ALO, LLC v. chen jian shan
Claim Number: FA1812001819707
Complainant is ALO, LLC ("Complainant"), represented by Hani Sayed of Rutan & Tucker LLP, California, USA. Respondent is chen jian shan ("Respondent"), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aloyogaclothing.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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 6, 2018; the Forum received payment on December 6, 2018.
On December 6, 2018, Chengdu West Dimension Digital Technology Co., Ltd. confirmed by email to the Forum that the <aloyogaclothing.com> domain name is registered with Chengdu West Dimension Digital Technology Co., Ltd. and that Respondent is the current registrant of the name. 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 December 11, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 31, 2018 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@aloyogaclothing.com. Also on December 11, 2018, the Written Notice of the Complaint, notifying Respondent of the email 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 January 2, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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 is an international purveyor of athletic and athleisure clothing. Complainant uses the ALO and ALO YOGA marks in connection with these products and related services. Complainant's U.S. trademark registrations indicate that it has been using the marks since 2006 and 2010, respectively.
Respondent registered the disputed domain name <aloyogaclothing.com> in November 2018. The domain name resolves to an ecommerce website that is extremely similar to Complainant's own site. Complainant claims that Respondent's "imposter" site is impersonating Complainant by displaying its ALO mark and logo along with copyrighted photos taken from Complainant's website, and is offering to sell counterfeit versions of Complainant's products. Complainant states that Respondent is not commonly known by the disputed domain name and has not been licensed or otherwise permitted to use Complainant's marks.
Complainant contends on the above grounds that the disputed domain name <aloyogaclothing.com> is confusingly similar to its ALO and ALO YOGA marks; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used 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(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 Management, 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.").
The Panel notes that the Registration Agreement is written in Chinese. Rule 11(a) provides that the language of this administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise. Complainant requests that the proceeding be conducted in English, noting inter alia that the disputed domain name is composed of English-language words and corresponds to the name of a U.S. company, and that it is being used for a website that contains content exclusively in English (including a contact email address that consists of a string of English words). In addition, the Panel notes that the Written Notice of the Complaint was served upon Respondent in both English and Chinese, and Respondent has made no objection to Complainant's request that the proceeding be conducted in English.
Under the circumstances, the Panel finds it likely that Respondent is conversant and proficient in the English language, has received adequate notice of this proceeding, and has chosen not to participate. The Panel sees no reason to require Complainant to bear the burden and expense of arranging for a Chinese translation that is likely unnecessary to afford proper notice to Respondent, and that in any event Respondent is likely to ignore. The Panel decides that English shall be the language of this proceeding.
The disputed domain name <aloyogaclothing.com> incorporates Complainant's registered ALO and ALO YOGA trademarks, adding the generic term "clothing" (which describes Complainant's business) and appending the ".com" top-level domain. These additions do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Fat Face Holdings Ltd v. Belize Domain WHOIS Service Lt, D2007-0626 (WIPO June 25, 2007) (finding <fatfaceclothing.com> confusingly similar to FAT FACE); Blair Holdings, Inc. v. Watch My Domain c/o Nick M., FA 526028 (Forum Sept. 23, 2005) (finding <blairclothing.com> confusingly similar to BLAIR). Accordingly, the Panel considers the disputed domain name to be confusingly similar to Complainant's registered mark.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization, and it apparently is being used to impersonate Complainant and promote the sale of counterfeit merchandise, and possibly to obtain personal information from Internet users. Such use does not give rise to rights or legitimate interests. See, e.g., Ontel Products Corp. v. Jimmy Li, FA 1806743 (Forum Oct. 22, 2018) (finding lack of rights or interests under similar circumstances).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent registered and is using a domain name incorporating Complainant's registered mark for a website that mimics Complainant's website, displays Complainant's mark and logo, and sells or purports to sell what appear to be counterfeit versions of Complainant's products. Such use is indicative of bad faith registration and use under both of these provisions of the Policy. See, e.g., Ontel Products Corp. v. Jimmy Li, supra (finding bad faith in similar circumstances). The Panel so finds.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aloyogaclothing.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: January 14, 2019
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