Kipling Apparel Corp. v. Ming Wu
Claim Number: FA1506001623460
Complainant is Kipling Apparel Corp. (“Complainant”), represented by Susan M. Kayser of JONES DAY, District of Columbia, USA. Respondent is Ming Wu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kipling-store.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the Forum electronically June 9, 2015; the Forum received payment June 9, 2015.
On June 9, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <kipling-store.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 10, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 30, 2015, 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@kipling-store.com. Also on June 10, 2015, 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 July 8, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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’s Contentions in this Proceeding:
1. Policy ¶ 4(a)(i)
a. Complainant has rights in the KIPLING mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,952,994, registered on January 30, 1996).
b. Respondent’s <kipling-store.com> domain name is confusingly similar to Complainant’s KIPLING mark because it is differentiated by only the additions of a hyphen, the generic word “store,” and the generic top-level domain (“gTLD”) “.com.”
2. Policy ¶ 4(a)(ii)
a. Respondent is not commonly known by the disputed domain name as the WHOIS information lists “Ming Wu” as Registrant. Respondent has not submitted any further evidence to indicate being commonly known by the disputed domain name. Moreover, Respondent is not authorized to use Complainant’s KIPLING mark.
b. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the resolving website, purportedly, to sell Complainant’s products without authorization.
c. Respondent lacks rights and legitimate interests in the disputed domain name because Respondent is passing itself off as Complainant.
3. Policy ¶ 4(a)(iii)
a. Respondent demonstrated a pattern of bad faith registration through a prior decided UDRP case.
b. Respondent uses the resolving website to capitalize on the confusion of Internet users in order to profit commercially by purportedly selling Complainant’s products.
c. Respondent used the disputed domain name in order to pass itself off as Complainant.
B. Respondent’s Contention in this Proceeding:
Respondent did not submit a formal Response.
The Panel notes that Respondent registered the <kipling-store.com> domain name August 25, 2014.
Complainant established rights and legitimate interests in the disputed domain name.
Respondent has no such rights or legitimate interests in the disputed domain name.
Respondent registered a domain name that is confusingly similar to Complainant’s protected mark.
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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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.”).
Identical or Confusingly Similar:
Complainant uses the KIPLING mark in conjunction with the sale of apparel and accessories internationally. Complainant alleges it has rights in the KIPLING mark through its registration with the USPTO (e.g., Reg. No. 1,952,994, registered on January 30, 1996). Complainant provided documentation of this registration in Exhibit B, along with other related registrations. Past panels have found that registration with the USPTO suffices to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Past panels have also found that registration in a respondent’s country of operation is not required, so long as rights can be established somewhere. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Accordingly, the Panel finds that Complainant has rights in the KIPLING mark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <kipling-store.com> domain name is confusingly similar to Complainant’s KIPLING mark because it is differentiated by only the additions of a hyphen, the word “store,” and the gTLD “.com.” Past panels have found that the additions of hyphens and gTLDs are irrelevant to Policy ¶ 4(a)(i) analysis. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding hyphens and top-level domains are irrelevant for purposes of the Policy). Complainant argues that the word “store” is generic, and therefore also irrelevant to Policy ¶ 4(a)(i) analysis. Past panels have agreed with similar arguments. See Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end). Therefore, the Panel finds that Respondent’s <kipling-store.com> domain name is confusingly similar to Complainant’s KIPLING mark pursuant to Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests:
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 of proof shifts to Respondent to show it does have such 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 alleges that Respondent is not commonly known by the disputed domain name. The Panel notes that the WHOIS information lists “Ming Wu” as Registrant and that Respondent has failed to provide further evidence to indicate being commonly known by the domain name. Moreover, Complainant urges that Respondent is not authorized to use Complainant’s mark. Past panels have found such a lack of evidence sufficient to show that a respondent is not commonly known by a domain name under Policy ¶ 4(c)(ii). See 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). Accordingly, the Panel finds that Respondent is not commonly known by the <kipling-store.com> domain name under Policy ¶ 4(c)(ii).
Complainant alleges that Respondent fails to use the resolving website to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the resolving website to purportedly sell Complainant’s products without authorization. Complainant provided documentation of this use in Exhibit F, as well as documentation of its own products in Exhibit C. Past panels have found that unauthorized resale of a complainant’s products shows a lack of bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the complainant’s goods without the complainant’s authority, as well as others’ goods, is not bona fide use). This Panel finds such use here, and finds that Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
Complainant also alleges that Respondent lacks rights and legitimate interests in the disputed domain name because Respondent uses the resolving website to pass itself off as Complainant. Complainant provided documentation of such attempt at passing off as Complainant in Exhibit F, showing Respondent’s use of the <kipling-store.com> domain name, as compared to Complainant’s own website in Exhibit C. Complainant also provided a sample of pictures used either on Complainant’s website or in advertisements for Complainant’s goods that also appear on Respondent’s resolving website, in Exhibit J. Past panels have found the use of a disputed domain to attempt to pass off as a complainant to show a lack of rights and legitimate interests according to Policy ¶ 4(a)(ii). See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as 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 pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website). This Panel finds Complainant’s evidence sufficient to show Respondent attempts to pass itself off as Complainant, and therefore finds that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant alleges that Respondent has a pattern of bad faith registrations. Complainant cites to Swarovski Aktiengesellschaft v. Ming Wu to show Respondent’s pattern of bad faith registration. WIPO Case No. D2014-1786 (WIPO Nov. 26, 2014). Past panels have found prior decisions decided against a respondent to be sufficient to show a pattern of bad faith registration and use under Policy ¶ 4(b)(ii). See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”). Accordingly, the Panel finds that Respondent has a pattern of bad faith registration under Policy ¶ 4(b)(ii).
Complainant alleges that Respondent uses its resolving website to take advantage of the confusion of Internet users for financial gain by using the <kipling-store.com> domain name to sell, what it purports to be, Complainant’s products, without authorization from Complainant. Complainant provided documentation of this use in Exhibit F, as well as documentation of its own products in Exhibit C. Past panels have found unauthorized resale of a complainant’s goods to constitute bad faith in use and registration pursuant to Policy ¶ 4(b)(iv). See Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant). This Panel finds such behavior by Respondent here and finds that Respondent registered and uses the <kipling-store.com> domain in bad faith pursuant to Policy ¶ 4(b)(iv).
Additionally, Complainant alleges that Respondent uses the resolving website to pass itself off as Complainant. Complainant argues that because Respondent’s resolving website displays Complainant’s KIPLING mark, as well as other associated marks, and because Respondent purports to be selling Complainant’s goods, Respondent is using the <kipling-store.com> domain name in a manner intended to lead Internet users to believe it is operated by Complainant or under Complainant’s authorization. Past panels have found attempting to pass off as a complainant to constitute bad faith under Policy ¶ 4(a)(iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. 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”). This Panel finds such use here and finds that Respondent registered and uses the <kipling-store.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <kipling-store.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: July 22, 2015
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