ModCloth, Inc. v. tanglan
Claim Number: FA1503001608297
Complainant is ModCloth, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is tanglan (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <mdocloth.com>, <modcloh.com> and <mofcloth.com>, registered with HANGZHOU AIMING NETWORK 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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 5, 2015; the Forum received payment on March 5, 2015. The Complaint was received in both Chinese and English.
On March 8, 2015, HANGZHOU AIMING NETWORK CO.,LTD confirmed by e-mail to the Forum that the <mdocloth.com>, <modcloh.com> and <mofcloth.com> domain names are registered with HANGZHOU AIMING NETWORK CO.,LTD and that Respondent is the current registrant of the names. HANGZHOU AIMING NETWORK CO.,LTD has verified that Respondent is bound by the HANGZHOU AIMING NETWORK 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 March 12, 2015, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of April 1, 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@mdocloth.com, postmaster@modcloh.com, postmaster@mofcloth.com. Also on March 12, 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 April 8, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (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 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.
Complainant
Complainant owns the MODCLOTH mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,760,045, registered March 16, 2010). Complainant uses the MODCLOTH mark in connection with its online women’s apparel retail store. The <mdocloth.com>, <modcloh.com> and <mofcloth.com> domain names are confusingly similar to the MODCLOTH mark. The <mdocloth.com> domain name transposes the “o” and the “d” and inserts the generic-top level domain (“gTLD”) “.com.” The <modcloh.com> domain name omits the letter “t” and adds the gTLD “.com.” The <mofcloth.com> domain name replaces the letter “d” with “f” and adds the gTLD “.com.”
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, as the WHOIS record for the disputed domain name does not reflect that Respondent is commonly known by the disputed domain name. Further, Complainant has never authorized Respondent to use the MODCLOTH trademark. Respondent’s lack of rights or legitimate interests in the <mdocloth.com>, <modcloh.com> and <mofcloth.com> domain names is made evident by Respondent’s failure to use the disputed domain names in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Respondent uses the disputed domain names to feature generic links to third-party websites.
Respondent has engaged in bad faith registration and use of the <mdocloth.com>, <modcloh.com> and <mofcloth.com> domain names. Respondent has listed some of the disputed domain names for sale. Respondent’s use of the disputed domain names disrupts Complainant’s business by diverting Internet customers seeking Complainant’s website. Respondent intentionally attracts, for commercial gain, Internet users to its websites by creating a likelihood of confusion with Complainant’s mark. Respondent has engaged in typosquatting, which is evidence of bad faith under Policy ¶ 4(a)(iii).
Respondent
Respondent did not submit a Response in this proceeding.
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, determines that the remainder of the proceedings may be conducted in English.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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 states that it owns the MODCLOTH mark through its registration with the USPTO (e.g., Reg. No. 3,760,045, registered March 16, 2010). Complainant uses the MODCLOTH mark in connection with its online women’s apparel retail store. Past panels have concluded that registration of a mark with a trademark authority is sufficient to establish rights in the mark pursuant to Policy ¶ 4(a)(i), even when Respondent does not reside in the country where the mark is registered. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Accordingly, although Respondent reportedly resides in China, the Panel finds that Complainant’s USPTO registration is sufficient to establish its rights under Policy ¶ 4(a)(i).
Complainant argues that the <mdocloth.com>, <modcloh.com> and <mofcloth.com> domain names are confusingly similar to the MODCLOTH mark. The <mdocloth.com> domain name transposes the “o” and the “d” and inserts the generic-top level domain (“gTLD”) “.com.” The <modcloh.com> domain name omits the letter “t” and adds the gTLD “.com.” The <mofcloth.com> domain name replaces the letter “d” with “f” and adds the gTLD “.com.” Past panels have found that domain names that differ by only one character from a complainant’s trademark have a high probability of confusing similarity. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive). Past panels have also found confusing similarity when a disputed domain name features two transposed letters. See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”). The addition of a gTLD does not serve to adequately distinguish the disputed domain name from the registered mark. See OL Inc. v. Morgan, FA 1349260 (Nat. Arb. Forum Nov. 4, 2010) (concluding that the addition of the generic top-level domain (“gTLD”) “.com” does not distinguish the disputed domain name from the mark). As such, the Panel determines that the disputed domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has proven this element.
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. Specifically, Complainant argues that Respondent is not commonly known by the disputed domain names, as the WHOIS record for the disputed domain names does not reflect that Respondent is commonly known by the disputed domain names. The WHOIS information for the disputed domain names lists “tanglan” as the registrant of records. Complainant has never authorized Respondent to use the MODCLOTH trademark. The Panel agrees that these contentions are sufficient to establish Respondent’s lack of rights in the disputed domain names according to Policy ¶ 4(c)(ii). 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).
Complainant asserts that Respondent’s lack of rights or legitimate interests in the <mdocloth.com>, <modcloh.com> and <mofcloth.com> domain names is made evident by Respondent’s failure to use the disputed domain names in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Complainant states that Respondent uses the disputed domain names to feature generic links to third-party websites. Some of the hyperlinks reached through Respondent’s resolving website include “Wholesale Clothing Jeans,” “Womens Clothing Jackets,” and “Discount Designer Clothing.” Past panels have found that the use of hyperlinks to redirect Internet users to a complainant’s competitors is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively. See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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)).
Complainant has proven this element.
Complainant contends that Respondent has listed some of the disputed domain names for sale. Past panels have found that a respondent’s general willingness to sell a disputed domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”). Therefore, the Panel finds that Respondent’s general offer to sell is evidence of bad faith under Policy ¶ 4(b)(i).
Complainant asserts that Respondent’s use of the disputed domain names disrupts Complainant’s business by diverting Internet customers seeking Complainant’s website. Complainant alleges that Respondent’s pay-per-click links resolve to websites that feature products that compete with Complainant, such as <zulily.com> and <rosegal.com>. These links divert potential customers away from Complainant to third-party websites, which is disruptive to Complainant’s business. Past panels have found such disruption as evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)). As a result, the Panel finds that Respondent’s disruptive behavior is evidence of bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant asserts that Respondent intentionally attracts, for commercial gain, Internet users to its websites by creating a likelihood of confusion with Complainant’s mark. Complainant argues that, as Respondent’s websites feature pay-per-click hyperlinks, Respondent presumably receives revenue through click-through fees. As such, Complainant argues that Respondent has registered and used the disputed domain names in bad faith under Policy ¶ 4(b)(iv) by using the <mdocloth.com>, <modcloh.com> and <mofcloth.com> domain names to mislead consumers for profit. Past panels have agreed that using a disputed domain name to feature competing hyperlinks on the resolving website demonstrates bad faith registration and use. See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes). Thus, the Panel finds that Respondent has engaged in bad faith under Policy ¶ 4(b)(iv).
Complainant contends that Respondent has engaged in typosquatting, which is, in itself, evidence of bad faith under Policy ¶ 4(a)(iii). Internet users would merely need to mistype only one character or transpose two characters to be mistakenly directed to Respondent’s website rather than Complainant’s. Past panels have found that respondents who take advantage of common typing errors engage in bad faith registration under Policy ¶ 4(a)(iii). See Vanguard Group, Inc. v. IQ Mgmt. Corp., FA 328127 (Nat. Arb. Forum Oct. 28, 2004) (“By engaging in typosquatting, [r]espondent has registered and used the <vangard.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”). The Panel accordingly finds that Respondent’s typosquatting conduct is additional evidence of bad faith pursuant to 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 <mdocloth.com>, <modcloh.com> and <mofcloth.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: April 13, 2015
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