DECISION

 

Bop LLC v. Jian Fu Wang / Fu Jian Qi Hang Wang Lao Ke Ji You Xian Gong Si

Claim Number: FA2002001882806

 

PARTIES

Complainant is Bop LLC (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Jian Fu Wang / Fu Jian Qi Hang Wang Lao Ke Ji You Xian Gong Si (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <shopbop-jp.site> and <shopbop-jp.store>, registered with GoDaddy.com, LLC.

 

PANEL

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.

 

Debrett G. Lyons as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on February 11, 2020; the Forum received payment on February 11, 2020.

 

On February 12, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <shopbop-jp.site> and <shopbop-jp.store> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names.  GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 February 13, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 4, 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@shopbop-jp.site, postmaster@shopbop-jp.store.  Also on February 13, 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 March 9, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

Complainant asserts trademark rights in SHOPBOP. Complainant holds a national registration for that trademark.  Complainant submits that the domain names are confusingly similar to its trademark. 

 

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names. 

 

Further, Complainant alleges that Respondent registered and used the disputed domain names in bad faith. 

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The factual findings pertinent to the decision in this case are that:

1.    Complainant is the owner of United States Patent and Trademark Office (“USPTO”) Reg. No. 2,740,164, registered July 22, 2003 for the trademark SHOPBOP;

2.    Complaint uses the trademark in connection with its business as an online retailer of fashion clothing and accessories;

3.     Complainant maintains country-specific websites resolving from country-specific ccTLDs, including a Japanese website which resolves from <shopbop.jp>; and

4.    the disputed domain names were both registered in December 2019.

 

DISCUSSION

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.  

 

Identical and/or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.

 

It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)).  Complainant therefore has rights since it provides proof of its registration of the trademark with the USPTO, a national trademark authority.   

 

The disputed domain names take the trademark to which they add wholly non-distinctive matter in the form of one or another gTLD and the country name abbreviation for Japan.  The Panel finds that those additions to the trademark do nothing to avoid a finding of confusingly similarity.  The country name in this case only underlines the suggestion to an Internet user that here are the official Japanese business websites for Complainant (see, for example, Dell Inc. v. Suchada Phrasaeng, FA 1745812 (Forum Sep. 28, 2017) (“Adding geographical terms does not sufficiently distinguish a domain name from a mark to prevent a finding of confusingly similarity under a Policy ¶4(a)(i) analysis.”; Franklin Covey Co. v. franklincoveykorea, FA 1774660 (Forum Apr. 11, 2018) finding that the <franklincoveykorea.com> domain name is confusingly similar to the FRANKLIN COVEY mark, as “[t]he addition of a geographic term and a gTLD do not negate confusing similarity between a domain name and a mark per Policy ¶ 4(a)(i).”).

 

The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

 

Rights or Legitimate Interests

Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:

 

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;  or

 

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights;  or

 

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000)).

 

The publicly available WhoIs information identifies “Jian Fu Wang” as the domain name registrant and “Fu Jian Qi Hang Wang Lao Ke Ji You Xian Gong Si” as the registrant organization.  Accordingly, there is no indication that Respondent might be commonly known by the domain names.  There is no evidence that Respondent has any trademark rights. 

 

Here is a convenient place to review the evidence since Complainant states that Respondent has no authority to use the trademark.  The Complaint exhibits a number of screenshots in support of the narrative that:

 

“… disputed domains resolve to a Shopify-hosted ‘specialty store that offers a selection of rare products and cheap designer brands that aim to be the largest in Japan’ … from “[u]sers can enter a search term … view products and prices, and place products in a shopping bag.  See Exhibit H (purported YSL product and Prada product from <shopbop-jp.site> and <shopbop-jp.store>, respectively).  Respondent’s product prices are merely a fraction (one-tenth or less) of the retail price of the actual authentic products.”

 

Because the low prices of the fashion goods advertised are, in Complainant’s words, “too good to be true”, Complainant states that it is reasonable to conclude that the goods are counterfeit.  Very clearly, the sale of counterfeit products does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name under the Policy (see, for example, Watts Water Technologies Inc. v. wo ci fa men zhi zao (kun shan) you xian gong si, FA 1740269 (Forum Aug. 11, 2017)). 

 

That said, the screenshots in evidence expressly state that the savings have been passed on to purchasers because bulk goods have been parallel imported.  The Panel finds that there is a degree of uncertainty as to whether or not the advertised goods are counterfeit. 

 

However, Complainant is not the owner of the YSL or PRADA trademark and its own trademark is a retailer’s mark.  The difficulty is that the evidence, as presented, does not show any use of the SHOPBOP trademark by Respondent.  The host site is Shopify and the website address thereof is unconnected with the disputed domain names.  Although Complainant refers to “purported YSL product and Prada product from <shopbop-jp.site> and <shopbop-jp.store>” there is no evidence of the use of those disputed domain names.  The screenshots in evidence do not show the URLs and all that is captured of possible relevance on the pages is “SHOPBOP.JP”.  Albeit that is said to be the domain name associated with Complainant’s Japanese affiliate business, this is no proof of any connection with Respondent; the captured screenshots may have resolved from any domain name.

 

In the circumstances it is unnecessary for the Panel to further examine this second aspect of the Policy since it is clear that paragraph 4(a)(iii) is determinative of the matter.

 

Registration and Use in Bad Faith

Complainant must prove on the balance of probabilities both that the disputed domain names were registered in bad faith and used in bad faith.  Further guidance on that requirement is found in paragraph 4(b) of the Policy but it is unnecessary to seek that guidance since, on the facts, there is no evidence of use of the domain names at all and so no evidence of their use in bad faith.

  

Panel finds that Complainant has not established the third element of the Policy.

 

DECISION

Having failed to establish one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <shopbop-jp.site> and <shopbop-jp.store> domain names REMAIN WITH Respondent.

 

 

Debrett G. Lyons, Panelist

Dated:  March 14, 2020

 

 

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