ALO, LLC v. Hou Chang Li
Claim Number: FA2006001902200
Complainant is ALO, LLC (“Complainant”), represented by Lindsay Hulley of Rutan & Tucker LLP, California, USA. Respondent is Hou Chang Li (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <alooyoga.com>, registered with Cloud Yuqu LLC.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 29, 2020; the Forum received payment on June 29, 2020.
On June 30, 2020, Cloud Yuqu LLC confirmed by e-mail to the Forum that the <alooyoga.com> domain name is registered with Cloud Yuqu LLC and that Respondent is the current registrant of the name. Cloud Yuqu LLC has verified that Respondent is bound by the Cloud Yuqu LLC 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 July 6, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 27, 2020 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@alooyoga.com. Also on July 6, 2020, 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 August 3, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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.
Panel Note: Language of the Proceedings
The Panel notes that the Registration Agreement is written in Chinese thereby making the language of the proceedings in Chinese.
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.
A. Complainant
Complainant made the following contentions.
Complainant is a clothing brand with an international reputation for selling quality made products that are at the height of fashion, comfort, and luxury. Complainant has rights in the ALO YOGA and ALO marks through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,172,308, registered Mar. 28, 2017). See Amend. Compl. Ex. D. Respondent’s <alooyoga.com> domain name is confusingly similar to Complainant’s ALO YOGA mark as Respondent merely adds the letter “o” into Complainant’s mark. This inclusion amounts to typosquatting. Alternatively, Respondent’s <alooyoga.com> domain name is confusingly similar to Complainant’s ALO mark as Respondent adds the letter “o” and the descriptive phase “yoga” to Complainant’s ALO mark.
Respondents has no rights or legitimate interests in the <alooyoga.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark. Furthermore, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondent is attempting to pass off as Complainant by redirecting Internet users to Complainant’s legitimate website. Additionally, Respondent is hosting competing hyperlinks.
Finally, Respondent registered and uses the <alooyoga.com> domain name in bad faith. Specifically, Respondent is attempting to attract Internet users for commercial gain by hosting competing hyperlinks. Next, Respondent is redirecting Internet users to Complainant’s legitimate website as an affiliate. Additionally, Respondent is typosquatting. Finally, Respondent had actual knowledge of Complainant’s rights in the ALO YOGA marks
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is a clothing brand with an international reputation for selling quality made products that are at the height of fashion, comfort, and luxury.
2. Complainant has established its trademark rights in the ALO YOGA and ALO marks through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,172,308, registered Mar. 28, 2017).
3. Respondent registered the <alooyoga.com> domain name on May 23, 2020.
4. Respondent is attempting to pass itself off as Complainant by redirecting Internet users to Complainant’s legitimate website. Additionally, Respondent is hosting competing hyperlinks.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the ALO YOGA and ALO marks through its registration of the marks with the USPTO (e.g., Reg. No. 5,172,308, registered Mar. 28, 2017). Registration with the USPTO is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds that the Complainant has rights in the ALO YOGA and ALO marks under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s ALO YOGA or ALO mark. Complainant argues Respondent’s <alooyoga.com> domain name is confusingly similar to Complainant’s ALO YOGA mark as Respondent merely adds the letter “o” into Complainant’s mark. The disputed domain name also includes the “.com” generic top-level domain (“gTLD”). Adding a letter into a complainant’s mark and a gTLD may not sufficiently distinguish a disputed domain name from the mark under Policy ¶ 4(a)(i). See Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name contains the entire BANK OF AMERICA mark and merely adds the gTLD ‘.com’ and the letter ‘l’ to create a common misspelling of the word ‘bank.’). Complainant also argues in the alternative that <alooyoga.com> domain name is confusingly similar to Complainant’s ALO mark as Respondent add the letter “o” and the descriptive phase “yoga” to Complainant’s ALO mark. Inclusion of a descriptive word may not sufficiently distinguish a disputed domain name from the mark under Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”). However, it is not necessary to decide this latter question as the Panel finds that the domain name is confusingly similar to Complainant’s ALO YOGA mark for the reason given by Complainant, namely the addition of the letter “o” to the ALO YOGA trademark. Therefore, the Panel finds Respondent’s <alooyoga.com> domain name is confusingly similar to Complainant’s ALO YOGA mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
(a) Respondent has chosen to take Complainant’s ALO YOGA trademark and to use it in its domain name, adding the letter “o” which does not negate the confusing similarity between the domain name and the trademark;
(b) Respondent registered the <alooyoga.com> domain name on May 23, 2020;
