Eddie Bauer Licensing Services LLC v. xiao meichen / chen xiao mei
Claim Number: FA1803001775274
Complainant is Eddie Bauer Licensing Services LLC (“Complainant”), represented by Sarah J Schneider of Sheridan Ross P.C., Colorado, USA. Respondent is xiao meichen / chen xiao mei (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <eddiebaueru.com> and <eddiebauerstore.com>, registered with Xin Net Technology Corporation.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 9, 2018; the Forum received payment on March 9, 2018.
On Mar 12, 2018, Xin Net Technology Corporation confirmed by e-mail to the Forum that the <eddiebaueru.com> and <eddiebauerstore.com> domain names are registered with Xin Net Technology Corporation and that Respondent is the current registrant of the names. Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation 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 19, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 9, 2018 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@eddiebaueru.com, postmaster@eddiebauerstore.com. Also on March 19, 2018, 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 Forum transmitted to the parties a Notification of Respondent Default.
On April 10, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant, Eddie Bauer Licensing Services, LLC, and its predecessor have used the EDDIE BAUER mark for a variety of goods and services including clothing, outerwear, blankets, bedding, sleeping bags, tents, backpacks, travel bags, outdoor accessories, and retail stores, online retail and mail order catalogs.
Complainant has rights in the EDDIE BAUER mark based upon multiple registrations of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 880,279, registered Nov. 11, 1969).
Respondent’s <eddiebaueru.com> and <eddiebauerstore.com> domain names are confusingly similar to Complainant’s EDDIE BAUER mark, as each domain name includes the mark in its entirety, merely adding either the letter “u” or the term “store” and the “.com” generic top-level domain (“gTLD”) to the mark.
Respondent has no rights or legitimate interests in the <eddiebaueru.com> or <eddiebauerstore.com> domain names. Respondent is not commonly known by either domain name, nor has Complainant authorized or licensed Respondent to use the EDDIE BAUER mark in any manner. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the domain names to actively mislead customers into believing they are on Complainant’s website by displaying Complainant’s marks, logos, and products. The domain names themselves are also typosquatted versions of Complainant’s EDDIE BAUER mark.
Respondent registered and is using the <eddiebaueru.com> and <eddiebauerstore.com> domain name in bad faith. Respondent’s registration of the domain names is part of a pattern of bad faith registration and use of infringing domain names. Additionally, Respondent has registered and used the domain names to confuse and divert Internet users and disrupt Complainant’s business. Further, it is clear Respondent had actual knowledge of Complainant and its rights in the EDDIE BAUER mark at the time Respondent registered and used the names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the EDDIE BAUER mark as demonstrated by its registration of such mark with the USPTO.
Complainant’s rights in the EDDIE BAUER mark existed prior to Respondent’s registration of the at-issue domain name.
Respondent uses the <eddiebaueru.com> and <eddiebauerstore.com> domain names to pass itself off as Complainant and trick <eddiebaueru.com> and <eddiebauerstore.com> website visitors into believing they are dealing with Complainant when they are not.
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(f), 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 (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.”).
Preliminary Issue: Language of Proceeding
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English. The Panel’s finding that Respondent is conversant in English is based upon the fact that the WHOIS information annexed to the Complaint, the at issue domain names themselves, and all content address by the domain names are all in English. Further, Complainant shows that Respondent has been the named respondent in other UDRP proceedings and has been found sufficiently familiar with the English language for those proceedings to be conducted in English. See FilmNet Inc. v Onetz, FA 96196 (Forum Feb. 12, 2001 (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English).
The at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a USPTO trademark registration for EDDIE BAUER evidences its rights in such mark for the purposes of Policy ¶ 4(a)(I). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Additionally, each at-issue domain name contains Complainant’s entire EDDIE BAUER trademark, less its space, appended with the letter “u” in one case and with the term “store” in the other, both concluding with the top level domain name “.com”. These slight differences between the domain names and Complainant’s mark are insufficient to distinguish one from the other under the Policy. Therefore, the Panel finds that pursuant to Policy ¶ 4(a)(i) Respondent’s <eddiebaueru.com> and <eddiebauerstore.com> domain names are each confusingly similar to Complainant’s EDDIE BAUER trademark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy); see also Google, Inc. v. DktBot.org, FA 286993 (Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see alos, Gianvito Rossi SRL Unipersonale v. david backhumn, FA 1628059 (Forum Aug. 12, 2015) (“Domain name syntax prohibits spaces in a domain name, so their absence must be disregarded when comparing a mark with a disputed domain name under Policy ¶4(a)(i).”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of each at-issue domain name. Respondent is not authorized to use Complainant’s trademarks in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of either at‑issue domain name.
