ShopStyle Inc. v. rushna saif
Claim Number: FA1806001792035
Complainant is ShopStyle Inc. (“Complainant”), represented by Brian M. Davis of VLP Law Group LLP, North Carolina, USA. Respondent is rushna saif (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <shopstyle.app>, registered with Key-Systems, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 16, 2018; the Forum received payment on June 16, 2018.
On June 19, 2018, Key-Systems, LLC confirmed by e-mail to the Forum that the <shopstyle.app> domain name is registered with Key-Systems, LLC and that Respondent is the current registrant of the name. Key-Systems, LLC has verified that Respondent is bound by the Key-Systems, 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 June 22, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 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@shopstyle.app. Also on June 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. Respondent did however send two e-mails to the Forum, see below.
On July 16, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 states that it uses the SHOPSTYLE mark in conjunction with its online fashion-related search engine services. Complainant is very well-known by consumers in the fashion industry, with 1,500 retailer partnerships, and $1 billion in gross retail sales driven to its retailers through its <shopstype.com> website and affiliated sites. Complainant has localized websites in the US, Canada, the United Kingdom, Japan, France, Germany and Australia and customers in 175 countries including India. Complainant is also well known within Respondent’s home country of India, as its site was visited by 1,574,481 shoppers from that country during the 2017 calendar year alone, which resulted in $296,000 in net sales. Complainant has rights in SHOPSTYLE mark through its registration of the mark in the United States in 2010.
Complainant alleges that the disputed domain name domain name is identical to its mark as it contains the mark in its entirety and merely adds the generic top-level domain (“gTLD”) “.app.”
According to Complainant, Respondent has no rights or legitimate interests in the disputed domain name, as Respondent is not commonly known by the disputed domain name or the SHOPSTYLE mark and the disputed domain name is not being used.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. Respondent clearly registered the domain name to prevent Complainant from reflecting its mark in the “.app” gTLD. Additionally, given the similarity between the domain name and the SHOPSTYLE mark, along with the fact that Complainant engages in an online application based business, users will undoubtedly believe the domain name and its content is associated with Complainant. Further, Respondent clearly had knowledge of Complainant’s rights in the SHOPSTYLE mark when it registered the domain name given Complainant’s rights in the mark significantly predate Respondent’s registration of the domain name.
B. Respondent
Respondent failed to submit a formal Response in this proceeding. However, in her e-mails to the Forum Respondent states:
Since the domain name was available in the public domain, also that the trademark owner were given the time to buy the domain. Since the company missed it and I got it.
So in case this mail is regarding taking the domain back, I am more than happy to assist. Let me know what has to be done.
And:
This is Rushna from New Delhi India (woman). … I did not intend to harm anyone's brand nor use it illegally and gain popularity. I would really like and appreciate if we could discuss it out and resolve this trivial matter through mail/LinkedIn account without wasting much of each others time.
In response to these allegations:
Since lawyers are usually in the mood to create a very dramatic situation and blow things out of proportion just make their case strong and abuse the process of legal remedy I thought of amicably discussing that I (respondent, so to say) have just bought a domain name which was publicly available. I was not aware of the fact that such a company is running from past almost a decade and is on a business of $1.2 billion in sales (went through google like just now)
Also to enlighten you, about the process of buying a domain, the trademark holders and established companies were given 8 days time period to claim the domain. Most of the vigilant tech-savvy companies were prompt enough to buy such domains on the day they were made public.
…
Further to clarify my stand and to give a better understanding, the "Respondent" has not done anything illegal, buying a domain available in public domain is not illegal, though not been alert and prompt even after having a huge technical team sounds extremely casual and reckless. Alleging that "respondent" is acting in "bad faith" and "USED THE DOMAIN NAME" sounds incredulously dramatic and far-fetched as the facts can be easily verified that the name was simply registered and was not used in any manner.
To simplify further, I bought this domain at a price, in case you are looking to get it back, I am more than opening in selling it to the company. It is no hassle for me at all and I do not intend any harm one anyone's running business.
Please connect me sooner if not immediately and let's discuss it and end the matter
Complainant owns the mark SHOPSTYLE and uses in conjunction with its online fashion-related search engine services.
Complainant’s rights in its marks date back to at least 2010.
The disputed domain name was registered in 2018.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The disputed domain name is not being used.
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.
