national arbitration forum

 

DECISION

 

LuxAGe Inc v. sheng hu

Claim Number: FA1309001520698

PARTIES

Complainant is LuxAGe Inc (“Complainant”), represented by Aryn M Emert of Cowan, Liebowitz & Latman, P.C., New York, USA.  Respondent is sheng hu (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <luxurybazaar.us>, registered with GoDaddy.com, 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.

 

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

 

PROCEDURAL HISTORY

The National Arbitration Forum received a hard copy of the Complaint on September 20, 2013.

 

On September 23, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <luxurybazaar.us> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name.  GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

 

On October 2, 2013, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 22, 2013, by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On October 24, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 "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 Policy, the 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

  1. Policy ¶ 4(a)(i)
    1. Complainant, LuxAGe Inc, uses its LUXURY BAZAAR mark in connection with its business as a premier online retailer and wholesaler of luxurious high-end watches, jewelry, and accessories. See Complainant’s Exhibit 4.
    2. Complainant owns common law rights in the LUXURY BAZAAR mark through its continuous use of the mark since 2002, its expenditure of nearly $150,000 annually on marketing its LUXURY BAZAAR brand, its regular e-mail advertisements to a database of 21,000 retail customers and 2,500 wholesale customers, and its receipt of approximately $100,000 in weekly retail sales under the LUXURY BAZAAR mark. Complainant has also made extensive efforts to promote the mark by using social media including YouTube, Facebook, Twitter, and blogging. See Complainant’s Exhibit 5. Complainant is also the owner of a published application for the LUXURY BAZAAR mark with the United States Patent and Trademark Office (“USPTO”) (Serial No. 85,736,623, filed July 23, 2013). See Complainant’s Exhibit 8.
    3. The <luxurybazaar.us> domain name is identical to Complainant’s LUXURY BAZAAR mark because the domain name fully appropriates the mark and merely adds the country-code top-level domain (“ccTLD”) “.us.”
  2. Policy ¶ 4(a)(ii)
    1. Respondent is not commonly known as “Luxury Bazaar,” and Complainant has not authorized Respondent to use the LUXURY BAZAAR mark in a domain name. Although Respondent holds itself out as “Luxury Bazaar” on the at-issue website, Respondent only does so to pass itself off as Complainant and perpetrate fraud on Internet users. Compare Complainant’s Exhibit 4 with Complainant’s Exhibit 11.
    2. Respondent is not using the <luxurybazaar.us> domain name as a bona fide offering of goods or services or a legitimate noncommercial or fair use, but is instead using the disputed domain name to pass itself off as Complainant. Compare Complainant’s Exhibit 4 with Complainant’s Exhibit 11.
    3. The <luxurybazaar.us> domain name is being used to phish for Internet users’ personal information, which further demonstrates Respondent’s lack of rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
  3. Policy ¶ 4(a)(iii)
    1. Respondent is using the <luxurybazaar.us> domain name to pass itself off as Complainant, which demonstrates Respondent’s bad faith registration or use of the disputed domain name under Policy ¶ 4(a)(iii). Compare Complainant’s Exhibit 4 with Complainant’s Exhibit 11.
    2. Respondent registered the disputed domain name with actual notice of Complainant and its rights in the LUXURY BAZAAR mark, and has thereby demonstrated bad faith registration or use under Policy ¶ 4(a)(iii). Respondent’s actual notice of Complainant’s mark can be inferred by the contents of the website resolving from <luxurybazaar.us>.
    3. Respondent is also using the disputed domain name to deceive Internet users into providing personal information. Respondent has thus engaged in a phishing scheme, which further demonstrates Respondent’s bad faith registration or use of the disputed domain name under Policy ¶ 4(a)(iii).
  4. Respondent registered the disputed domain name on July 29, 2013.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, LuxAGe Inc, uses its LUXURY BAZAAR mark in connection with its business as a premier online retailer and wholesaler of luxurious high-end watches, jewelry, and accessories. Complainant owns common law rights in the LUXURY BAZAAR mark through its continuous use of the mark since 2002, its expenditure of nearly $150,000 annually on marketing its LUXURY BAZAAR brand, its regular e-mail advertisements to a database of 21,000 retail customers and 2,500 wholesale customers, and its receipt of approximately $100,000 in weekly retail sales under the LUXURY BAZAAR mark. Complainant has also made extensive efforts to promote the mark by using social media including YouTube, Facebook, Twitter, and blogging. Complainant is also the owner of a published application for the LUXURY BAZAAR mark with the United States Patent and Trademark Office (“USPTO”) (Serial No. 85,736,623, filed July 23, 2013). 

