Paul Frank Industries LLC v. yiyang chen / chen yi yang
Claim Number: FA1401001538885
Complainant is Paul Frank Industries LLC (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, Washington, D.C., USA. Respondent is yiyang chen / chen yi yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <paulfrankbeddingsets.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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 13, 2014; the National Arbitration Forum received payment on January 13, 2014. The Complaint was submitted in both English and Chinese.
On January 13, 2014, Chengdu West Dimension Digital Technology Co., Ltd confirmed by e-mail to the National Arbitration Forum that the <paulfrankbeddingsets.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 January 14, 2014, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of February 3, 2014 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@paulfrankbeddingsets.com. Also on January 14, 2014, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 7, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho-Hyun Nahm as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
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 shall be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant makes the following contentions:
B. Respondent
Respondent failed to submit a Response in this proceeding. The disputed domain name was registered on September 3, 2013.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name 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(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 uses the PAUL FRANK mark to promote and sell a wide array of products, including bedding sets, clothing, and sunglasses. See Complainant’s Exhibit 4. Complainant further states that it owns rights in the PAUL FRANK mark through its registrations of the mark with both the USPTO (e.g., Reg. No. 3,563,723 registered January 20, 2009) and the SAIC (e.g., Reg. No. 5,269,272 registered June 28, 2009). See Complainant’s Exhibit 6. The Panel notes that it has previously been held that a complainant that has registered its mark with various trademark authorities worldwide sufficiently establishes its rights in that mark pursuant to Policy ¶ 4(a)(i). See, e.g., Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world). The Panel therefore holds that by registering the PAUL FRANK mark with both the USPTO and the SAIC, Complainant sufficiently established its rights in the mark under Policy ¶ 4(a)(i).
Complainant
next asserts that the <paulfrankbeddingsets.com>
domain name is confusingly
similar to Complainant’s PAUL FRANK mark, because it fully appropriates the
mark and merely adds the term “Bedding sets,” a product that Complainant has
sold under its PAUL FRANK mark since 2002. See Complainant’s Exhibit 4.
The Panel also observes that the disputed domain name eliminates the space
found between words in the PAUL FRANK mark while also affixing the generic
top-level domain (“gTLD”) “.com.” However, the Panel notes that previous panels
have held that a domain name’s elimination of spaces found in a mark and
affixation of a gTLD are irrelevant for the purposes of a confusing similarity
analysis. See, e.g.,
Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the
elimination of spaces between terms and the addition of a gTLD do not establish
distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). The Panel
further notes that previous panels have
found that a domain name is confusingly similar to a complainant’s mark where
the disputed domain name fully appropriates the mark and merely adds a phrase
that is connected to the complainant’s business. See, e.g., Churchill Ins. Co. Ltd. v.
Sutherland FA
1328073 (Nat.
Arb. Forum July 13, 2010) (holding that the
<churchilllendinggroup.com> domain name was confusingly similar to the
complainant’s CHURCHILL mark, because the “alteration of [c]omplainant’s mark
with the addition of a phrase comprised of terms descriptive of [c]omplainant’s
business fails to create a distinct domain name that avoids confusing
similarity.”). Here, the Panel notes that
Complainant has submitted evidence to support its assertion that it sells
bedding sets under its PAUL FRANK mark on its website. See Complainant’s
Exhibit 4. Therefore, the Panel holds that the domain name’s added phrase
“bedding sets” is descriptive of Complainant’s business, as was the case in Churchill
Ins., supra. Therefore, the Panel holds that the <paulfrankbeddingsets.com>
domain name’s alterations to Complainant’s PAUL FRANK mark are insufficient to
distinguish the domain name from the mark, and that the disputed domain name is
thus confusingly similar to the PAUL FRANK mark pursuant to Policy ¶ 4(a)(i).
