Paul Frank Industries LLC v. shang hai jue sha fu shi you xian gong si
Claim Number: FA1401001541602
Complainant is Paul Frank Industries LLC (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, Washington, D.C., USA. Respondent is shang hai jue sha fu shi you xian gong si (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ilovepaulfrank.com>, registered with 35 Technology Co., Ltd.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 30, 2014; the National Arbitration Forum received payment on January 30, 2014. The Complaint was submitted in both English and Chinese.
On February 9, 2014, 35 Technology Co., Ltd confirmed by e-mail to the National Arbitration Forum that the <ilovepaulfrank.com> domain name is registered with 35 Technology Co., Ltd and that Respondent is the current registrant of the name. 35 Technology Co., Ltd has verified that Respondent is bound by the 35 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 February 10, 2014, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of March 3, 2014 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@ilovepaulfrank.com. Also on February 10, 2014, the Chinese language 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 March 10, 2014 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Policy ¶ 4(a)(i)
Policy ¶ 4(a)(ii)
Policy ¶ 4(a)(iii)
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Paul Frank Industries LLC of Los Angeles, CA, USA. Complainant owns national and international registrations for the mark PAUL FRANK which it uses in association with its manufacture and sale of various consumer goods. Complainant contends that it has used the mark continuously in association with its goods and services since 1995.
Respondent is shang hai jue sha fu shi you xian gong si of Shanghai, China. Respondent’s registrar reflects a similar postal address. Respondent registered the disputed domain name on or about July 2, 2012
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 claims that it uses the PAUL FRANK mark in connection with the marketing and sale of various clothing, apparel, and fashion accessory goods and services. Complainant has registered the PAUL FRANK mark with the USPTO (e.g., Reg. No. 3,726,765 registered Dec. 15, 2009). Complainant has also registered the mark with the SAIC (Reg. No. 5,269,272 registered on June 28, 2009). The Panel finds that Complainant’s registration of its trademark adequately illustrates Policy ¶4(a)(i) rights. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Complainant next argues that Respondent’s <ilovepaulfrank.com> domain name incorporates the entire PAUL FRANK mark, adds “i” and “love” and the gTLD “.com,” and removes the mark’s spacing. The Panel notes that it has been long held that generic terms, gTLDs, and the removal of spacing cannot overcome the confusing similarity of a domain name that uses a registered trademark. See Best Western Int’l, Inc. v. Lost in Space, SA, FA 126834 (Nat. Arb. Forum Nov. 7, 2012) (finding that the deletion of spacing in a mark and the addition of a gTLD are irrelevant as they are dictated by the standardized nature of second- and top-level domain names, and further that the addition of generic and descriptive terms fails to negate confusing similarity). The Panel here finds that the domain name is confusingly similar to the PAUL FRANK mark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
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 argues that Respondent is not commonly known by the <ilovepaulfrank.com> domain name. Complainant further alleges that Respondent is not licensed, authorized, or otherwise allowed to use Complainant’s marks in domain names. The Panel notes that the WHOIS information for the disputed domain name claims that “shang hai jue sha fu shi you xian gong si lotus_7452@163.com +86.02156844006 +” is the registrant of record. Because there is no other information in the record to connect Respondent to this domain name, the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii). See LawyerLocate.ca Inc v. J Kirby Inwood / CanLaw, FA 1496334 (Nat. Arb. Forum June 20, 2013) (“Respondent’s name is J Kirby Inwood and his organization’s name is CanLaw. There is no evidence Respondent is known by the Domain Names nor by the names Lawyerlocate or Lawyerlocate.ca.”).
Complainant also claims that Respondent is using the <ilovepaulfrank.com> domain name to sell counterfeit PAUL FRANK goods. The Panel notes that the record shows that Respondent operates a Chinese language online store selling goods under the PAUL FRANK mark through the <ilovepaulfrank.com> domain name. In eLuxury.com Inc. v. WangJunJie, FA 1075554 (Nat. Arb. Forum Nov. 30, 2007) the panel found that there was nothing bona fide, or legitimately noncommercial, or fair, about using a domain name to host a competing business that sold counterfeits of the complainant’s goods. The Panel here finds that Respondent’s use of the domain name gives rise to neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant further argues that Respondent’s website through the <ilovepaulfrank.com> domain name evidences an attempt by Respondent to pass itself off as Complainant by using Complainant’s trademarks and copyrighted materials to create an impression of similarity between Respondent and Complainant. The Panel again notes that Complainant’s marks are featured extensively on the disputed domain name’s website. The Panel finds that Respondent’s conduct suggests that it seeks to pass itself off as Complainant in the eyes of consumers, and as such Respondent does not have a Policy ¶ 4(a)(ii) right or legitimate interest in the disputed domain name. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
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.
Complainant argues that Respondent’s resale of competing and counterfeited PAUL FRANK merchandise is evidence of an unfair attempt to disrupt Complainant’s business. The Panel further notes the counterfeit and competing merchandise sold through the domain name’s website. The Panel finds that Respondent’s actions amount to a Policy ¶ 4(b)(iii) bad faith disruption of Complainant’s business as the <ilovepaulfrank.com> domain name is being used to sell off goods that compete directly with Complainant’s goods. See Juicy Couture, Inc. v. Chinasupply, FA 1222544 (Nat. Arb. Forum Oct. 13, 2008) (holding that the selling of counterfeit versions of a complainant’s products disrupted the complainant’s business and is evidence of bad faith registration and use).
Complainant also claims that Respondent is capitalizing on the likelihood that Internet users may be confused as to whether Complainant endorses or originates the counterfeit merchandise sold through the <ilovepaulfrank.com> domain name. The Panel finds that because Complainant’s exhibits illustrate that the domain name is used to promote counterfeit PAUL FRANK goods, there is a likelihood that Internet users may pay Respondent for these goods because the user is confused as to Complainant’s association with the goods. See H-D Michigan, LLC v. Ross, FA 1250712 (Nat. Arb. Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion). The Panel here finds Policy ¶ 4(b)(iv) bad faith on part of Respondent.
Complainant further claims that Respondent seeks to pass itself off as Complainant through the use of Complainant’s own trademarks and copyrighted materials on the <ilovepaulfrank.com> domain name’s website. The Panel finds that additional bad faith by the Respondent may be inferred from Respondent’s conduct in seeking to pass itself off as Complainant through the <ilovepaulfrank.com> domain name’s website. See Smiths Group plc v. Snooks, FA 1372112 (Nat. Arb. Forum Mar. 18, 2011) (finding that the respondent’s attempt to impersonate an employee of the complainant was evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
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 <ilovepaulfrank.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: March 24, 2014
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