NHN Global, Inc. v. Wen Lian Cai
Claim Number: FA2010001918255
Complainant is NHN Global, Inc. (“Complainant”), represented by Alexis Crawford Douglas of K&L Gates LLP, Illinois, USA. Respondent is Wen Lian Cai (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <fashiongonow.com> and <fashiongooo.com>, registered with GoDaddy.com, LLC.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 26, 2020; the Forum received payment on October 26, 2020.
On October 27, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <fashiongonow.com> and <fashiongooo.com> 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 November 3, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 23, 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@fashiongonow.com, postmaster@fashiongooo.com. Also on November 3, 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 November 27, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant runs an online fashion e-commerce marketplace.
Complainant has rights in the FASHIONGO mark through its registrations with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <fashiongonow.com> and <fashiongooo.com> domain names are identical or confusingly similar to Complainant’s mark as they incorporate the mark in its entirety and either add the generic word “now” or the letter sequence “oo”, along with the “.com” gTLD.
Respondent lacks rights and legitimate interests in the <fashiongonow.com> and <fashiongooo.com> domain names. Respondent is not commonly known by the at-issue domain names, nor has Complainant authorized or licensed Respondent to use its FASHIONGO mark in the disputed domain names or otherwise. Respondent does not use the domain names for any bona fide offerings of goods or services, nor any legitimate noncommercial or fair use, but instead attempts to pass off as Complainant to divert internet users to the domain names’ resolving website, where Respondent offers good that compete with those items offered by Complainant and are identical to items being sold by Complainant.
Respondent registered and uses the <fashiongonow.com> and <fashiongooo.com> domain names in bad faith. Respondent disrupts Complainant’s business for commercial gain by attempting to pass itself off as Complainant to divert internet users to the at-issue domain names’ website, where Respondent offers goods identical to those offered by Complainant. Respondent registered the domain names with actual knowledge of Complainant’s rights in the FASHIONGO mark. Respondent failed to respond to Complainant’s cease-and-desist letter. Respondent fails to maintain legally adequate privacy policies.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the FASHIONGO mark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired rights in its FASHIONGO trademark.
Respondent registered and uses the at-issue domain names to divert internet users from Complainant’s official website to the <fashiongonow.com> and <fashiongooo.com> website(s) where Respondent offers goods competing with, and identical to, those offered by Complainant.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of its FASHIONGO mark with the USPTO is sufficient to allow the Panel to find that Complainant has rights in a mark under the Policy. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office.)
Respondent’s at-issue <fashiongonow.com> and <fashiongooo.com> domain names each consist of Complainant’s entire FASHIONGO trademark followed by either the generic term “now” or the characters “oo.” Both domain names end with the top-level domain name “.com.” Significantly, the differences between Respondent’s domain names and Complainant’s trademark do nothing to distinguish Complainant’s trademark from either domain name under Policy ¶ 4(a)(i).Therefore, the Panel finds that the at-issue domain names are each confusingly similar to Complainant’s FASHIONGO mark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists 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 Bittrex, Inc. v. Sergey Valerievich Kireev / Kireev, FA 1784651 (Forum June 5, 2018) (holding that the domain name consists of the BITTREX mark and adds “the letters ‘btc’ and the gTLD .com which do not distinguish the Domain Name from Complainant’s mark.”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Absent contrary evidence of Policy ¶ 4(c) circumstances or other evidence supporting a finding of Respondent’s having rights or legitimate interests in the domain name(s), Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain names. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of either at-issue domain name.
The WHOIS information for the at-issue domain names identifies the domain names’ registrants as “Wen Lian Cai” and there is no evidence in the record which suggests that the Respondent is known by either at-issue domain name. Therefore, the Panel concludes that under Policy ¶ 4(c)(ii) Respondent is not commonly known either at-issue domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name).
Furthermore, Respondent uses the <fashiongonow.com> and <fashiongooo.com> domain names to pass itself off as Complainant in order to divert internet users to such domain names’ associated website. The website brashly displays Complainant’s trademark without Respondent having any authority to do so. There Respondent, like Complainant on its genuine websites, markets and sells women’s clothing which appears identical to items sold by Complainant. Respondent’s use of the confusingly similar at-issue domain names to address a competing website that offers a fashion centered e-commerce marketplace that competes with Complainant is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business); see also Invesco Ltd. v. Premanshu Rana, FA 1733167 (Forum July 10, 2017) (“Use of a domain name to divert Internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶ 4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of legitimate interests in respect of either at-issue domain name.
Respondent’s <fashiongonow.com> and <fashiongooo.com> domain names were each registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First as mentioned above regarding rights and legitimate interests, Respondent uses the at-issue domain names to pass itself off as Complainant in order to divert internet users to the at-issue domain names’ website and there offer website visitors goods and/or services that compete with those offered by Complainant, and are in fact may be the same goods offered by Complainant on its websites. Such use of the confusingly similar domain names demonstrates Respondent’s bad faith registration and use of the domain names pursuant to both Policy ¶¶ 4(b)(iii) and (iv). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum Jan. 9, 2018) (Finding that Respondent’s use of the at-issue domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)); see also Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business).
Additionally, Respondent had actual knowledge of Complainant’s rights in the FASHIONGO mark when it registered <fashiongonow.com> and <fashiongooo.com> as domain names. Respondent’s actual knowledge is evident from the notoriety of Complainant’s trademark, from Respondent’s passing itself off as Complainant via its misappropriated uses of Complainant’s trademark, and from Respondent offering of goods and/or services competing with those offered by Complainant via the <fashiongonow.com> and <fashiongooo.com> website as discussed above. Respondent’s registration and use of its confusingly similar domain names with prior knowledge of Complainant’s rights in such domain names further shows Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <fashiongonow.com> and <fashiongooo.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: November 30, 2020
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