WHOIS information for the at-issue domain names identifies their registrant as “xiao meichen / chen xiao mei.” The record before the Panel contains no evidence that otherwise tends to prove that Respondent is commonly known by either the <eddiebaueru.com> or the <eddiebauerstore.com> domain name. The Panel therefore concludes that Respondent is not commonly known by either at-issue domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Furthermore, Respondent uses the domain names and linked websites to create consumer confusion as to the source of products for sale on such websites. The at-issue domain names resolve to a website which displays Complainant’s logos, marks, and marketing photographs in an attempt to offer for sale goods related to Complainant. Respondent’s passing itself off as a Complainant in order to sell Complainant’s goods—or counterfeit versions thereof—is not a use indicative of rights or legitimate interests in a domain name. Such use of the domain names constitutes neither a bona fide offering of goods or services under Policy ¶4(c)(i) nor a non-commercial or fair use under Policy ¶4(c)(iii). See Nokia Corp. v. Eagle, FA 1125685 (Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)); see also Fadal Engineering, LLC v. DANIEL STRIZICH,INDEPENDENT TECHNOLOGY SERVICE INC, FA 1581942 (Forum Nov. 13, 2014) (finding that Respondent’s use of the disputed domain to sell products related to Complainant without authorization “does not amount to 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).”).
Given the foregoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of each at-issue domain name pursuant to Policy ¶ 4(a)(ii).
Respondent’s <eddiebaueru.com> and <eddiebauerstore.com> domain names were each registered and used in bad faith. As discussed below without limitation, Policy ¶ 4(b) specific bad faith circumstances as well as other circumstance are present which compel the Panel to conclude that Respondent acted in bad faith regarding each domain name, pursuant to paragraph 4(a)(iii) of the Policy.
First, Complainant annexed a list of domain names to its complaint which include or are similar to famous third-party trademarks. Each domain name uses the email address <1127133381@qq.com> regarding its WHOIS record, the same address listed for the at-issue domain names. Respondent’s registration of the <eddiebaueru.com> and <eddiebauerstore.com> domain names is thus shown to be part of a pattern of bad faith registration and use thereby suggesting Respondent’s bad faith under Policy ¶ 4(b)(ii) in the instant case. See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s previous registration of domain names such as <pillsbury.net>, <schlitz.net>, <biltmore.net> and <honeywell.net> and subsequent registration of the disputed <marlboro.com> domain name evidenced bad faith registration and use pursuant to Policy ¶ 4(b)(ii)).
Next and as mentioned above concerning rights and legitimate interests, Respondent uses the <eddiebaueru.com> and <eddiebauerstore.com> domain names to pass itself off as Complainant so that it may improperly exploit the goodwill associated with Complainant’s EDDIE BAUER trademark. Use of a domain name to create a false impression of affiliation with a complainant in order to compete with and disrupt the complainant’s business is behavior indicative of bad faith registration and use per Policy ¶¶ 4(b)(iii) and (iv). See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”); Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”).
Further, Respondent’s <eddiebaueru.com> domain name shows on its face that Respondent is engaging in typosquatting. Typosquatting is a practice whereby a domain name registrant deliberately introduces typographical errors or misspellings into a trademark and then uses the resulting string in a domain name hoping that internet users will either inadvertently type the malformed string when searching for products or services related to the domain name’s target trademark, and/or on viewing the domain name will confuse the domain name with its target trademark. Here, in creating <eddiebaueru.com> Respondent adds a superfluous letter “u” to Complainant’s trademark. By inadvertently mistyping Complainant’s trademark consistent with the typosquatted domain name or by misreading the domain name in a search engine result when seeking EDDIE BAUER, internet users inadvertently arrive at an EDDIE BAUER mimicking website where they may then be exploited. Typosquatting, in itself, indicates bad faith under Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
Finally, Respondent registered <eddiebaueru.com> and <eddiebauerstore.com> knowing that Complainant had trademark rights in EDDIE BAUER. Respondent’s prior knowledge is evident given the notoriety of Complainant trademark, the unauthorized use of Complainant’s trademark and trade dress on Respondent’s <eddiebaueru.com> and <eddiebauerstore.com> addressed websites, and Respondent’s multiple registrations of confusingly similar domain names containing the EDDIE BAUER mark. It follows that Respondent intentionally registered the at-issue domain names to improperly exploit their trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <eddiebaueru.com> and <eddiebauerstore.com> domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <eddiebaueru.com> and <eddiebauerstore.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: April 11, 2018
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page