lululemon athletica canada inc. v. Fundacion Private Whois / Domain Administrator
Claim Number: FA1209001461664
Complainant is lululemon athletica canada inc. (“Complainant”), represented by David M. Kramer of DLA Piper LLP (US), Washington, D.C., USA. Respondent is Fundacion Private Whois / Domain Administrator (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lululemon-outlet.com>, registered with Internet.bs Corp.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 7, 2012; the National Arbitration Forum received payment on September 12, 2012.
On September 11, 2012, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <lululemon-outlet.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 September 17, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 9, 2012 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@lululemon-outlet.com. Also on September 17, 2012, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 10, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <lululemon-outlet.com> domain name, the domain name at issue, is confusingly similar to Complainant’s LULULEMON mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns the trademarks, service marks, trade dress and trade names related to the “lululemon athletica” fitness and yoga apparel businesses. Specifically, Complainant owns several trademark registrations with the United States Patent and Trademark Office ("USPTO") for the LULULEMON (Reg. No. 3,990,179 July 5, 2011) and LULULEMON ATHLETICA marks (e.g., Reg. No. 3,985,876 registered June 28, 2011) and also owns trademark registrations with other national trademark authorities around the world.
Respondent, Fundacion Private Whois / Domain, registered the <lululemon-outlet.com> domain name on September 6, 2012 and currently uses the disputed domain name to make unauthorized sales of Complainant’s goods. Complainant believes that the advertised products are “knockoff LULULEMON merchandise…” Respondent’s <lululemon-outlet.com> domain name is confusingly similar to the LULULEMON mark, since it merely adds the generic top-level domain (“gTLD”) “.com” and a hyphen, as well as the generic term “outlet.” Respondent is not licensed to use the LULULEMON mark or to sell any of Complainant’s goods, and Complainant has no business relationship with Respondent. Respondent is using the disputed domain name to disrupt Complainant’s business by using the disputed domain name to sell Complainant’s goods, or counterfeit versions of such goods, without authorization and is creating Internet user confusion as to the source of the goods that Respondent is selling on its resolving website. Respondent is using the LULULEMON mark within the domain name to drive commercial traffic to its unauthorized and competing website in bad faith. Respondent did not submit a Response to these proceedings.
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(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.”).
Complainant owns the trademarks, service marks, trade dress and trade names related to the “lululemon athletica” fitness and yoga apparel businesses. Complainant specifically owns several trademark registrations with the USPTO for the LULULEMON (Reg. No. 3,990,179 July 5, 2011) and LULULEMON ATHLETICA marks (e.g., Reg. No. 3,985,876 registered June 28, 2011). The Panel finds that Complainant’s trademark registrations with the USPTO are sufficient for Complainant to establish rights in the LULULEMON and LULULEMON ATHLETICA marks under Policy ¶ 4(a)(i), regardless of Respondent’s location. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Respondent’s <lululemon-outlet.com> domain name is confusingly similar to the LULULEMON mark, merely adding the gTLD “.com” and a hyphen, as well as the generic term “outlet.” Accordingly, Respondent’s <lululemon-outlet.com> domain name is confusingly similar to Complainant’s LULULEMON mark under Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy); see also Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Respondent is not licensed to use the LULULEMON mark or to sell any of Complainant’s goods, and Complainant has no business relationship with Respondent. The WHOIS information for the <lululemon-outlet.com> domain name identifies “Fundacion Private Whois / Domain Administrator” as the registrant of the domain name. Such information sufficient for the Panel to find that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent is using the disputed domain name to sell Complainant’s goods or “knockoff” versions of those products. A screenshot of the resolving website appears to show different pages of goods for purchase and a “cart” for purchasing such goods. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Caterpillar Inc. v. Huth, FA 169056 (Nat. Arb. Forum Sept. 2, 2003) (“Respondent lacks rights in the disputed domain names because Respondent competes with Complainant by selling Complainant's used parts without a license from Complainant to do so.”); see also Keihin Corp. v. Youli Ltd., FA 1106190 (Nat. Arb. Forum Dec. 18, 2007) (finding no rights and legitimate interests when the respondent sold counterfeit versions of the complainant’s products in competition with the complainant’s business).
The Panel finds that Policy ¶ 4(a)(iI) has been established.
Respondent is using the disputed domain name to disrupt Complainant’s business by using the disputed domain name to sell Complainant’s goods, or counterfeit versions of such goods, without authorization. As noted above, a screenshot of the resolving website that appears to support this. Respondent has in fact registered and has used the disputed domain name in bad faith under Policy ¶ 4(b)(iii). See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. 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); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Respondent is creating Internet user confusion as to the source of the goods that Respondent is selling on its resolving website by using the LULULEMON mark within the domain name to drive commercial traffic to its unauthorized and competing website in bad faith. Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004) (“Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part, to provide products similar to those of Complainant. Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Affliction, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain by creating confusion as to the complainant’s connection with the website by selling counterfeit products).
Lastly, Respondent’s use of the disputed domain name to advertise and sell Complainant’s goods clearly shows that Respondent knew of Complainant and its rights in the LULULEMON mark when it registered the disputed domain name. Such knowledge by Respondent is also evidence of bad faith. Respondent had actual knowledge of Complainant’s rights in the LULULEMON mark prior to registering the disputed domain name, and that such knowledge is evidence of bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
The Panel finds that Policy ¶ 4(a)(iII) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lululemon-outlet.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: October 23, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page