(c) Respondent is attempting to pass itself off as Complainant by redirecting Internet users to Complainant’s legitimate website. Additionally, Respondent is using the domain name to host competing hyperlinks;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the <alooyoga.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed or authorized by the Complainant to use Complainant’s mark. Where a response is lacking, relevant WHOIS information can be used as evidence to show a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent lacks rights or legitimate interest in a disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The Panel may note the WHOIS of record identifies the Respondent as “Hou Chang Li” and no information in the record indicates that Respondent was authorized to use Complainant’s mark or was commonly known by the disputed domain name. Therefore, the Panel finds that Respondent has no rights or legitimate interests in the <alooyoga.com> domain name as Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent fails to use the <alooyoga.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent is attempting to pass itself off as Complainant by redirecting Internet users to Complainant’s legitimate website. Using a disputed domain name to redirect Internet users to complainant’s legitimate website may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Direct Line Ins. plc v. Low-cost-domain, FA 1337658 (Forum Sept. 8, 2010) (“The Panel finds that using Complainant’s mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant’s actual site, is not consistent with the requirements of Policy ¶ 4(c)(i) or ¶ 4(c)(iii) . . .”). Here, Complainant provides evidence of the <alooyoga.com> domain name’s redirection of Internet users to Complainant’s website, in which Respondent collects a commission as an affiliate. See Amend. Compl. Ex. E. Therefore, the Panel finds Respondent fails to use the <alooyoga.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii);
(g) Complainant argues that Respondent fails to use the <alooyoga.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use as Respondent is hosting competing hyperlinks. Using a disputed domain name to host hyperlinks that a competitive with a complainant’s goods or services may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Walgreen Co. v. Privacy protection service - whoisproxy.ru, FA 1785188 (Forum June 10, 2018) (“Respondent uses the <walgreensviagra.net> domain name to pass itself off as Complainant and display links to a website offering products similar to those offered by Complainant. Using the domain name in this manner is 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).”). Here, Complainant provides screenshots of the <alooyoga.com> domain name’s resolving website, which displays links to competing yoga clothes and apparel retailers. See Amend. Compl. Ex. F. Therefore, the Panel finds Respondent fails to use the <alooyoga.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues Respondent registered and uses the <alooyoga.com> domain name in bad faith because Respondent is attempting to attract Internet users for commercial gain by hosting competing hyperlinks. Registering a disputed domain name to host competing hyperlinks may be evidence of bad faith under Policy ¶ 4(b)(iv). See American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum January 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iv)”). The Panel notes Complainant’s screenshots of the <alooyoga.com> domain name’s resolving webpage which displays links to competing yoga clothes and apparel retailers. See Amend. Compl. Ex. F. Therefore, the Pane finds Respondent registered and uses the <alooyoga.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Secondly, Complainant argues Respondent is redirecting Internet users to Complainant’s website for a commission, which is indicative of Respondent’s bad faith. Registering a disputed domain name to direct Internet users to a complainant’s website to take advantage of the complainant’s affiliate program may be evidence of bad faith under Policy ¶ 4(a)(iii). See Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC. v. Dragan Platic / Poste Restante, FA1401001537469 (Forum Feb. 13, 2014) (holding that the respondent’s behavior in redirecting Internet users to the complainant’s own website allowing it to improperly profit from the complainant’s affiliation program was indicative of the respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(a)(iii)). The Panel notes Complainant’s evidence of the <alooyoga.com> domain name’s redirection of Internet users to Complainant’s website, in which Respondent collects a commission as an affiliate. See Amend. Compl. Ex. E. Therefore, the Panel finds Respondent registered and uses the <alooyoga.com> domain name in bad faith under Policy ¶ 4(a)(iii).
Thirdly, Complainant argues Respondent is typosquatting, which is indicative of Respondent’s bad faith. Registering a disputed domain name that takes advantage of Internet users’ typographical mistakes may be evidence of bad faith under Policy ¶ 4(a)(iii). See Webster Financial Corporation and Webster Bank, National Association v. IS / ICS INC, FA 16070016833 (Forum Aug. 11, 2016) (“Typosquatting is a practice whereby a domain name registrant, such as Respondent, deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name. The conniving registrant wishes and hopes that Internet users will inadvertently type the malformed trademark or read the domain name and believe it is legitimately associated with the target trademark. In doing so, wayward Internet users are fraudulently directed to a web presence controlled by the confusingly similar domain name’s registrant.”). Here Complainant argues d that Respondent is attempting to take advantage of Internet users seeking Complainant’s goods and services by adding an additional letter “o.” Therefore, the Panel may find Respondent registered and uses the <alooyoga.com> domain name in bad faith under Policy ¶ 4(a)(iii).
Fourthly, Complainant argues that Respondent had knowledge of Complainant’s rights in the ALO YOGA and ALO marks at the time of registering the <alooyoga.com> domain name. Arguments of bad faith based on constructive notice normally do not succeed , as prior UDRP decisions decline to find bad faith as a result of constructive knowledge. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (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.”). The Panel chooses to determine whether Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name as actual knowledge can adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum January 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). To support this submission, Complainant points to its trademark registrations and international fame. See Amend. Compl. Ex. D and G. As such, the Panel finds that Respondent did have actual knowledge of Complainant’s right in its mark, which supports a finding of bad faith under Policy ¶ 4(a)(iii).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <alooyoga.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: August 4, 2020
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page