RetailMeNot, Inc. v. jinying lin
Claim Number: FA1501001602441
Complainant is RetailMeNot, Inc. (“Complainant”), represented by Matt Schneller of Schneller IP, PLLC, Tennessee, USA. Respondent is jinying lin (“Respondent”, China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <retailmenotabcaa.com>, <retailmenotabcbb.com>, <retailmenotabccc.com>, <retailmenotabcee.com>, <retailmenotabcgg.com>, <retailmenotabcjj.com>, <retailmenotabckk.com>, <retailmenotabcll.com>, <retailmenotabcmm.com>, <retailmenotabcnn.com>, <retailmenotablhh.com>, <retailmenotussb.com>, <retailmenotussc.com>, <retailmenotusse.com>, <retailmenotussf.com>, <retailmenotussg.com>, <retailmenotussh.com>, <retailmenotussi.com>, <retailmenotussj.com>, <retailmenotussk.com>, and <retailmenotussd.com>, registered with Bizcn.Com, Inc.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 29, 2015; the Forum received payment on January 29, 2015. The Complaint was submitted in both English and Chinese.
On February 1, 2015, Bizcn.Com, Inc. confirmed by e-mail to the Forum that the <retailmenotabcaa.com>, <retailmenotabcbb.com>, <retailmenotabccc.com>, <retailmenotabcee.com>, <retailmenotabcgg.com>, <retailmenotabcjj.com>, <retailmenotabckk.com>, <retailmenotabcll.com>, <retailmenotabcmm.com>, <retailmenotabcnn.com>, <retailmenotablhh.com>, <retailmenotussb.com>, <retailmenotussc.com>, <retailmenotusse.com>, <retailmenotussf.com>, <retailmenotussg.com>, <retailmenotussh.com>, <retailmenotussi.com>, <retailmenotussj.com>, <retailmenotussk.com>, and <retailmenotussd.com> domain names are registered with Bizcn.Com, Inc. and that Respondent is the current registrant of the names. Bizcn.Com, Inc. has verified that Respondent is bound by the Bizcn.Com, Inc. 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, 2015, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of March 2, 2015 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@retailmenotabcaa.com, postmaster@retailmenotabcbb.com, postmaster@retailmenotabccc.com, postmaster@retailmenotabcee.com, postmaster@retailmenotabcgg.com, postmaster@retailmenotabcjj.com, postmaster@retailmenotabckk.com, postmaster@retailmenotabcll.com, postmaster@retailmenotabcmm.com, postmaster@retailmenotabcnn.com, postmaster@retailmenotablhh.com, postmaster@retailmenotussb.com, postmaster@retailmenotussc.com, postmaster@retailmenotusse.com, postmaster@retailmenotussf.com, postmaster@retailmenotussg.com, postmaster@retailmenotussh.com, postmaster@retailmenotussi.com, postmaster@retailmenotussj.com, postmaster@retailmenotussk.com, and to postmaster@retailmenotussd.com. Also on February 10, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On March 11, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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 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 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 names be transferred from Respondent to Complainant.
A. Complainant
i) Policy ¶ 4(a)(i). Complainant uses RETAILMENOT for online coupons and advertising services. Complainant owns the mark through numerous trademark registrations, including registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,935,181, registered Mar. 22, 2011). The disputed domain names are confusingly similar to the RETAILMENOT mark as the domain names tack strings of random letters to the mark, and add the non-distinct generic top-level domain (“gTLD”) “.com.”
ii) Policy ¶ 4(a)(ii). Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names as demonstrated by the WHOIS record, which makes no mention of the disputed names as Respondent’s name or moniker. Respondent has not used the disputed domain names for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Instead, Respondent is using the disputed domain names to promote counterfeit products. The featured counterfeit products are directly competitive with Complainant’s coupon offers. Respondent also uses the disputed domain names to send spam e-mails in furtherance of the deceptive counterfeiting scheme, which further evinces Respondent’s lack of rights or legitimate interests. Additionally, several of the elected landing pages have been shut down pursuant to a court order.
iii) Policy ¶ 4(a)(iii). Respondent has engaged in bad faith registration and use of the disputed domain names. Respondent’s registration and use of multiple domain names reliant on Complainant mark constitutes a pattern of bad faith under Policy ¶ 4(b)(ii). Further, Respondent sells counterfeit versions of products for which Complainant provides legitimate coupons. Such competing use of the disputed domain names is disruptive of Complainant’s business, and constitutes bad faith pursuant to Policy ¶ 4(b)(iii). Additionally, Respondent is using the disputed domain names to misdirect Internet users to sites offering counterfeit goods, from which Respondent likely profits. Respondent promotes these websites through the use of spam e-mails that pretend to be Complainant or third-parties, further evincing Respondent’s intent to mislead for commercial gain and corresponding Policy ¶ 4(b)(iv) bad faith. Lastly, Respondent registered these disputed domain names with actual knowledge of Complainant and its rights in the RETAILMENOT mark, which suggests bad faith registration pursuant to Policy ¶ 4(a)(iii).