 

Respondent, sheng hu, registered the disputed domain name on July 29, 2013. Respondent is using the <luxurybazaar.us> domain name to pass itself off as Complainant.

 

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.”).

 

Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable when rendering its decision.

 

Identical and/or Confusingly Similar

 

Complainant uses its LUXURY BAZAAR mark in connection with its business as a premier online retailer and wholesaler of luxurious high-end watches, jewelry, and accessories. Complainant alleges it has common law rights in the LUXURY BAZAAR mark. Policy ¶ 4(a)(i) does not require a complainant to register a mark with a government agency in order to sufficiently establish its right in the mark. See Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that the Policy does not require that a complainant’s trademark be registered by a government authority or agency in order for the complainant to establish rights in the mark). Rather, a complainant may demonstrate that it has developed consumer recognition and established common law rights in its mark. Therefore, the Panel shall determine whether Complainant has common law rights in its LUXURY BAZAAR mark.

 

Complainant alleges that it has gained common law rights in the LUXURY BAZAAR mark because the mark has developed a secondary meaning identifying Complainant as the source of LUXURY BAZAAR brand high-end accessories. Complainant argues its mark has developed secondary meaning through Complainant’s continuous use of the mark since 2002, its expenditure of nearly $150,000 annually on marketing under the mark, its regular e-mail advertisements to a database of 21,000 retail customers and 2,500 wholesale customers, and its receipt of approximately $100,000 in weekly retail sales under the mark. Complainant further contends that it has made extensive efforts to promote the LUXURY BAZAAR mark by using social media including YouTube, Facebook, Twitter, and blogging, and that it owns a published application for the LUXURY BAZAAR mark with the USPTO (Serial No. 85,736,623, filed July 23, 2013). Previous panels have held that secondary meaning indicating a complainant’s common law rights in a mark is established when, in the minds of the public, the mark indicates the complainant as the source of a product. See AOL LLC v. DiMarco, FA 1275978 (Nat. Arb. Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”). A complainant can establish secondary meaning through evidence of its continuous use of the mark in connection with its products or services, its advertising efforts, the amount of sales the complainant gains from its use of the mark, and the complainant’s number of customers. See Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002) (finding that the complainant established common law rights in the mark through continuous use of the mark since 1995 for the purpose of UDRP ¶ 4(a)(i)).

 

Complainant next alleges that the <luxurybazaar.us> domain name is identical to Complainant’s LUXURY BAZAAR mark because the disputed domain name fully incorporates the mark and merely adds the ccTLD “.us.” A domain name’s addition of a ccTLD such as “.us” is irrelevant for the purposes of a Policy ¶ 4(a)(i) analysis. See, e.g., Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name, the <tropar.us> domain name is identical to the complainant’s TROPAR mark). In addition to adding a ccTLD the disputed domain name also eliminates the space found in between the words in the LUXURY BAZAAR mark. However, a domain name’s elimination of a space found between words in a mark does not sufficiently distinguish the domain name from the mark. See, e.g., George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that eliminating the space between terms of a mark still rendered the <gwbakeries.mobi> domain name identical to the complainant’s GW BAKERIES mark). Accordingly, the Panel finds that the disputed domain name is identical to the LUXURY BAZAAR mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

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).

 

There is no evidence in the record to conclude that Respondent owns any service marks or trademarks that reflect the <luxurybazaar.us> domain name. See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002)(the respondent did not own any service marks or trademarks that reflected the <persiankitty.us> domain name). The Panel finds that Respondent does not have rights or legitimate interests pursuant to Policy ¶ 4(c)(i).

