Paul Frank Industries LLC v. Modify Modify / Aaagreen
Claim Number: FA1411001590802
Complainant is Paul Frank Industries LLC (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is Modify Modify / Aaagreen (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue is <paulfranksheets.com> and <paulfrankkidsbedding.com>, registered with Chengdu West Dimension Digital 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 19, 2014; the National Arbitration Forum received payment on November 19, 2014. The Complaint was received in both English and Chinese.
On November 19, 2014, Chengdu West Dimension Digital Technology Co., Ltd. confirmed by e-mail to the National Arbitration Forum that the <paulfranksheets.com> and <paulfrankkidsbedding.com> domain names are registered with Chengdu West Dimension Digital Technology Co., Ltd. and that Respondent is the current registrant of the names. Chengdu West Dimension Digital Technology Co., Ltd. has verified that Respondent is bound by the Chengdu West Dimension Digital 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 November 21, 2014, the Forum served the Chinese language Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 11, 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@paulfranksheets.com, postmaster@paulfrankkidsbedding.com. Also on November 21, 2014, 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 December 22, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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
1. Complainant owns the PAUL FRANK mark through registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,726,765, registered Dec. 15, 2009), and China’s State Administration for Industry and Commerce (“SAIC”) (Reg. No. 5,269,272, registered June 28, 2009).
2. Complainant uses PAUL FRANK to identify its textile offerings, notably bedding sets and clothing. The <paulfranksheets.com> and <paulfrankkidsbedding.com> domain names are confusingly similar to the PAUL FRANK mark as the domain names incorporate the mark in full, and add descriptive terms “sheets” as well as “kids bedding,” which serve to heighten confusing similarity.
3. Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the dispute domain names, as demonstrated by a lack of evidence in the record.
4. In addition, Respondent is using the disputed domain names to offer counterfeit products bearing the PAUL FRANK name. Counterfeiting amounts to neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. To further demonstrate Respondent’s lack of rights in the domain names, Respondent relies on Complainant’s “Julius the Monkey” logo in an attempt to pass itself off as Complainant in furtherance of its counterfeiting scheme.
5. Respondent has engaged in bad faith use and registration. Respondent’s efforts to promote counterfeit versions of Complainant’s PAUL FRANK products serve to disrupt Complainant’s own business and therefore warrant a finding of bad faith under Policy ¶ 4(b)(iii).
6. Further, Respondent’s attempt to pass itself off as Complainant in furtherance of this counterfeiting scheme falls within the behavior proscribed by Policy ¶ 4(b)(iv). In sum, Respondent’s use of the domain names in connection with a website offering counterfeit products bearing the likeness of genuine PAUL FRANK products, as well as Complainant’s “Julius the Monkey” logo, make clear that Respondent registered the domain names with knowledge of Complainant, and with Complainant in mind.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the PAUL FRANK mark. Respondent’s domain names are confusingly similar to Complainant’s PAUL FRANK mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <paulfranksheets.com> and <paulfrankkidsbedding.com> domain names, and that Respondent registered and uses the domain names in bad faith.
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 uses PAUL FRANK to identify its textile offerings, notably bedding sets and clothing. Complainant claims Policy ¶ 4(a)(i) rights in the PAUL FRANK mark through registrations with the USPTO (e.g., Reg. No. 3,726,765, registered Dec. 15, 2009), and China’s SAIC (Reg. No. 5,269,272, registered June 28, 2009). Complainant’s trademark registrations with the USPTO and SAIC establish Complainant’s rights in thePAUL FRANK mark pursuant to Policy ¶ 4(a)(i). See Hershey Chocolate & Confectionery Corp. v. Yao Renfa, FA 1295942 (Nat. Arb. Forum Jan. 18, 2010) (determining that Complainant’s registration of its HERSHEY’S mark with the USPTO and SAIC demonstrated rights in the mark for purposes of Policy ¶ 4(a)(i)).
Complainant argues that the <paulfranksheets.com> and <paulfrankkidsbedding.com> domain names are confusingly similar to the PAUL FRANK mark. The domain names incorporate the mark in full, and add descriptive terms “sheets” as well as “kids bedding,” which serve to heighten confusing similarity. See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”).
The disputed domain names also differ from the mark by the omission of spacing and the addition of the generic top-level domain (“gTLD”) “.com.” These alterations serve no distinguishing value in the confusing similarity analysis. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Accordingly, the Panel finds the paulfranksheets.com> and <paulfrankkidsbedding.com> domain names confusingly similar to the PAUL FRANK mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
In arguing Respondent has no rights or legitimate interests in the disputed domain names, Complainant asserts that Respondent is not commonly known by the domain names. Respondent failed to submit any evidence for the Panel’s consideration, and the WHOIS merely offers “Modify Modify” of “ Aaagreen” as the registrant of record for these names. Thus, there is insufficient evidence to find Respondent commonly known by the paulfranksheets.com> and <paulfrankkidsbedding.com> names under Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant next claims that Respondent is using the disputed domain names to offer counterfeit products bearing the PAUL FRANK name. Complainant argues this is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. Complainant has provided evidence that Respondent appears to be selling PAUL FRANK branded goods. Selling counterfeit goods is not a protect use under Policy ¶¶ 4(c)(i) or (iii). See 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). Accordingly, the Panel determines that Respondent’s use of the disputed domain names to sell counterfeit goods evinces no bona fide offering of goods or services as envisioned in Policy ¶ 4(c)(i), nor any legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent’s efforts to promote counterfeit versions of Complainant’s PAUL FRANK products disrupt Complainant’s own business and therefore warrant a finding of bad faith under Policy ¶ 4(b)(iii). See Louis Vuitton Malletier S.A., L.L.C. v. David, FA 1138296 (Nat. Arb. Forum Mar. 5, 2008) (concluding that the complainant’s business is disrupted by the respondent’s registration and use of the disputed domain name for the purpose of selling counterfeit products). Accordingly, the Panel finds bad faith pursuant to Policy ¶ 4(b)(iii) based on Complainant’s use of the domain names to sell counterfeit goods bearing Complainant’s semblance.
Further, Complainant argues, and the Panel agrees, that Respondent’s attempt to pass itself off as Complainant in furtherance of this counterfeiting scheme falls within the behavior proscribed by Policy ¶ 4(b)(iv). 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); Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).
Lastly, Complainant argues that Respondent’s use of disputed domain names in connection with a website offering counterfeit products bearing the likeness of genuine PAUL FRANK products, as well as Complainant’s Julius the Monkey logo, make clear that Respondent registered the disputed domain name with knowledge of Complainant, and with Complainant in mind. This is evidence that Respondent registered the disputed domain names with actual knowledge of the Complainant and its trademark rights. See Mycoskie, LLC v. William Kelly, FA 1488105 (Nat. Arb. Forum Apr. 23, 2013) (“While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to Respondent’s use of the domain name to sell counterfeit versions of Complainant’s products, Respondent had actual knowledge of the mark and Complainant's rights.”). Accordingly, the Panel finds additional evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <paulfranksheets.com> and <paulfrankkidsbedding.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: December 31, 2014
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