Act II Jewelry, LLC d/b/a lia sophia v. dandan / mouzhang
Claim Number: FA1104001385561
Complainant is Act II Jewelry, LLC d/b/a lia sophia (“Complainant”), represented by Maribel Silva of Act II Jewelry, LLC d/b/a lia sophia, Illinois, USA. Respondent is dandan / mou zhang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cheapliasophia.com>, registered with Jiangsu Bangning Science & Technology Co. Ltd.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 25, 2011; the National Arbitration Forum received payment on April 25, 2011. The Complaint was submitted in both the Chinese and English languages.
On April 26, 2011, Jiangsu Bangning Science & Technology Co. Ltd. confirmed by e-mail to the National Arbitration Forum that the <cheapliasophia.com> domain name is registered with Jiangsu Bangning Science & Technology Co. Ltd. and that Respondent is the current registrant of the name. Jiangsu Bangning Science & Technology Co. Ltd. has verified that Respondent is bound by the Jiangsu Bangning Science & Technology Co. Ltd. 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 29, 2011, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of May 19, 2011 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@cheapliasophia.com. Also on April 29, 2011, the Chinese Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 24, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.), as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <cheapliasophia.com> domain name is confusingly similar to Complainant’s LIA SOPHIA mark.
2. Respondent does not have any rights or legitimate interests in the <cheapliasophia.com> domain name.
3. Respondent registered and used the <cheapliasophia.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Act II Jewelry, LLC d/b/a lia sophia, is a designer, manufacturer, and marketer of jewelry products which are distributed to consumers by independent direct sales advisors through home shows. Complainant owns a trademark registration with the United States Patent and Trademark Office ("USPTO") for its LIA SOPHIA mark (Reg. No. 3,193,032 issued January 2, 2007).
Respondent, dandan / mouzhang, registered the <cheapliasophia.com> domain name on April 16, 2011. Respondent is allegedly using the domain name to market and sell counterfeit jewelry products under Complainant’s trademark.
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."
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(e), 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 (Nat. Arb. 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.”).
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.
Complainant has submitted evidence to show that it owns a trademark registration with the USPTO for its LIA SOPHIA mark (Reg. No. 3,193,032 issued January 2, 2007). The Panel finds that such evidence is sufficient for Complainant to establish rights in its mark under Policy ¶ 4(a)(i), although Respondent’s listed address is in China. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant argues that the <cheapliasophia.com> domain name is confusingly similar to Complainant’s LIA SOPHIA mark. The Panel agrees and finds that Respondent’s domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i) where the domain name merely omits the space between the terms of the mark and adds the generic term “cheap” and the generic top-level domain (“gTLD”) “.com.” See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not any rights and legitimate interests in the <cheapliasophia.com> domain name. Complainant is required to make a prima facie case in support of these allegations. Once Complainant has produced a prima facie case the burden of proof shifts to Respondent to show that it possesses rights or legitimate interests in the disputed domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”). The Panel finds that Complainant has failed to produce a prima facie case in this matter, thereby failing to shift the burden of proof to Respondent.
Complainant argues that Respondent is using the domain name to sell counterfeit products bearing its LIA SOPHIA trademark. However, Complainant fails to produce any evidence of such use, and merely identifies the Policy paragraphs in the Complaint which has been determined to be insufficient by numerous other panels in the past. See VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (“Respondent's default, however, does not lead to an automatic ruling for Complainant. Complainant still must establish a prima facie case showing that under the Uniform Domain Name Dispute Resolution Policy it is entitled to a transfer of the domain name.”); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that absent a showing of any facts by the complainant that establish the respondent lacks rights or legitimate interests in the disputed domain name, the panel may decline to transfer the disputed domain name); see also Lush LTD v. Lush Environs, FA 96217 (Nat. Arb. Forum Jan. 13, 2001) (finding that even when the respondent does file a response, the complainant must allege facts, which if true, would establish that the respondent does not have any rights or legitimate interests in the disputed domain name).
Due to Complainant’s failure to allege facts sufficient to establish Respondent’s lack of rights and legitimate and interests in the <cheapliasophia.com> domain name under Policy ¶ 4(a)(ii), the Panel finds that Complainant has failed to satisfy Policy ¶ 4(a)(ii).
The Panel finds that Policy ¶ 4(a)(ii) has not been satisfied.
The Panel also finds that the Complaint in this matter is insufficient in reference to Policy ¶ 4(a)(iii), where Complainant merely restates Policy ¶ 4(b)(iv) without making any arguments or submitting any evidence of bad faith on the part of Respondent. See Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith); see also Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary).
Therefore, the Panel finds that Complainant has also failed to satisfy Policy ¶ 4(a)(iii).
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <cheapliasophia.com> domain name will REMAIN with Respondent.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: May 31, 2011
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