The disputed domain name is identical to Complainant’s mark as it contains the mark in its entirety and merely adds the gTLD “.app.” Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See DD IP Holder LLC v. Phill Aspden, FA 1603215 (Forum Apr. 8, 2015) (finding that the disputed domain name <dunkin.coffee> is identical to Complainant's DUNKIN COFFEE registered mark, as gTLDs that reference goods or services offered under the registered mark may be taken into account); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel therefore finds that the <shopstyle.app> domain name is identical to the SHOPSTYLE mark under Policy ¶4(a)(i).
Complainant has not authorized Respondent to use its mark. Respondent is not commonly known by the disputed domain name: where a response is lacking, the WHOIS registration information can lead to a finding that a respondent is not commonly known by a disputed domain name for the purposes of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Here, the WHOIS identifies “Rushna Saif” as the registrant. Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
The disputed domain name is not being used. Failure to make an active use of a domain name demonstrates that Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Therefore, the Panel finds that Respondent is not using the disputed domain name for a bona fide offering of goods or services.
The question of whether Respondent has rights or legitimate interests in the disputed domain name need not be decided, because Complainant has not satisfied its burden of proving that the disputed domain name was registered and is being used in bad faith, see below.
Complainant argues that Respondent registered the disputed domain name to prevent Complainant from reflecting its mark in the “.app” gTLD. However, Policy ¶ 4(b)(ii) requires some showing of other infringing domain name registrations or prior adverse UDRP proceedings. See Bullock v. Network Operations Ctr., FA 1269834 (Forum Aug. 10, 2009) (“Complainant contends that Respondent has a longstanding history of cybersquatting . . . . The Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(ii).”); see also Nabisco Brands Co. v. Patron Group, Inc., D2000-0032 (WIPO Feb. 23, 2000) (holding that registration of numerous domain names is one factor in determining registration and use in bad faith). In the instant case, Complainant has not provided any evidence to support its allegations.
Complainant avers that users will undoubtedly believe the domain name and its content is associated with Complainant. Using a disputed domain name that trades upon the goodwill of a complainant can evince bad faith under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (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); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("While an intent to confuse consumers is not required for a finding of trademark infringement, intent to deceive is strong evidence of a likelihood of confusion."). However, Complainant does not provide any evidence to further this assertion.
Complainant claims that Respondent had actual knowledge of Complainant’s rights in the SHOPSTYLE mark at the time of registering the disputed domain name, but fails to provide any evidence to that effect. It is important to note that constructive notice is insufficient to demonstrate bad faith under the Policy. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”). Respondent denies having been aware of Complainant’s mark when she registered the disputed domain name.
Given that Complainant has not presented evidence to support its allegations, and that Respondent denies having acted in bad faith, the Panel finds that Complainant failed to meet its burden of proof of bad faith registration and use under the Policy. See Tristar Products, Inc. v. Domain Administrator / Telebrands, Corp., FA 1597388 (Forum Feb. 16, 2015) (“Complainant makes conclusory allegations of bad faith but has adduced no specific evidence that warrants a holding that Respondent proceeded in bad faith at the time it registered the disputed domain name. Mere assertions of bad faith, even when made on multiple grounds, do not prove bad faith.”); see also Chris Pearson v. Domain Admin / Automattic, Inc., FA 1613723 (Forum Jul. 3, 2015) (finding that the complainant could not establish the respondent registered and used the disputed domain name in bad faith because it failed to present evidence that would support such a holding).
The disputed domain name is not being used. According to paragraph 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Jurisprudential Overview 3.0): “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”
In the present case, Complainant’s trademark consists of common words. So it is possible to envisage some use of the disputed domain name that would not violate the Policy, see Morgan Stanley v. TONY / shentony, FA 1637186 (Forum Oct. 10, 2015) (“Respondent registered the disputed domain name [MORGANSTANLEY.ONLINE] in bad faith because . . . it is difficult to envisage any use of the disputed domain name that would not violate the Policy”).
While there has been no formal response to the Complaint, Respondent has indicated in her e-mails that she did not know of Complainant when she registered the disputed domain name.
It is possible that Respondent intends to sell the disputed domain name for a sum in excess of out-of-pocket costs, which could constitute bad faith under the Policy. However, the record does not contain any evidence to the effect that Respondent has actually asked for such an excessive sum.
As noted above, the Panel finds that Complainant has failed to satisfy its burden of proof for this element of the Policy.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <shopstyle.app> domain name REMAIN WITH Respondent.
Richard Hill, Panelist
Dated: July 16, 2018
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