national arbitration forum

 

DECISION

 

Zulily Inc. v. Jing Ren

Claim Number: FA1211001473789

 

PARTIES

Complainant is Zulily Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA.  Respondent is Jing Ren (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <xulily.com>, registered with Dynadot, LLC.

 

PANEL

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.

 

Darryl C. Wilson, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 30, 2012; the National Arbitration Forum received payment on November 30, 2012.

 

On December 3, 2012, Dynadot, LLC confirmed by e-mail to the National Arbitration Forum that the <xulily.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name.  Dynadot, LLC has verified that Respondent is bound by the Dynadot, LLC 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 December 5, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 26, 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@xulily.com.  Also on December 5, 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 January 7, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

  1. Complainant Alleges:

1.    Complainant is the owner of the ZULILY mark with the following:

a.    United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,868,643 registered Oct. 26, 2010);

b.    European Union Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 9189961 registered Jan. 21, 2011); and

c.    The Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA816414 registered Jan. 30, 2012).

2.    Complainant has owned and operated numerous top-level domain names featuring its ZULILY mark since 1999.

3.    Complainant has used the ZULILY mark in commerce since 2010.

4.    Respondent’s <xulily.com> domain name is confusingly similar to Complainant’s ZULILY mark because it replaces the letter “Z” with an “X” and adds the generic top-level domain (“gTLD”) “.com.”

5.    Respondent’s <xulily.com> domain name is a typosquatted version of Complainant’s ZULILY mark.

6.    Respondent has no rights or legitimate interests in the <xulily.com> domain name.

a.    Respondent is not affiliated with Complainant in any way.

b.    Complainant has not given Respondent permission to use its ZULILY mark in any way.

c.    Respondent is using the <xulily.com> domain name to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business.

d.    Respondent receives pay-per-click fees from the links featured on the website.

e.    Respondent registered the <xulily.com> domain name on April 17, 2011, which is after Complainant’s registrations for its ZULILY mark.

7.    Respondent registered the <xulily.com> domain name in bad faith.

a.    Respondent’s <xulily.com> domain name resolves to a page featuring products that compete with Complainant, thereby diverting potential customers away from Complainant’s business.

b.    Respondent’s <xulily.com> domain name resolves to a site that features Complainant’s mark spelled correctly.

c.    Respondent has engaged in a pattern of cybersquatting.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant is Zulily Inc., who list its address as Seattle, WA, USA. Complainant owns numerous registrations of the mark ZULILY for a wide variety of consumer goods as well as for on-line retail services. Complainant conducts its sales business both in real space as well as cyberspace via its official website at <zulily.com>.

 

Respondent is Jing Ren who lists his or her address at Wuhan, Hubei 430021, China. Respondent registered the disputed domain name on April 17, 2011 with a registrar who list its address as San Mateo, CA, USA.

 

DISCUSSION

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.”).

 

Identical and/or Confusingly Similar

 

Complainant claims that it has rights in the ZULILY mark pursuant to Policy ¶ 4(a)(i). Complainant claims that its ZULILY mark is used for online retail services featuring a wide variety of consumer goods and has been used in commerce since 2010. Complainant provides evidence of its trademark registrations of its ZULILY mark with the USPTO (Reg. No. 3,868,643 registered Oct. 26, 2010), OHIM (Reg. No. 9,189,961 registered Jan. 21, 2011), and CIPO (Reg. No. TMA816414 registered Jan. 30, 2012). The Panel finds that Complainant’s evidence of registrations with national trademark authorities is evidence of rights in a mark under Policy ¶ 4(a)(i). See Dollar Fin. Group, Inc. v. Bankshire Corp., FA 1013686 (Nat. Arb. Forum July 30, 2007) (finding that the complainant established rights in its mark by registering the mark with the USPTO and CIPO). The Panel also notes that although Respondent’s purported location is in China, so long as Complainant can establish its rights in some jurisdiction it need not own a trademark registration in the country of Respondent.  See 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 and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). 

