Barefoot Dreams, Inc. v. Yao Ge
Claim Number: FA2011001921125
Complainant is Barefoot Dreams, Inc. (“Complainant”), represented by Merri Moken of Paul Hastings LLP, California, USA. Respondent is Yao Ge (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <luckinroom.com>, <buybarefootdream.com>, <barefootdreamsale.com>, <barefootdreamshop.com>, registered with Alibaba Cloud Computing (Beijing) Co., Ltd.
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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 18, 2020; the Forum received payment on November 18, 2020.
On November 19, 2020, Alibaba Cloud Computing (Beijing) Co., Ltd. confirmed by e-mail to the Forum that the <luckinroom.com>, <buybarefootdream.com>, <barefootdreamsale.com>, <barefootdreamshop.com> domain names are registered with Alibaba Cloud Computing (Beijing) Co., Ltd. and that Respondent is the current registrant of the names. Alibaba Cloud Computing (Beijing) Co., Ltd. has verified that Respondent is bound by the Alibaba Cloud Computing (Beijing) Co., Ltd. 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 25, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 15, 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@luckinroom.com, postmaster@buybarefootdream.com, postmaster@barefootdreamsale.com, postmaster@barefootdreamshop.com. Also on November 25, 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 December 21, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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.
PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDINGS
The concerned Registrar has indicated that the language of the Registration Agreement for the disputed domain names is Chinese. However, Complainant has requested that the proceedings be conducted in English because Respondent appears to be proficient in such language. Under UDRP Rule 11(a) the Panel has the discretion to determine that the proceedings may be conducted in a language other than that used in the Registration Agreement, taking into consideration the particular circumstances of the case. The Panel notes that the disputed domain names are composed of words that exist in the English language and the resolving websites contain text that is exclusively in English and appear to be directed to English-speaking consumers. See FilmNet Inc. v. Onetz, FA 96196 (Forum Feb. 12, 2001) (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English). Furthermore, Respondent has failed to participate in these proceedings. Under these circumstances, and in the absence of any objection by Respondent, the Panel determines that it will not prejudice the parties for these proceedings to be conducted in the English language.
A. Complainant
Complainant, Barefoot Dreams Inc., is in the business of selling high-end luxury clothing, bedding, accessories, and household goods. Complainant’s goods are sold through high end department stores, through its own brick and mortar retail stores, the home shopping network QVC and most notably, through its own website <barefootdreams.com>. Complainant has rights in the trademark BAREFOOT DREAMS based upon its use in commerce since 1994, and its registration of the mark with the United States Patent and Trademark Office (“USPTO”), the European Union Intellectual Property Office (“EUIPO”), and the Trademark Office of China, the earliest of which is dated 1999. Respondent’s <buybarefootdream.com>, <barefootdreamsale.com>, and <barefootdreamshop.com> domain names, registered between October 29, 2020 and November 29, 2020, are confusingly similar to Complainant’s BAREFOOT DREAMS mark because they incorporate the mark in its entirety, merely adding the non-distinctive terms “buy,” “sale,” and “shop,” as well as the “.com” generic top-level domain (“gTLD”). The <luckinroom.com> domain name does not incorporate the Complainant’s trademark however it does automatically redirect users to a website at the <barefootdreamsale.com> address.
Respondent does not have rights or legitimate interests in the <luckinroom.com>, <buybarefootdream.com>, <barefootdreamsale.com>, and <barefootdreamshop.com> domain names because Respondent is not commonly known by the disputed domain names and is not licensed or authorized to use the BAREFOOT DREAMS mark. Additionally, Respondent does not use the disputed domain names for any bona fide offering of goods or services or nor does it make a legitimate noncommercial or fair use thereof. Instead, Respondent uses the disputed domain names to pass itself off as Complainant and sell counterfeit or unauthorized goods.
Respondent registered and uses the <luckinroom.com>, <buybarefootdream.com>, <barefootdreamsale.com>, and <barefootdreamshop.com> domain names in bad faith. Respondent uses the disputed domain names for the sale of unauthorized goods under Complainant’s mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
With respect to the <buybarefootdream.com>, <barefootdreamsale.com>, and <barefootdreamshop.com> domain names:
(1) each of the domain names registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain names; and
(3) each of the disputed domain names was registered and is being used by Respondent in bad faith.
