URS FINAL DETERMINATION

 

 

P & Y Halas Pty Limited v. Lin Yi Yan et al.

Claim Number: FA1608001691156

 

 

DOMAIN NAME

 

<seafolly.store>

 

 

PARTIES

 

 

Complainant: P & Y Halas Pty Limited of ALEXANDRIA, --, Australia

Complainant Representative: K&L Gates Jonathan A Feder of Melbourne, --, Australia

 

Respondent: 个人逸衍of 漳州市, II, China

 

 

 

REGISTRIES and REGISTRARS

 

 

Registries: DotStore Inc.

Registrars: Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn)

 

 

EXAMINER

 

 

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Examiner in this proceeding.

David L. Kreider Esq., as Examiner

 

 

PROCEDURAL HISTORY

 

 

Complainant Submitted: August 25, 2016

Commencement: August 26, 2016

Response Date: August 29, 2016

Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules").

 

 

RELIEF SOUGHT

 

 

Complainant requests that the domain name be suspended for the life of the†† registration.

 

 

STANDARD OF REVIEW

 

 

Clear and convincing evidence.

 

 

FINDINGS and DISCUSSION

 

 

 

Findings of Fact: Seafolly Pty Ltd (Seafolly) is an Australian company. It is a highly successful designer,


manufacturer, wholesaler, and retailer of swimwear and related accessories by reference to the "Seafolly" brand. Seafolly sells its garments throughout the world. Seafolly owns the domain names seafolly.com and seafolly.com.au. Complainant is the registered owner of trade marks around the world for the SEAFOLLY trade mark including Australian trade mark no. 1086227 and International registration no. 896290 in classes 9, 18, 24, 25 and 35 (Trade Mark). The Trade Mark is currently in use and has been validated by the Trademark Clearinghouse (TMCH) (URS 1.2.6.1(i) (a)). Complainant has granted an exclusive license to Seafolly to use the Trade Mark since 1977. Any use of the Trade Mark by Seafolly has been under license from Complainant.

 

 

URS Procedure 1.2.6, requires Complainant to prove, by clear and convincing evidence, each of the following three elements to obtain an order that a domain name should be†† suspended.

 

 

[URS 1.2.6.1] The registered domain name(s) is/are identical or confusingly similar to a word or mark:

(i)  for which the Complainant holds a valid national or regional registration and that is in current use; or

(ii)  that has been validated through court proceedings; or

(iii)   that is specifically protected by a statute or treaty in effect at the time the URS complaint is† filed.

 

Determined: Finding for Complainant

 

 

Respondent registered the domain name Seafolly.store (Domain Name) on 04/08/2016 without Complainant's permission. The Disputed Domain Name is identical or confusingly similar to the Trade Mark (URS 1.2.6.1) as it corresponds exactly with Complainant's Trade Mark except for the addition of the gTLD ".store". The Respondent's purported defense that Complainant failed to register the Disputed Domain Name, or otherwise failed to register†† the Trade Mark in China, and seeks by this action to defame the Respondent, is without merit.

 

 

[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.

 

Determined: Finding for Complainant

 

 

Respondent has no legitimate right or interest to the Disputed Domain Name (URS 1.2.6.2). Complainant has not licensed and has not authorized the Respondent to register or use the Disputed Domain Name. Respondent is not commonly known under the Disputed Domain Name. The Respondent's purported defense that Complainant has no legal right to license the Trade Mark to SEAFOLLY because the registration process for such Trade Mark has not been completed under Chinese law, is without merit.

 

 

[URS 1.2.6.3] The domain name(s) was/were registered and is being used in bad faith.

a.  Registrant has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of- pocket costs directly related to the domain name; or

b.  Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; or

c.  Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or

d.   By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrantís web site or other on≠line location, by creating a likelihood of confusion with the†† complainantís mark as to the source, sponsorship, affiliation, or endorsement of Registrantís web site or location or of a product or service on that web site or location.

Determined: Finding for Complainant

 

 

The Trade Mark is registered with TMCH and Respondent was warned of the existence of Complainant's Trade Mark before completing registration, but Respondent chose to ignore the warning and went ahead to complete the registration. Accordingly, "good faith use by Respondent is inconceivable" (Case No. HKS-1400003). The holding of an inactive domain name can be an indication of bad faith registration and use. Given the reputation of the "Seafolly" brand and the TMCH warning, one cannot think of any actual or contemplated use of the Disputed Domain Name by Respondent that would not be illegitimate (Case Number FA1606001681598). Respondent's purported defense that, as a collector of Internet domain names he is entitled to register and hold the Disputed Domain Name, which he has not used to engage in commerce or the sale of goods or merchandise, is unavailing, based on the reasons and authorities hereinabove referenced.

 

 

FINDING OF ABUSE or MATERIAL FALSEHOOD

 

 

The Examiner may find that the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods.


Respondent has alleged that the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods.

The Examiner finds as follows:

 

 

1.    The Complaint was neither abusive nor contained material† falsehoods.

 

 

Respondent's verbatim repetition of his assertions that, as a collector of Internet domain names he is entitled to register and hold the Disputed Domain Name, which he has not used to engage in commerce or the sale of goods or merchandise, provides no basis for a finding by this Examiner that the Complaint was either abusive or contained material falsehoods.

 

 

DETERMINATION

 

 

After reviewing the partiesí submissions, the Examiner determines that the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain name(s) be SUSPENDED for the duration of the registration:

1. seafolly.store

 

 

 

David L. Kreider Esq., Examiner

Dated: August 29, 2016

 

 

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