Girolami Flavio v. Nexperian Holding Limited, Wu Wei
Claim Number: FA1801001766752
Complainant is Girolami Flavio (“Complainant”), represented by Albert L. Schmeiser of Schmeiser, Olsen & Watts, LLP, Arizona, USA. Respondent is Nexperian Holding Limited, Wu Wei (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <commonprojectsboutique.com> (“Domain Name”), registered with HiChina Zhicheng Technology Limited.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Bruce E. Meyerson, Dennis A. Foster and Nicholas J.T. Smith (Chair) as Panelists.
Complainant submitted a Complaint to the Forum electronically on January 12, 2018; the Forum received payment on January 12, 2018.
On January 15, 2018, HiChina Zhicheng Technology Limited confirmed by e-mail to the Forum that the <commonprojectsboutique.com> domain name is registered with HiChina Zhicheng Technology Limited and that Respondent is the current registrant of the name. HiChina Zhicheng Technology Limited has verified that Respondent is bound by the HiChina Zhicheng Technology Limited 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 22, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 12, 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@commonprojectsboutique.com. Also on January 22, 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 February 20, 2014, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Bruce E. Meyerson, Dennis A. Foster and Nicholas J.T. Smith as Panelists.
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 engages in the business of selling and marketing footwear, bags, and clothing in numerous countries around the world. Complainant has rights in the COMMON PROJECTS mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,702,027, registered Mar. 17, 2015). Respondent’s domain name is identical or confusingly similar to Complainant’s mark as it merely adds the term “boutique” along with the generic top-level domain (“gTLD”) “.com” to Complainant’s fully incorporated mark.
Respondent has no rights or legitimate interests in the <commonprojectsboutique.com> domain name. Respondent is not commonly known by the Domain Name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the COMMON PROJECTS mark. Respondent also does not use the Domain Name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the Domain Name to display and offer products that are similar to the Complainant’s products, yet are not.
Respondent registered and uses the <commonprojectsboutique.com> domain name in bad faith. Respondent is using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to Respondent’s web site by creating a likelihood of confusion with Complainant’s COMMON PROJECTS mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website and the competing products on Respondent’s website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the COMMON PROJECTS mark. The Domain Name is confusingly similar to Complainant’s COMMON PROJECTS mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <commonprojectsboutique.com> domain name and that Respondent registered and uses the 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(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
The Registration Agreement for the Domain Name is in Chinese. Complainant has alleged that because Respondent is conversant and proficient in English, the proceeding should be conducted in English. Complainant contends Respondent’s website available at the Domain Name uses only the English language, suggesting that Respondent is capable of proceeding in the English language.
The Panel has the discretion under UDRP Rule 11(a) to determine the appropriate language of the proceedings taking into consideration the particular circumstances of the administrative proceeding: See FilmNet Inc. v Onetz, FA 96196 (Forum Feb. 12, 2001). 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.
Preliminary Issue: Identification of the Respondent
Paragraph 3(b)(v) of the Rules provides that Complaint shall provide “the name of the Respondent (domain-name holder)”. In the present case, the Complaint provides the name of Nexperian Holding Limited, which was likely the entity recorded in the Registrar’s WHOIS database as the Domain Name holder at a time shortly before the Complaint was filed. However, in response to a request from the Forum, Registrar disclosed on March 7, 2017 that the registrant of the Domain Name was Wu Wei. The Panel understands that the entity named as Respondent in the Complaint is a privacy protection service and that the person disclosed by the Registrar is the underlying registrant. See Van Cleef & Arbels, S.A. v. Nexperian Holding Limited, WIPO Case No. D2017-0441.
The Panel is satisfied that the Complaint against Nexperian Holding Limited is a valid complaint because it likely was the entity identified in the publicly available Registrar’s WHOIS database at the time that the Complaint was submitted to Forum. The Panel finds support for this view in paragraph 1 of the Rules which defines “mutual jurisdiction” in terms of a court jurisdiction at the location of the domain-name holder’s address “as shown for the registration of the domain name in Registrar’s Whois database at the time the complaint is submitted to the Provider.”
Therefore, the Panel finds that it was not necessary for Complainant to amend its Complaint to satisfy the formal requirements of the Policy and the Rules. See Mrs. Eva Padberg v. Eurobox Ltd., WIPO Case No. D2007-1886; Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320.
Complainant has rights in the COMMON PROJECTS mark based upon registration with the USPTO (e.g. Reg. No. 4,702,027, registered Mar. 17, 2015). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark.”).
Complainant contends that the Domain Name is identical or confusingly similar to the COMMON PROJECTS mark as it merely adds the term “boutique” along with the gTLD “.com” to Complainant’s fully incorporated mark. The Panel finds that the Domain Name is confusingly similar to the COMMON PROJECTS mark; See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist 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 Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the 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 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (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.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Common Projects name, nor has Complainant authorized Respondent to use the COMMON PROJECTS mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “Wu Wei” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).
The Domain Name resolves to a website that uses the COMMON PROJECTS mark and offers footwear products that Complainant asserts (and Respondent does not rebut) are similar to but not Complainant’s footwear products. The use of a confusingly similar domain name for a website that directly competes with a complainant generally fails to confer rights and legitimate interests in a domain name. See Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum February 3, 2016) (finding that Complainant provides freelance talent services, and that Respondent competes with Complainant by promoting freelance talent services through the disputed domain’s resolving webpage, which is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use). Respondent’ s use of the domain name is not in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that Respondent had actual knowledge of Complainant’s COMMON PROJECTS mark since the Domain Name resolved to a website that advertised for sale goods that competed directly with Complainant and used Complainant’s COMMON PROJECTS mark to do so. The Domain Name was registered on September 29, 2017, post-dating the registration of the COMMON PROJECTS mark. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
Complainant argues that Respondent registered and uses the Domain Name in bad faith by creating a likelihood for confusion as to the source, sponsorship, affiliation, or endorsement of the Domain Name to commercially benefit by offering competing goods or services. The Panel agrees, noting that the Domain Name resolves to a website that uses the COMMON PROJECTS mark and offers footwear similar to (and in direct competition with) footwear produced by Complainant. See Computerized Security Systems, Inc. d/b/a SAFLOK v. Bennie Hu, FA0305000157321 (Forum Jun. 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). See also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”).
The Panel finds Complainant has satisfied 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 <commonprojectsboutique.com> domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Chair
Bruce E. Meyerson, Panelist
Dennis A. Foster, Panelist
Dated: February 26, 2018
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