With respect to the <luckinroom.com> domain name:
(1) The domain name is not confusingly similar to a trademark in which Complainant has rights; and
(2) Complainant has used the Policy in bad faith in an attempt to deprive Respondent of the domain name and has engaged in Reverse Domain Name Hijacking.
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 and submissions 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 and supported 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”).
Complainant asserts rights in the BAREFOOT DREAMS mark based upon its registration with the USPTO, the EUIPO, and the Trademark Office of China. Registration of a mark with such national or regional trademark authorities is sufficient to establish rights in the mark per Policy ¶ 4(a)(i). See Margaritaville Enterprises, LLC v. Neil Wein, FA 1916531 (Forum Nov. 9, 2020) (“It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights”). Since Complainant provides copies of its various registration certificates[i] for the BAREFOOT DREAMS mark the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <buybarefootdream.com>, <barefootdreamsale.com>, and <barefootdreamshop.com> domain names are confusingly similar to Complainant’s BAREFOOT DREAMS mark because they incorporate the mark in its entirety, merely adding the non-distinctive terms “buy,” “sale,” and “shop,” as well as the “.com” gTLD. Addition of generic or descriptive terms and a gTLD is generally insufficient to overcome confusing similarity between a domain name and a mark under Policy ¶ 4(a)(i). See MTD Products Inc v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”). Thus, the Panel finds that the <buybarefootdream.com>, <barefootdreamsale.com>, and <barefootdreamshop.com> domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
However, with respect to the <luckinroom.com> domain name, Complainant specifically states that this “domain name does not incorporate the Complainant’s trademark…” It goes on to assert that “the domain name resolves to the other domain names referenced in the complaint” but this is not relevant to the Policy ¶ 4(a)(i) analysis which requires a showing that the disputed domain name “is identical or confusingly similar to a trademark or service mark in which the complainant has rights” (emphasis added). Complainant does not claim any rights in a trademark that is confusingly similar to the <luckinroom.com> domain name and so its complaint against the same cannot pass the initial threshold requirement of Policy ¶ 4(a)(i). As such, the Panel declines to analyze the other two elements of the Policy with respect to the <luckinroom.com> domain name. See Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum Apr. 17, 2017) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary).
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). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
Complainant argues that Respondent does not have rights or legitimate interests in the <buybarefootdream.com>, <barefootdreamsale.com>, and <barefootdreamshop.com> domain names because Respondent is not commonly known by the disputed domain names and is not licensed or authorized to use the BAREFOOT DREAMS mark. In considering this issue, WHOIS information can be used to show that a respondent is or is not commonly known by a domain name under Policy ¶ 4(a)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”) Further, lack of authorization to use a mark may also indicate that a respondent is not commonly known by a disputed domain name. See SPTC, Inc. and Sotheby’s v. Tony Yeh shiun, FA 1810835 (Forum Nov. 13, 2018) (finding no rights or legitimate interests in the <sothebys.email> domain name where the WHOIS identified Respondent as “Tony Yeh shiun,” Complainant never authorized or permitted Respondent to use the SOTHEBY’S mark, and Respondent failed to submit a response.) Here, the WHOIS information of record names the registrant of the disputed domain names as “Yao Ge” and nothing in the record suggests that Respondent is known otherwise or that it is authorized to use the BAREFOOT DREAMS mark. Thus, the Panel finds no evidence that Respondent is commonly known by the domain names under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent does not use the <buybarefootdream.com>, <barefootdreamsale.com>, and <barefootdreamshop.com> domain names in connection with any bona fide offering of goods or services and that it does not make a legitimate noncommercial or fair use thereof. Instead, Complainant asserts that Respondent uses the domain names to pass itself off as Complainant and sell products that are counterfeit or at least unauthorized. Use of a disputed domain name to sell counterfeit or unauthorized versions of a complainant’s products is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii). See eLuxury.com Inc. v. WangJunJie, FA 1075554 (Forum Nov. 30, 2007) (concluding that the sale of counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name); see also Florists’ Transworld Delivery v. Malek, FA 676433 (Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name). Complainant provides screenshots of Respondent’s webpages noting that Respondent duplicates Complainant’s product photographs, descriptions, and marks, and asserts that this is an attempt to sell “unauthorized counterfeit goods” and pass them off as Complainant’s goods. The Panel also notes that Respondent’s websites list two prices for most items, a higher one with a line drawn through it and a lower one presumably reflecting the price at which the item is offered for sale by Respondent. Nowhere on Respondent’s website does there appear any disclaimer or other notice indicating the lack of relationship to Complainant. All of these elements, together, support the reasonable assumption that Respondent is seeking to impersonate Complainant and offer goods that are either counterfeit or at least of questionable provenance. Respondent has filed no Response nor made any other submission and so it does not rebut Complainant’s prima facie case. Therefore, upon a preponderance of the available evidence, the Panel finds that Respondent does not use the disputed domain names in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) and does not make a legitimate noncommercial or fair use thereof under Policy ¶ 4(c)(iii).