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 is not commonly known as <paulfrankbeddingsets.com> under Policy ¶ 4(c)(ii) and that Respondent has not been authorized to use Complainant’s PAUL FRANK mark in any capacity. Previous panels have determined that a respondent is not commonly known by a disputed domain name where the complainant alleges that it has not authorized the respondent to use its mark in a domain name and there is no evidence in the record, including the WHOIS information, to suggest that the respondent is commonly known by the disputed domain name. See, e.g., Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). The Panel notes that the WHOIS information identifies the registrant of the <paulfrankbeddingsets.com> domain name as “yiyang chen / chen yi yang,” which does not suggest that Respondent is commonly known as “Paul Frank Bedding Sets.” Further, because Complainant asserts that Respondent is using the disputed domain name to offer counterfeit versions of Complainant’s products, the Panel reasonably accepts Complainant’s contention that it did not authorize Respondent to use its PAUL FRANK mark in a domain name or in any other capacity. Therefore, the Panel concludes that Respondent is not commonly known as <paulfrankbeddingsets.com> pursuant to Policy ¶ 4(c)(ii).
Complainant also suggests that Respondent is not using the disputed domain name for 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), because the disputed domain name resolves to a commercial website that offers counterfeit versions of Complainant’s PAUL FRANK bedding products as well as competing bedding products. See Complainant’s Exhibit 7. According to a screenshot submitted by Complainant, the at-issue website advertises “Paul Frank Bedding Sets,” “Paul Frank Kids Bedding,” as well as “Disney Kids Cartoon Quilt,” and “Hello Kitty Kids Bedding.” See id. The Panel concludes from this screenshot that the <paulfrankbeddingsets.com> domain name resolves to a website that promotes counterfeit versions of Complainant’s PAUL FRANK bedding sets as well as other competing bedding sets. The Panel notes that it has previously been determined that a respondent’s use of a disputed domain name is not protected under Policy ¶¶ 4(c)(i) or 4(c)(iii) where the domain name resolves to a website offering counterfeit versions of Complainant’s products. See, e.g., Keihin Corp. v. Youli Ltd., FA 1106190 (Nat. Arb. Forum Dec. 18, 2007) (finding no rights and legitimate interests when the respondent sold counterfeit versions of the complainant’s products in competition with the complainant’s business). Similarly, previous panels have held that a respondent’s use of a disputed domain name is unprotected under the Policy where the disputed domain name is used to promote products that directly compete with products offered under the complainant’s mark. See, e.g., Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Pursuant to this precedent, the Panel holds that Respondent’s use of the <paulfrankbeddingsets.com> domain name is not protected as 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).
In addition, Complainant alleges that by blatantly displaying Complainant’s “Julius the Monkey” logo, Respondent has attempted to pass itself off as Complainant, which is further evidence of Respondent’s lack of rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Complainant’s Exhibit 7. Complainant’s Exhibits 3-5 demonstrate the use of its “Julius the Monkey” logo on Complainant’s own official website. See id. The Panel observes that according to the screenshot submitted by Complainant, the <paulfrankbeddingsets.com> domain name’s resolving website prominently displays an identical “Julius the Monkey” logo on the upper right-hand corner. See Complainant’s Exhibit 7. The Panel additionally notes that the “Julius the Monkey” logo appears on some of the allegedly counterfeit bedding sets offered on the website resolving from the <paulfrankbeddingsets.com> domain name. See id. The Panel notes that it has previously been held that a respondent’s use of a disputed domain name to pass itself off as the complainant is evidence that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent that attempts to pass itself off as the complainant online, which includes blatant unauthorized use of the complainant’s mark, is evidence that the respondent has no rights or legitimate interests in the disputed domain name). The Panel determines that Respondent’s use of the “Julius the Monkey” logo, particularly when coupled with Respondent’s offering of allegedly counterfeit versions of Complainant’s PAUL FRANK products, constitutes passing off behavior, and that this behavior is further evidence that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
Complainant alleges that <paulfrankbeddingsets.com> domain name disrupts Complainant’s business pursuant to Policy ¶ 4(b)(iii) by offering counterfeit versions of Complainant’s PAUL FRANK products. See Complainant’s Exhibit 7. As discussed above, Complainant has submitted evidence that the disputed domain name resolves to a website that purports to offer a variety of beddings sets such as “Paul Frank Bedding Sets” and “Paul Frank Kids Bedding,” as well as bedding sets that display Complainant’s “Julius the Monkey” logo. See id. & Complainant’s Exhibits 3–5. The Panel therefore accepts Complainant’s contention that Respondent is using the <paulfrankbeddingsets.com> domain name to offer counterfeit products. The Panel notes that it has previously been held that a respondent demonstrates bad faith registration and use under Policy ¶ 4(b)(iii) where the disputed domain name resolves to a website offering counterfeit products. See Louis Vuitton Malletier S.A., L.L.C. v. David, FA 1138296 (Nat. Arb. Forum Mar. 5, 2008) (concluding that the complainant’s business is disrupted by the respondent’s registration and use of the disputed domain name for the purpose of selling counterfeit products). Therefore, the Panel holds that Respondent has demonstrated bad faith registration and use of the <paulfrankbeddingsets.com> domain name pursuant to Policy ¶ 4(b)(iii).