B. Respondent
Respondent did not submit a Response for the Panel’s consideration. The disputed domain names were on December 16, 2014 or December 24, 2014.
Complainant established that it had rights in the mark contained in the disputed domain names. Each of the disputed domain names is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain names.
Respondent registered and used the disputed domain names in bad faith.
Preliminary Issue: Language of the Proceedings
The Panel notes that the Registration Agreement is written in Chinese, thereby making Chinese the language of the proceedings. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, concludes that the remainder of the proceedings shall be conducted in English.
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 RETAILMENOT for online coupons and advertising services. Complainant claims to own the RETAILMENOT mark through numerous trademark registrations, including registrations with the USPTO (e.g., Reg. No. 3,935,181, registered Mar. 22, 2011). The Panel agrees that Complainant’s trademark registrations with trademark authorities such as the USPTO sufficiently demonstrate Complainant’s rights in the RETAILMENOT mark pursuant to Policy ¶ 4(a)(i). See Homer TLC, Inc. v. Song Bin, FA 1505218 (Nat. Arb. Forum July 30, 2013) (“Complainant’s USPTO registration sufficiently establishes its rights in the HOME DEPOT mark under Policy ¶4(a)(i), despite the fact Respondent resides outside of the United States.”).
Complainant argues the disputed domain names are confusingly similar to the RETAILMENOT mark as the domain names tack strings of random letters to the mark, and add the non-distinct gTLD “.com.” Prior panels have found that adding a string of letters to an otherwise incorporated mark does not remove the domain name from the realm of confusing similarity. To illustrate, in Am. Online, Inc. v. Amigos On Line RJ, FA 115041 (Nat. Arb. Forum Aug. 28, 2002), the panel found the <aolrj.com> domain name confusingly similar to the complainant’s AOL mark, writing, “…the addition of a string of indiscriminate letters to a famous mark in a second level domain does not differentiate the domain name from the mark.” Further, panels have held that the affixation of a gTLD, such as “.com,” is irrelevant to the confusing similarity analysis. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Accordingly, the Panel finds the <retailmenotabcaa.com>, <retailmenotabcbb.com>, <retailmenotabccc.com>, <retailmenotabcee.com>, <retailmenotabcgg.com>, <retailmenotabcjj.com>, <retailmenotabckk.com>, <retailmenotabcll.com>, <retailmenotabcmm.com>, <retailmenotabcnn.com>, <retailmenotablhh.com>, <retailmenotussb.com>, <retailmenotussc.com>, <retailmenotusse.com>, <retailmenotussf.com>, <retailmenotussg.com>, <retailmenotussh.com>, <retailmenotussi.com>, <retailmenotussj.com>, <retailmenotussk.com>, and <retailmenotussd.com> domain names confusingly similar to the RETAILMENOT mark pursuant to Policy ¶ 4(a)(i).
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.”).
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain names. With respect to Policy ¶ 4(c)(ii), Complainant claims Respondent is not commonly known by the disputed domain names as demonstrated by the WHOIS record, which makes no mention of the disputed names as Respondent’s name or moniker. The Panel notes that the corresponding WHOIS information identifies “jinying lin” as the registrant of record for the disputed domain names. As Respondent has failed to supplement this record with any evidence to the contrary, the Panel finds no basis to deem Respondent commonly known by the disputed domain names. See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).
Complainant further claims Respondent has not used the disputed domain names for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Instead, Complainant urges Respondent is using the disputed domain names to promote counterfeit products, which are directly competitive with Complainant’s coupon offers. The Panel notes that the vast majority of the domain names resolve to feature counterfeit goods relating to such manufacturers as “Oakley,” “Ray-Ban,” “Coach,” and “Air Jordan.” See Compl., at Attached Ex. 9a, 9c. Complainant adds that Respondent also uses the disputed domain names to send spam e-mails in furtherance of the deceptive counterfeiting scheme. Specifically, Complainant explains that the e-mails falsely indicate that the sender is affiliated with a major brand owner, such as Ray-Ban or Oakley. See Compl., at Attached Exs. 9a-b. Prior panels have determined that the use of a confusingly similar domain name to offer competing and/or potentially counterfeit goods or services amounts 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. See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks); eLuxury.com Inc. v. WangJunJie, FA 1075554 (Nat. Arb. Forum Nov. 30, 2007) (concluding that the sale of counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name). As Respondent is using the disputed domain names to offer discounted and likely counterfeit products in competition with Complainant’s own online coupon services, the Panel finds Respondent’s conduct does not fall within the protective parameters of Policy ¶¶ 4(c)(i) or (iii).