Although not addressed in the Complaint, a foundational question under ¶ 4(a)(iii) is whether or not Respondent had knowledge of Complainant’s rights in its BAREFOOT DREAMS mark at the time it registered the disputed domain names. Some attribution of knowledge of a complainant’s trademark, whether actual, constructive, or based upon a conclusion that a respondent should have known of the mark, is inherently prerequisite to a finding of bad faith under the Policy. See Domain Name Arbitration, 4.02-C (Gerald M. Levine, Legal Corner Press, 2nd ed. 2019) (“Knowledge and Targeting Are Prerequisites to Finding Bad Faith Registration”); USA Video Interactive Corporation v. B.G. Enterprises, D2000-1052 (WIPO Dec. 13, 2000) (claim denied where “Respondent registered and used the domain name without knowledge of Complainant for a bona fide commercial purpose.”) While Complainant submits copies of its registration certificates for the BAREFOOT DREAMS mark, such evidence, alone, typically does not support the conclusion that a domain name registrant actually knew of the mark at the time a disputed domain name was registered. Further, constructive notice is most often disfavored by the UDRP and, in any event, Respondent does not appear to be subject to a jurisdiction in which such legal theory is applied. UBS AG v. Randy Allotey, FA 1812533 (Forum Nov. 17, 2018) ("Arguments of bad faith based on constructive notice do not usually succeed, as UDRP decisions generally decline to find bad faith as a result of constructive knowledge."). Furthermore, Complainant submits very little evidence regarding the actual use of its BAREFOOT DREAMS mark and no evidence regarding the mark’s scope or reputation. The few submitted screenshots of Complainant’s own <barefootdreams.com> website do not indicate the end result of its marketing efforts or that its mark has gained any reputation with the public. However, Complainant does support its case with evidence that Respondent has, within a short span of time, registered a series of three domain names based on its BAREFOOT DREAMS mark for which Complainant has prior rights and that each of these domain names resolve to a website that displays images of, and appears to sell versions of Complainant’s products. Taken together, this indicates that Respondent had actual knowledge of, and was specifically targeting Complainant’s trademark at the time that it registered the disputed domain names.
Next, Complainant asserts that Respondent registered and uses the <buybarefootdream.com>, <barefootdreamsale.com>, and <barefootdreamshop.com> domain names in bad faith. Specifically, it claims that Respondent uses the disputed domain names for the sale of counterfeit or otherwise unauthorized goods under Complainant’s mark. Use of a confusingly similar domain name to compete with a complainant or sell unauthorized goods under the complainant’s marks may be evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain based upon confusion under Policy ¶ 4(b)(iv). See Ontel Products Corporation v. waweru njoroge, FA1762229 (Forum Dec. 22, 2017) (“Respondent’s primary offering seem to be counterfeits of Complainant’s toy car products. Respondent’s use of the <magictrackscars.com> domain name is thus disruptive to Complainant’s business per Policy ¶ 4(b)(iii)”); see also Fendi S.r.l. v. Super Privacy Service LTD c/o Dynadot / Owen Bour, D2020-2801 (WIPO Dec. 16, 2020) (“it is at least more likely than not that the handbags offered in fact are counterfeit products since the unrealistic low prices economically exclude the possibility that those products were purchased directly from Complainant or from an official affiliated producers [sic]. Such circumstances are evidence of registration and making use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.”). Though not specifically citing Policy ¶ 4(b), Complainant states that “[t]he Respondent has used the Complainant’s trademark to attract consumers to the sale of unauthorized, counterfeit goods bearing the Complainant’s trademarks.” As previously noted, Complainant provides screenshots of Respondent’s resolving webpages, arguing that Respondent duplicates Complainant’s product photographs, descriptions, and marks in an attempt to sell counterfeit or unauthorized goods and pass them off as Complainant’s goods. The Panel has further noted that the supposedly reduced prices reflected on Respondent’s websites also support the likelihood that the offered goods are counterfeit or otherwise unauthorized. Respondent has not participated in this case and so has not offered an alternate explanation for its actions or otherwise rebutted Complainant’s reasonable assertions. Upon the evidence before it, the Panel finds that the disputed domain names were registered and used in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Although Respondent has not appeared in this case, the Panel finds, sua sponte, that Complainant has acted in bad faith and is engaging in reverse domain name hijacking (“RDNH”) by initiating this dispute against the <luckinroom.com> domain name. Paragraph 1 of the Rules defines RDNH as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”. It appears that Complainant is attempting to deprive Respondent, the rightful, registered holder of the <luckinroom.com> domain name, of its rights to use the same. Complainant asserts no trademark rights relevant to this domain name and does not claim that it is confusingly similar to any such mark.
