FragranceX.com, Inc. v. XU SHUAIWEI
Claim Number: FA1011001356223
Complainant is FragranceX.com, Inc. (“Complainant”), represented by Maulin V. Shah of UDRPro, LLC, North Carolina, USA. Respondent is XU SHUAIWEI (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fagrancex.com>, registered with eNom, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 3, 2010; the Forum received payment on November 3, 2010.
From December 21, 2010 through May 3, 2016 the matter was suspended due to court proceeding(s) involving the named Respondent at the time. In May of 2016, Forum discovered that despite the lock imposed on the domain name at the start of the proceedings, a new registrant appeared on the WHOIS record. The Forum was not notified and is not aware of any court proceeding(s) or court order(s) resulting in a mandatory stay of all proceedings against the newly named registrant. Therefore, this administrative proceeding was resumed against the currently named registrant or Respondent.
On May 16, 2016, eNom, Inc. confirmed by e-mail to the Forum that the <fagrancex.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 May 17, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 6, 2016 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@fagrancex.com. Also on May 17, 2016, 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 June 9, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant, FragranceX.com, Inc., is a global online retailer of perfumes, colognes, fragrances, skincare products, aftershave products, makeup and cosmetic products. Complainant owns a trademark registration for the FRAGRANCEX.COM mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,365,121, filed Apr. 25, 2007, registered Jan. 8, 2008).
2. Respondent’s <fagrancex.com> domain name is confusingly similar to Complainant’s FRAGRANCEX.COM mark because the single difference between the two is the omission of the first letter “r” in the disputed domain name.
3. Respondent does not have any rights or legitimate interests in or to the disputed domain. Respondent does not operate a business under the name and does not have a registration for any trademark relating to Complainant’s FRAGRANCEX.COM mark. The WHOIS information for the <fagrancex.com> domain name lists the registrant as “XU SHUAIWEI.” Respondent’s <fagrancex.com> domain name resolves to a directory of pay-per-click links to third-party commercial websites in competition with Complainant within the perfume/cologne industry which does not represent a bona fide offering of goods or services or any legitimate noncommercial or fair use.
4. Respondent registered and uses the domain in bad faith. Respondent uses the <fagrancex.com> domain name to redirect Internet users to a directory page featuring many third-party links offering services in competition with Complainant, which disrupts Complainant’s business under Policy ¶ 4(b)(iii).
5. Respondent’s operation of a directory website which resolves from the <fagrancex.com> domain name presumably financially benefits Respondent by displaying links that are related to Complainant’s business. This creates a greater likelihood that Internet users searching for Complainant will click on them, providing Respondent “click-through” fees which amounts to proscribed conduct pursuant to Policy ¶ 4(b)(iv).
6. Lastly, as of the filing of the Complaint on May 13, 2016, Respondent utilized a privacy service which obscured its identity, demonstrating bad faith use per Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the FRAGRANCEX.COM mark. Respondent’s domain name is confusingly similar to Complainant’s FRAGRANCEX.COM mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <fagrancex.com> domain name, and that Respondent registered and uses the domain name in bad faith.
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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant, FragranceX.com, Inc., is a global online retailer of perfumes, colognes, fragrances, skincare products, aftershave products, makeup and cosmetic products. Complainant owns a trademark registration for the FRAGRANCEX.COM mark with the USPTO (Reg. No. 3,365,121, filed Apr. 25, 2007, registered Jan. 8, 2008). Complainant’s rights date back to the filing date with the USPTO. See Lenovo (Beijing) Limited Corporation China v. jeonggon seo, FA 1591638 (Forum Jan. 16, 2015) (finding Complainant has rights in the LENOVO mark dating back to the February 20, 2003 filing date with the USPTO as the trademark application was ultimately successful).
Although the domain name was originally registered in 2006, for the following reasons the Panel concludes that April 2015 is the proper date to consider as the date of registration. Due to the nature of the proceedings, the domain has changed hands, and based on the evidence presented, does not belong to the original registrant at the time of commencement of this proceeding. The record reflects the following:
· The original Registrant, Texas International Property Associates, terminated its holding of the domain on December 29, 2010 or else remained as registrant through a privacy service engaged on the same date.
· This privacy guard terminated on April 25, 2015, and the next entity to hold the domain was “Mei Cheng.” Mei Cheng terminated its holding of the disputed domain on March 3, 2016 or else remained as registrant through a privacy service engaged on the same date.
· This privacy guard terminated on May 13, 2016, and “XU SHUAIWAI” was revealed as the registrant of the disputed domain on the that date. However, the WHOIS record still shows a creation date of April 25, 2015.
This matter was under administrative stay due to court proceeding(s) from December 21, 2010 through May 3, 2016. Although the domain name should have been locked under Policy ¶ 8(a), the WHOIS records during this period present otherwise. The current WHOIS record, presented at the time the stay was lifted and the case was reactivated, reflects a creation date of April 25, 2015, and Registrant Name of XU SHUAIWEI after the Registrar lifted the privacy shield. Therefore, for the foregoing reasons, the Panel concludes that XU SHUAIWAI is the relevant Respondent, with earliest possible registration date of April 25, 2015 pursuant to the publicly available WHOIS information. Accordingly, in light of the foregoing, the registration of Complainant’s FRAGRANCEX.COM mark preceded the registration of the <fagrancex.com> domain name.
Complainant argues that Respondent’s <fagrancex.com> domain name is confusingly similar to the FRAGRANCEX.COM mark because the single difference between the two is the omission of the first letter “r” in the disputed domain name. Omission of a single letter is not been considered to be a distinguishing alteration to a mark. See Twitch Interactive, Inc. v. zhang qin, FA 1626511 (Forum Aug. 4, 2015) (finding, “The relevant comparison then resolves to the trademark, TWITCH, with the term, ‘titch,’ which, as can be readily seen, merely removes the letter ‘w’ from the trademark. In spite of that omission the compared integers remain visually and aurally very similar and so Panel finds them to be confusingly similar for the purposes of the Policy.”). Therefore, <fagrancex.com> the domain is confusingly similar to the FRAGRANCEX.COM mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <fagrancex.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant posits that Respondent registered and uses the <fagrancex.com> domain in bad faith. Complainant argues that Respondent uses the <fagrancex.com> domain name to redirect Internet users to a directory page featuring many third-party links offering services in competition with Complainant, which disrupts Complainant’s business under Policy ¶ 4(b)(iii), and presumably financially benefits Respondent through “click-through” fees, implicating Policy ¶ 4(b)(iv). The Panel agrees. See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”); see also Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (holding that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶ 4(b)(iv)). Therefore, the Panel agrees that Respondent has demonstrated bad faith registration and use per Policy ¶¶ 4(b)(iii) and (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <fagrancex.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson Panelist
Dated: June 15, 2016
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