To bolster its Policy ¶ 4(a)(ii) allegations, Complainant adds that several of the elected landing pages for the domain names have been shut down pursuant to a court order. Specifically, the Panel notes that the <retailmenotussg.com> and <retailmenotussh.com> disputed domain names now resolve to law firm directed landing pages pursuant to a federal court order disabling the former site for trademark infringement and counterfeiting. See Compl., at Attached Ex. 9; Michael Kors, L.L.C. v. The P’ship and Unin. Ass’n Identified on Schedule “A”, 15-cv-124 (E.D. Ill. 2014); Deckers Outdoor Corp. v. The P’ship and Unin. Ass’n Identified on Schedule “A”, 15-cv-153 (E.D. Ill. 2014). The Panel agrees that Respondent’s continued resolution of these disputed domain names to pages that have been subsequently ordered disabled pursuant to counterfeiting and trademark infringement only adds further evidence that Respondent is without rights or legitimate interests in the disputed domain names. See, e.g., Am. Online, Inc. v. Advanced Membership Servs., Inc., FA 180703 (Nat. Arb. Forum Sept. 26, 2003) (“Respondent's registration and use of the <gayaol.com> domain name with the intent to divert Internet users to Respondent's website suggests that Respondent has no rights to or legitimate interests in the disputed domain name pursuant to Policy Paragraph 4(a)(ii).”).
Complainant argues that Respondent’s registration and use of multiple domain names reliant on Complainant mark constitutes a pattern of bad faith under Policy ¶ 4(b)(ii). Prior panels have found evidence of a pattern within the meaning of Policy ¶ 4(b)(ii) where the respondent has registered several infringing domain names at-issue in the instant case. See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); EPA European Pressphoto Agency B.V. v. Wilson, D2004-1012 (WIPO Feb. 9, 2005) (finding that the respondent’s registration of the <epa-photo.com>, <epaphoto.com> and <epaphotos.com> domain names was sufficient to constitute a pattern pursuant to Policy ¶ 4(b)(ii)). The Panel agrees that Respondent’s twenty-one domain names now in dispute containing the RETAILMENOT mark constitute a “pattern” as described by Policy ¶ 4(b)(ii).
Complainant next argues that Respondent’s use of the domain names to sell counterfeit versions of products for which Complainant provides legitimate coupons is disruptive of Complainant’s business, and constitutes bad faith pursuant to Policy ¶ 4(b)(iii). The Panel recalls that the disputed domain names resolve to advertise allegedly counterfeit goods bearing the brand names of Oakley, Ray-Ban and the like. See Compl., at Attached Ex. 9. The Panel agrees that Respondent’s efforts to sell discounted goods, comparable to products and deals offered by Complainant, disrupts Complainant’s business and therefore falls within the auspices of Policy ¶ 4(b)(iii) bad faith. See 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).”); 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).
Additionally, Complainant claims Respondent is using the disputed domain names to misdirect Internet users to sites offering counterfeit goods, from which Respondent likely profits. See Compl., at Attached Ex. 9a, 9c. Complainant adds that Respondent promotes these websites through the use of spam e-mails that pretend to be Complainant or third-parties, further evincing Respondent’s intent to mislead for commercial gain and corresponding Policy ¶ 4(b)(iv) bad faith. See Compl., at Attached Ex. 9b. The Panel agrees that Respondent’s efforts to market competing goods and services falls within the conduct proscribed by Policy ¶ 4(b)(iv), especially where Respondent has promoted this venture through spam e-mails under the guise of Complainant. See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant); Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith).
Finally, Complainant argues that Respondent registered these disputed domain names with actual knowledge of Complainant and its rights in the RETAILMENOT mark, which suggests bad faith registration pursuant to Policy ¶ 4(a)(iii). Panels have inferred actual knowledge where the disputed domain name is comprised and used in such a way that demonstrates the respondent’s familiarity with the complainant. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith). Based on Respondent’s efforts to use the disputed domain names to market goods and services comparable to those offered under Complainant’s mark, as well as Respondent’s efforts to present itself as Complainant via spam e-mails, the Panel determines Respondent was indeed familiar with Complainant at the time of registration. Accordingly, the Panel finds Respondent engaged in bad faith registration pursuant to Policy ¶ 4(a)(iii) when it registered the disputed domain names despite actual knowledge of Complainant and its trademark rights.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <retailmenotabcaa.com>, <retailmenotabcbb.com>, <retailmenotabccc.com>, <retailmenotabcee.com>, <retailmenotabcgg.com>, <retailmenotabcjj.com>, <retailmenotabckk.com>, <retailmenotabcll.com>, <retailmenotabcmm.com>, <retailmenotabcnn.com>, <retailmenotablhh.com>, <retailmenotussb.com>, <retailmenotussc.com>, <retailmenotusse.com>, <retailmenotussf.com>, <retailmenotussg.com>, <retailmenotussh.com>, <retailmenotussi.com>, <retailmenotussj.com>, <retailmenotussk.com>, and <retailmenotussd.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: March 21, 2015
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