Etsy, Inc. v. AO Ling
Claim Number: FA2109001964602
Complainant is Etsy, Inc. (“Complainant”), represented by David A.W. Wong of Barnes & Thornburg LLP, Indiana, USA. Respondent is AO Ling (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <etsy-gifts.com>, <etsy-metalart.com>, <etsy-manual.com>, <etsy-decoration.com>, <etsy-diy.com>, <etsy-fashion.com>, <etsy-homedecor.com>, <etsy-crafts.com>, <etsy-life.com>, and <etsydeals.com> (collectively “Domain Names”), 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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 21, 2021; the Forum received payment on September 21, 2021.
On September 22, 2021, Alibaba Cloud Computing (Beijing) Co., Ltd. confirmed by e-mail to the Forum that the <etsy-gifts.com>, <etsy-metalart.com>, <etsy-manual.com>, <etsy-decoration.com>, <etsy-diy.com>, <etsy-fashion.com>, <etsy-homedecor.com>, <etsy-crafts.com>, <etsy-life.com>, and <etsydeals.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 September 24, 2021, the Forum served the Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of October 14, 2021 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@etsy-gifts.com, postmaster@etsy-metalart.com, postmaster@etsy-manual.com, postmaster@etsy-decoration.com, postmaster@etsy-diy.com, postmaster@etsy-fashion.com, postmaster@etsy-homedecor.com, postmaster@etsy-crafts.com, postmaster@etsy-life.com, postmaster@etsydeals.com. Also on September 24, 2021, the Chinese and English language 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 October 19, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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.
The language of the Registration Agreement for the Domain Names is Chinese. The Complaint has been provided in English.
It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would demonstrate familiarity with the English language, filing of a trademark registration with an entity which shows an understanding of the English language, and any evidence (or lack thereof) exhibiting Respondent’s understanding of the language requested by Complainant. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). Further, the Panel may weigh the relative time and expense in enforcing the Vietnamese language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”) and Zappos.com, Inc. v. Zufu aka Huahaotrade, Case No. D2008-1191 (WIPO October 15, 2008) (holding that proceedings could be conducted in English even though the registration agreement was in Chinese where “the disputed domain resolves to a website [that] is exclusively in English, from which can be reasonably presumed that the Respondent has the ability to communicate in English in order to conduct his business over the website in English”)
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. The Domain Names consist of the Complainant’s ETSY mark and an English word. Furthermore each of the websites to which the Domain Names resolve (the “Respondent’s Websites”) are in the English language. After considering the circumstances of the present case, the Panel decides that the proceeding should continue in English.
A. Complainant
Complainant is the world leader in providing an outlet for buying and selling arts, crafts, and handmade and vintage goods. Complainant has rights in the ETSY mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,179,782, registered Dec. 5, 2006). Respondent’s <etsy-gifts.com>, <etsy-metalart.com>, <etsy-manual.com>, <etsy-decoration.com>, <etsy-diy.com>, <etsy-fashion.com>, <etsy-homedecor.com>, <etsy-crafts.com>, <etsy-life.com>, and <etsydeals.com> domain names are confusingly similar to Complainant’s ETSY mark. Respondent incorporates the mark in its entirety and adds descriptive terms like “crafts,” “gifts,” or “fashion,” along with the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <etsy-gifts.com>, <etsy-metalart.com>, <etsy-manual.com>, <etsy-decoration.com>, <etsy-diy.com>, <etsy-fashion.com>, <etsy-homedecor.com>, <etsy-crafts.com>, <etsy-life.com>, and <etsydeals.com> domain names as Respondent is not commonly known by the Domain Names nor did Complainant authorize Respondent to use the ETSY mark in any way. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use of the Domain Names. Instead, Respondent attempts to confuse internet users by displaying products and services related to Complainant’s ETSY mark at the Respondent’s Websites.
Respondent registered and used the <etsy-gifts.com>, <etsy-metalart.com>, <etsy-manual.com>, <etsy-decoration.com>, <etsy-diy.com>, <etsy-fashion.com>, <etsy-homedecor.com>, <etsy-crafts.com>, <etsy-life.com>, and <etsydeals.com> domain names in bad faith as Respondent attempts to impersonate Complainant by displaying products and services related to Complainant’s ETSY mark from the Respondent’s Websites. Given the use of the Domain Names, Respondent had actual knowledge of Complainant’s rights in the ETSY mark prior to the registration of the Domain Names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the ETSY mark. Each of the Domain Names is confusingly similar to Complainant’s ETSY mark. Complainant has established that Respondent lacks rights or legitimate interests in the Domain Names and that Respondent registered and has used the Domain Names 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 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 has rights in the ETSY mark under Policy ¶ 4(a)(i) through its registration of the mark with the USPTO (e.g. Reg. No. 3,179,782, registered Dec. 5, 2006). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
The Panel finds that each of the Domain Names is confusingly similar to the ETSY mark as they each incorporate the entire ETSY mark while adding generic terms (and a hyphen) such as “-gifts” or “-craft” and the “.com” gTLD. Such changes are insufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i) analysis. 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); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (finding top-level domains are irrelevant for purposes of Policy ¶ 4(a)(i) analysis).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Names. 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 Names 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 Names as Respondent is not commonly known by the Domain Names, nor has Complainant authorized Respondent to use the ETSY 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 information of record lists “AO Ling” as the registrants of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Names in accordance with Policy ¶ 4(c)(ii).
The Domain Names presently resolve or have, prior to the commencement of the proceedings, resolved to the Respondent’s Websites. Each of the Respondent’s Websites reproduce the ETSY Mark and offer a variety of artisanal products similar to those offered thorough the Complainant’s official website at www.etsy.com. As such each of the Respondent’s Websites passes itself off as an official website of the Complainant for the purpose of selling goods in direct competition with the gods sold by uses of the Complainant’s website. Use of a disputed domain name to resolve to a webpage that offers related products and services to a complainant is, absent any further explanation, not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii). See Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum Feb. 3, 2016) (finding that the complainant provides freelance talent services, and that the respondent competes with the 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), see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds on the balance of probabilities that, at the time of registration of the Domain Names, between (April-June 2021), Respondent had actual knowledge of Complainant’s ETSY mark since the Respondent’s Website passes itself off as an official website of the Complainant for the purpose of selling goods similar to those sold through Complainant’s website. Furthermore, there is no obvious explanation, nor has one been provided, for an entity to register 10 domain names that contain the ETSY mark and use them for websites selling goods in competition with goods sold through Complainant’s website, under the ETSY mark, other than to take advantage of Complainant’s reputation in the ETSY mark. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Names in bad faith to create confusion with Complainant’s ETSY Mark for commercial gain by using the confusingly similar Domain Names to resolve to a website offering products in direct competition with the products sold though Complainant’s website. Using a confusingly similar domain name to trade upon the goodwill of a complainant can evince bad faith under Policy ¶ 4(b)(iv). See 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).”). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant or is otherwise affiliated or associated with Complainant.”).
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 <etsy-gifts.com>, <etsy-metalart.com>, <etsy-manual.com>, <etsy-decoration.com>, <etsy-diy.com>, <etsy-fashion.com>, <etsy-homedecor.com>, <etsy-crafts.com>, <etsy-life.com>, and <etsydeals.com> domain names be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: October 20, 2021
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