Eminent Inc. v. Liu Chan Yuan
Claim Number: FA2110001967583
Complainant is Eminent Inc. (“Complainant”), represented by Jessica Sganga of Knobbe Martens Olson & Bear LLP, California, USA. Respondent is Liu Chan Yuan (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <revolvefactoryoutlet.com>, registered with Key-Systems GmbH.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 4, 2021; the Forum received payment on October 4, 2021.
On October 7, 2021, Key-Systems GmbH confirmed by e-mail to the Forum that the <revolvefactoryoutlet.com> domain name is registered with Key-Systems GmbH and that Respondent is the current registrant of the name. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH 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 October 12, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 1, 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@revolvefactoryoutlet.com. Also on October 12, 2021, 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 5, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant manages an online retailer, offering a variety of apparel, footwear, accessories and beauty goods. Complainant owns rights in the REVOLVE mark through its registration of the mark with multiple trademark agencies around the world, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,058,770, registered on October 11, 2016).
2. Respondent’s <revolvefactoryoutlet.com>[i] domain name is identical or confusingly similar to Complainant’s REVOLVE mark, as it incorporates the mark in its entirety, only adding the descriptive words “factory” and “outlet”, as well as the “.com” generic top-level domain (“gTLD”).
3. Respondent has no rights or legitimate interests in the <revolvefactoryoutlet.com> domain name. Complainant has not authorized or licensed Respondent to use the REVOLVE mark, nor is Respondent commonly known by the domain name.
4. Further, Respondent is not using the domain name in connection with a bona fide offering of goods and services or legitimate noncommercial or fair use as the resolving website attempts to pass off as Complainant.
5. Additionally, Respondent tries to divert and confuse users from Complainant’s website.
6. Respondent registered and uses the <revolvefactoryoutlet.com> domain name in bad faith. Respondent uses the domain name to attract users for commercial gain by imitating Complainant’s website and services, which further disrupts Complainant’s business.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the REVOLVE mark. Respondent’s domain name is confusingly similar to Complainant’s REVOLVE mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <revolvefactoryoutlet.com> domain name and that Respondent registered and uses the domain name 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 asserts rights in the REVOLVE mark through its registration of the mark with multiple trademark agencies around the world, including the USPTO (e.g., Reg. No. 5,058,770, registered on October 11, 2016). Registering a mark with multiple trademark agencies, including the USPTO, is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sept. 4, 2018) (“Complainant has rights in the GMAIL mark based upon its registration of the mark with numerous trademark agencies around the world.”); see also Bloomberg Finance L.P. v. Jimmy Yau, FA 1764034 (Forum Jan. 25, 2018) (“The Panel finds that complainant has rights in BLOOMBERG mark under Policy ¶ 4(a)(i) based upon its registration with multiple trademark agencies, including the USPTO.”). Therefore, Complainant has sufficiently established rights in the mark per Policy ¶ 4(a)(i).
Complainant argues Respondent’s <revolvefactoryoutlet.com> domain name is identical or confusingly similar to Complainant’s REVOLVE mark, as it incorporates the mark in its entirety, only adding the descriptive terms “factory” and “outlet” and the “.com” gTLD. Simply adding descriptive terms and a gTLD is not sufficient to differentiate a domain name from a complainant’s mark. See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”); see also Empowered Medical Solutions, Inc. d/b/a QRS-Direct and QRS Magnovit AG v. NULL NULL / QUANTRON RESONANCE SYSTEMS / JIM ANDERSON / HTR / unknown HTR / HTR, FA 1784937 (Forum June 8, 2018) (“Adding or removing descriptive terms or a gTLD is insufficient to differentiate a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i).”). The Panel holds that the <revolvefactoryoutlet.com> domain name is confusingly similar to Complainant’s REVOLVE mark.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <revolvefactoryoutlet.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.). The Panel holds that Complainant has made a prima facie case.
Complainant contends Respondent lacks rights and legitimate interests in the <revolveoutletfactory.com> domain name because Respondent is not authorized to use the REVOLVE mark, nor is Respondent commonly known by the domain name. To determine whether a respondent is commonly known by a domain name, the Panel may reference WHOIS information. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Furthermore, lack of authorization to use a mark serves as further indication that a respondent is not commonly known by a domain name. See Radio Flyer Inc. v. er nong wu, FA 2011001919893 (Forum Dec. 16, 2020) (“Here, the WHOIS information lists “er nong wu” as the registrant and no information suggests Complainant has authorized Respondent to use the RADIO FLYER mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”). Here, the WHOIS information shows Respondent is known as “Liu Chan Yuan” and there is no evidence to suggest Complainant authorized Respondent to use the REVOLVE mark in any way. Thus, the Panel holds that Respondent is not commonly known by the <revolvefactoryoutlet.com> domain name under Policy ¶ 4(c)(ii).
Complainant also argues Respondent does not use the <revolveoutletfactory.com> domain name for a bona fide offering of goods and services or legitimate noncommercial or fair use because the resolving website attempts to pass off as Complainant. Using a domain name incorporating a complainant’s mark to mimic a complainant’s website and offer similar goods or services does not constitute a bona fide offering of goods and services or legitimate noncommercial or fair use. See ShipChain, Inc. v. 谢东东 / 谢东东, FA 1785189 (Forum June 21, 2018) (“The resolving webpages between Complainant’s and Respondent’s websites are virtually the same. Respondent’s use of the disputed domain name does not confer rights and legitimate interests under Policy ¶¶4(c)(i) and (iii).”); see also Dell Inc. v. Devesh Tyagi, FA 1785301 (Forum June 2, 2018) (“Respondent replicates Complainant’s website and displays Complainant’s products. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (iii).”). In the present case, Complainant provides a screenshot of the resolving website, as well as Complainant’s own website, to show the similarities. Because the Panel agrees the resolving website mimics Complainant’s website, the Panel holds that Respondent does not use the <revolveoutletfactory.com> domain name for a bona fide offering of goods and services or legitimate noncommercial or fair use.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant first asserts Respondent registered and uses the <revolveoutletfactory.com> domain name in bad faith because the resolving website offers similar and competing goods to those of Complainant, which disrupts Complainant’s business. Using a domain name incorporating the mark of a complainant to disrupt a complainant’s business indicates bad faith under Policy ¶ 4(b)(iii). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum Jan. 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)); see also ZIH Corp. v. ou yang lin q, FA1761403 (Forum Dec. 29, 2017) (Finding bad faith where Respondent used the infringing domain name to disrupt Complainant’s business by diverting Internet users from Complainant’s website to Respondent’s website where it offered competing printer products). Because the screenshot provided of the <revolveoutletfactory.com> domain name resolving website shows competing goods to that of the Complainant, the Panel concludes Respondent acted in bad faith.
Complainant also contends Respondent acted in bad faith by attempting to pass off as Complainant, presumably for Respondent’s financial gain. Passing off as a complainant, or as if affiliated with the complainant, for the respondent’s commercial gain can evidence bad faith pursuant to Policy ¶ 4(b)(iv). See 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); see also 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 record supports Complainant’s contention that Respondent attempts to pass off as Complainant, and therefore the Panel holds that Respondent has acted in bad faith.
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 <revolvefactoryoutlet.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: November 12, 2021
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