Where a complaint is filed under circumstances in which the complainant knew or should have known that it has no chance of success, Panels have held that RDNH has occurred. See Karma International, LLC v. David Malaxos, FA 1822198 (Forum Feb. 15, 2019) (RDNH found where “[t]he Panel has found no evidence of trademark rights” and “Complainant knew or should have known that it had no colorable claim to trademark rights in the term KARMA”); Walker Edison Furniture Company LLC v. Manor Park (Guernsey) Ltd, FA 1784458 (Forum June 15, 2018) (reverse domain name hijacking found where “Complainant must have been aware, at the time the Complainant was filed, that there was no valid trademark usage by Complainant predating Respondent’s May 18, 2000 registration of the domain name.”) Further, especially where a “Complainant appears to be a substantial enterprise and is represented by competent legal counsel” it is not expected to “initiate[] a proceeding that is quite clearly devoid of merit.” Sustainable Forestry Management Limited v. SFM.com and James M. van Johns "Infa dot Net" Web Services, D2002-0535 (WIPO Sep. 13, 2002).
Here, the Complaint states that “[t]he fourth domain name [i.e., <luckinroom.com>] does not incorporate the Complainant’s trademark…” and there is no claim of rights in any trademark to which this disputed domain name may be confusingly similar. As Policy ¶ 4(a)(i) requires a showing that the disputed domain name “is identical or confusingly similar to a trademark or service mark in which the complainant has rights” (emphasis added), Complainant or its counsel either knew or should have known that it would be impossible, under any argument around the present facts, to satisfy the plan language of this sub-paragraph and, thus, that it had no possibility of success against the <luckinroom.com> domain name notwithstanding the fact that it redirects users to another domain name that does violate the Policy.
For the above-stated reasons, the Panel finds that Complainant has engaged in reverse domain name hijacking with respect to the <luckinroom.com> domain name.
Having established all three elements required under the ICANN Policy with respect to the <buybarefootdream.com>, <barefootdreamsale.com>, and <barefootdreamshop.com> domain names, the Panel concludes that relief shall be GRANTED. Having failed to establish the first element of the ICANN Policy with respect to the <luckinroom.com> domain name, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <buybarefootdream.com>, <barefootdreamsale.com>, and <barefootdreamshop.com> domain names be TRANSFERRED from Respondent to Complainant and that the <luckinroom.com> domain name REMAIN WITH the Respondent.
Steven M. Levy, Esq., Panelist
Dated: December 23, 2020
[i] The Panel notes that, some of the submitted USPTO trademark registration certificates list the owner as “Annette Seifert” or “Annette Seifert Cook” and no evidence of an assignment of these registrations to Complainant or any relationship between these named person(s) and/or entities is provided. As such, these will not be considered. However, as other submitted registration certificates list the owner as “Barefoot Dreams, Inc.” the Panel finds that Complainant has met its threshold burden of proving that it owns trademark rights in the BAREFOOT DREAMS mark under Policy ¶ 4(a)(i).
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