel finds that Respondent fails to use the disputed domain name to make a bona fide offering of goods or services, or a legitimate noncommercial or fair use within the meaning of Policy ¶¶ 4(c)(i) or (iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, Respondent uses the disputed domain name to disrupt Complainant’s business by offering Complainant’s goods or services without authorization This may demonstrate a respondent’s bad faith under Policy ¶ 4(b)(iii). See Fossil, Inc. v. NAS, FA 92525 (Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant). Thus the Panel finds bad faith registration and use per Policy ¶ 4(b)(iii).
Further, also as already noted, Respondent uses the disputed domain name to pass off as Complainant, creating customer confusion. Past panels have found bad faith where the respondent used a confusingly similar domain name in order to pass off as a complainant. See Fanuc Ltd v. Mach. Control Servs., FA 93667 (Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products);see also Russell & Bromley Limited v. Li Wei Wei, FA 1752021 (Forum Nov. 17, 2017) (finding the respondent registered and used the at-issue domain name in bad faith because it used the name to pass off as the complainant and offer for sale competitive, counterfeit goods). Thus the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s mark: the resolving website displays Complainant’s mark, images of Complainant’s products, and material copied from Complainant’s legitimate website. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); 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). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this constitutes bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hypebeaststores.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: August 3, 2022
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