 

Complainant argues that Respondent is not commonly known as “Luxury Bazaar,” and Complainant has not authorized Respondent to use the LUXURY BAZAAR mark in a domain name. Complainant further contends that although Respondent holds itself out as “Luxury Bazaar” on the at-issue website, Respondent only does so to pass itself off as Complainant and perpetrate fraud on Internet users. Aside from the content on the at-issue website, nothing in the record suggests that Respondent is commonly known as <luxurybazaar.us>, including the WHOIS information, which suggests Respondent is commonly known by the name of “sheng hu.” Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003)(the respondent was not commonly known by the disputed domain name because, other than the respondent’s infringing use of the complainant’s mark on its web page and in its domain name, there was no evidence on the record to suggest that respondent was commonly known by the domain name).

 

Complainant next alleges that Respondent is not using the <luxurybazaar.us> domain name as a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv), but is instead using the disputed domain name to pass itself off as Complainant. Respondent’s website prominently displays Complainant’s LUXURY BAZAAR mark and replicates the style, layout and color scheme of Complainant’s website. A respondent’s use of the disputed domain name to attempt to pass itself off as the complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to UDRP ¶¶ 4(c)(i) or 4(c)(iii)). Accordingly, the Panel finds that Respondent has attempted to pass itself off as Complainant and that this use is not protected under Policy ¶¶ 4(c)(ii) or 4(c)(iv).

 

Complainant also alleges that the disputed <luxurybazaar.us> domain name is being used to phish for Internet users’ personal information in the “Contact Us” section of the resolving website, which further demonstrates Respondent’s lack of rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Complainant argues that by replicating the style, layout and color scheme of Complainant’s website, Respondent seeks to deceive Internet users into believing that Respondent is Complainant, and thus obtain Internet users’ personal information under false pretenses. See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004)(the respondent lacked rights or legitimate interests under UDRP  ¶ 4(a)(ii) where the domain name was used in a fraudulent scheme to deceive Internet users into providing their credit card and personal information). However, the screenshots of the resolving website provided by Complainant do not include the “Contact Us” section discussed in the Complaint, and Complainant does not specify what type of personal information is requested by Internet users. Therefore, the Panel declines to find that Respondent is using the <luxurybazaar.us> domain name to solicit Internet users’ personal information.

 

Registration or Use in Bad Faith

 

Complainant argues that Respondent is using the <luxurybazaar.us> domain name to pass itself off as Complainant, which demonstrates Respondent’s bad faith registration or use of the disputed domain name under Policy ¶ 4(a)(iii). Respondent’s website prominently displays Complainant’s LUXURY BAZAAR mark and imitates the style, layout and color scheme of Complainant’s website. The Panel finds that Respondent has demonstrated bad faith registration or use of the disputed domain name under Policy ¶ 4(a)(iii). See Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002)(bad faith registration and use under UDRP ¶ 4(a)(iii) found where the disputed domain name resolved to a website on which the complainant’s mark and logo was prominently displayed).

 

Complainant further argues that Respondent registered the disputed domain name with actual notice of Complainant and its rights in the LUXURY BAZAAR mark, and Respondent has thereby demonstrated bad faith registration or use under Policy ¶ 4(a)(iii). Complainant argues that Respondent’s actual notice of Complainant’s mark can be inferred by the contents of the website resolving from <luxurybazaar.us>, which replicate Complainant’s own website operated under the LUXURY BAZAAR mark. See, e.g., 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). Previous panels have inferred that a respondent had knowledge of the complainant where the content of the at-issue website so indicates); see also, Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”). Respondent’s website replicates the content found on Complainant’s website. Accordingly, Respondent registered the disputed domain name with knowledge of Complainant and its rights in the LUXURY BAZAAR mark, thereby demonstrating bad faith registration or use of the disputed domain name under Policy ¶ 4(a)(iii).

 

Finally, Complainant argues that Respondent is using the disputed domain name to deceive Internet users into providing personal information on the “Contact Us” section of the resolving website, and has thus engaged in a phishing scheme, which further demonstrates Respondent’s bad faith registration or use of the disputed domain name under Policy ¶ 4(a)(iii). Previous panels have held that a respondent demonstrates bad faith registration and use of a disputed domain name under UDRP ¶ 4(a)(iii) where the domain name is used to fraudulently obtain the personal or financial information of the complainant’s customers. See Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers). However, Complainant has failed to provide evidence in support of this allegation.

 

DECISION

Complainant having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.

 

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

 

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  November 6, 2013

 

 

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