 

Complainant asserts that the <xulily.com> domain name is confusingly similar to Complainant’s ZULILY mark. Complainant points out that the disputed domain name differs by a single character and adds the gTLD “.com.” Here, Complainant claims that the <xulily.com> domain name replaces the “Z” in Complainant’s mark with an “X.” The Panel finds that the addition or omission of a single letter and the addition of a gTLD is insufficient to differentiate a disputed domain name from a registered mark. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD  is “unable to create a distinction capable of overcoming a finding of confusing similarity”); see also Neuberger Berman Inc. v. Jacobsen, D2000-0323 (WIPO June 12, 2000) (finding that the respondent’s <newbergerberman.com> domain name was confusingly similar to the complainant’s NEUBERGER BERMAN mark despite the slight difference in spelling). The Panel holds that Respondent’s <xulily.com> domain name is confusingly similar to Complainant’s ZULILY mark pursuant to Policy 4(a)(i).

 

Respondent makes no contentions with regards to Policy ¶ 4(a)(i). 

 

The Complainant has proven this element.

 

Rights or Legitimate Interests

 

The Panel recognizes that 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). The Complainant has met this burden.

 

Complainant asserts that Respondent is not commonly known by the <xulily.com> domain name. Complainant claims that Respondent is not affiliated with Complainant in any way and that Complainant has not given Respondent permission to use Complainant’s ZULILY mark. The Panel notes that the WHOIS information for the <xulily.com> domain name lists “Jing Ren” as the registrant. Previous panels have found that when a complainant has not authorized a respondent to use a disputed domain name, and there is no other information available indicating that a respondent is known by a disputed domain name, that this may indicate that a respondent is not commonly known by  the disputed domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).  The Panel finds that Respondent is not commonly known by the <xulily.com> domain name pursuant to Policy 4(c)(ii).

 

Complainant argues that Respondent has no rights or legitimate interests in the <xulily.com> domain name and is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant argues that Respondent is using the <xulily.com> domain name to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which compete with Complainant’s business. Complainant further argues that Respondent is receiving pay-per-click compensation from the links featured on the website. The Panel finds that the above use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy 4(c)(i) and 4(c)(iii). See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors.  The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using an identical or confusingly similar domain name to earn click-through fees via sponsored links to a complainant’s competitors does not represent 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)).

 

Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).

 

Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain. 

 

The Complainant has proven this element.

 

Registration and Use in Bad Faith

 

Complainant alleges that Respondent has a pattern of bad faith registration and use of domain names through prior UDRP proceedings ordering Respondent to transfer the disputed domain names to the respective complainants. See Blue Nile, Inc. v. Jing Ren, FA 1422932 (Nat. Arb. Forum Feb. 17, 2012); see also Hungry Machine, Inc. v. Jing Ren, FA 1395592 (Nat. Arb. Forum Aug. 8, 2011). Previous panels have held that prior UDRP proceedings ordering a domain name to be transferred from a respondent indicates bad faith use and registration under Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants). Based on the previous UDRP cases held against Respondent, the Panel finds that Respondent has a pattern of bad faith registration and use of disputed domain names.The Panel finds that Respondent has registered and is using the disputed domain name in the instant case in bad faith under Policy ¶ 4(b)(ii).

 

Complainant argues that Respondent is diverting customers away from Complainant’s business and sending them to competing third party websites, thereby disrupting Complainant’s business. Complainant further argues that the links featured on the site resolving from the <xulily.com> domain name are pay-per-click links. Previous panels have found that providing links to Complainant’s competitors indicates that Respondent intends to disrupt a Complainant’s business and is therefore bad faith. See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business). The Panel therefore finds that Respondent’s use of the <xulily.com> domain name to feature pay-per-click links that compete with Complainant’s business, disrupts Complainant’s businesses and is therefore bad faith use and registration pursuant to Policy 4(b)(iii).

 

Complainant also asserts that Respondent’s use of the <xulily.com> domain name is typosquatting behavior and is, in and of itself, evidence of bad faith. Complainant has already argued that the <xulily.com> domain name is a misspelled version of Complainant’s ZULILY mark. Previous panels have found that using a misspelled version of a disputed domain name is typosquatting as evidence of bad faith. See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (finding bad faith registration and use of the <microssoft.com> domain name as it merely misspelled the complainant’s MICROSOFT mark). The Panel finds that Respondent’s use of a confusingly similar domain name is typosquatting and therefore further evidence of bad faith under Policy ¶ 4(a)(iii).

 

Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).

 

The Complainant has proven this element.

 

DECISION

Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.

 

Accordingly, it is Ordered that the <xulily.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

                                    Darryl C. Wilson, Panelist

                                    Dated: January 14, 2013

 

 

 

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