Complainant next alleges that Respondent has demonstrated bad faith attraction for commercial gain pursuant to Policy ¶ 4(b)(iv), because the <paulfrankbeddingsets.com> domain name creates the wrongful impression that the counterfeit products offered by Respondent are somehow affiliated with or sponsored by Complainant. See Complainant’s Exhibit 7. The Panel notes that it has previously been held that a respondent demonstrates bad faith under Policy ¶ 4(b)(iv) where the disputed domain name is likely to cause confusion with the complainant’s mark and the respondent is commercially profiting from that confusion. See, e.g., Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain). Previous panels have also presumed that a respondent is commercially profiting where the disputed domain name resolves to a website promoting counterfeit versions of the complainant’s products. See Affliction, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain by creating confusion as to the complainant’s connection with the website by selling counterfeit products). Here, the Panel finds that the <paulfrankbeddingsets.com> domain name is likely to cause confusion with Complainant’s PAUL FRANK mark, since the domain name fully appropriates the mark and merely adds the phrase “bedding sets,” which is descriptive of the products that Complainant sells under its PAUL FRANK mark. The Panel also concludes, as discussed above, that Respondent is using the disputed domain name to offer counterfeit versions of Complainant’s PAUL FRANK bedding sets. Therefore, the Panel holds that Respondent has demonstrated bad faith registration and use of the <paulfrankbeddingsets.com> domain name pursuant to Policy ¶ 4(b)(iv).
Complainant next alleges that Respondent’s attempt to pass itself off as Complainant is another reason to hold that Respondent has demonstrated bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(a)(iii). The Panel recalls that Complainant has submitted evidence that Respondent’s website appropriates Complainant’s “Julius the Monkey” logo and that the logo also appears on the counterfeit bedding set products offered on the website. See Complainant’s Exhibits 3—5 & 7. The Panel notes that previous panels have held that a respondent demonstrates bad faith “passing off” behavior under Policy ¶ 4(a)(iii) by using a domain name that appropriates the complainant’s mark and reproducing that mark and its corresponding logo on the disputed domain name’s resolving website. See Target Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”). Here, the Panel holds that the at-issue website similarly displays Complainant’s PAUL FRANK mark as well as its “Julius the Monkey” logo. See Complainant’s Exhibit 7. Therefore, the Panel holds that Respondent has engaged in passing off behavior that is indicative of Respondent’s bad faith registration and use of the <paulfrankbeddingsets.com> domain name under Policy ¶ 4(a)(iii).
Finally, Complainant argues that Respondent’s actual notice of the PAUL FRANK mark and Complainant’s rights thereto can be inferred from Respondent’s use of the <paulfrankbeddingsets.com> domain name to offer counterfeit versions of Complainant’s PAUL FRANK products. Previous panels have found that a respondent demonstrates bad faith registration under Policy ¶ 4(a)(iii) by registering an infringing domain name with actual notice of the complainant’s rights in the appropriated mark. See, e.g., Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith). The Panel notes that other panels have inferred that a respondent had such actual notice of the complainant’s rights where the respondent’s use of the disputed domain name suggests that the respondent was aware of the complainant. Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”). Here, as in Pfizer, supra, the Panel finds that there is an obvious connection between Complainant’s PAUL FRANK mark and the counterfeit PAUL FRANK products offered the resolving website. See Complainant’s Exhibit 7. Therefore, the Panel infers that Respondent registered the disputed domain name with actual notice of Complainant’s rights in the PAUL FRANK mark, and holds that this is further evidence of Respondent’s bad faith registration and use of the <paulfrankbeddingsets.com> domain name under 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 <paulfrankbeddingsets.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: February 18, 2014
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