Lady of Leisure Holdings Limited v. Client Care / Web Commerce Communications Limited
Claim Number: FA2204001992406
Complainant is Lady of Leisure Holdings Limited (“Complainant”), represented by Malaina J Weldy of Warner Norcross + Judd LLP, Michigan, USA. Respondent is Client Care / Web Commerce Communications Limited (“Respondent”), Malaysia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <sweatybettyportugal.com>, <sweatybettyoutlet.com>, <sweatybettysaleuk.com>, <sweatybettysingapore.com>, <sweatybettystores.com>, <sweatybettysale.com>, <sweatybettyfrance.com>, <sweatybetty-nz.com>, <sweatybettyblackfriday.com>, <sweatybettycanada.com>, <sweatybetty-australia.com>, <sweatybettynetherlands.com>, <sweatybettyitalia.com>, <sweatybettynorge.com>, <sweatybettyireland.com>, and <sweatybettydeutschland.com> registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED.
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 April 14, 2022; the Forum received payment on April 14, 2022.
On April 15, 2022, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED confirmed by e-mail to the Forum that the <sweatybettyportugal.com>, <sweatybettyoutlet.com>, <sweatybettysaleuk.com>, <sweatybettysingapore.com>, <sweatybettystores.com>, <sweatybettysale.com>, <sweatybettyfrance.com>, <sweatybetty-nz.com>, <sweatybettyblackfriday.com>, <sweatybettycanada.com>, <sweatybetty-australia.com>, <sweatybettynetherlands.com>, <sweatybettyitalia.com>, <sweatybettynorge.com>, <sweatybettyireland.com>, and <sweatybettydeutschland.com> domain names are registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED and that Respondent is the current registrant of the names. ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED has verified that Respondent is bound by the ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED 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 April 18, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 9, 2022 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@sweatybettyportugal.com, postmaster@sweatybettyoutlet.com, postmaster@sweatybettysaleuk.com, postmaster@sweatybettysingapore.com, postmaster@sweatybettystores.com, postmaster@sweatybettysale.com, postmaster@sweatybettyfrance.com, postmaster@sweatybetty-nz.com, postmaster@sweatybettyblackfriday.com, postmaster@sweatybettycanada.com, postmaster@sweatybetty-australia.com, postmaster@sweatybettynetherlands.com, postmaster@sweatybettyitalia.com, postmaster@sweatybettynorge.com, postmaster@sweatybettyireland.com, postmaster@sweatybettydeutschland.com. Also on April 18, 2022, 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 May 17, 2022, 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.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
Complainant alleges that the entities which control the domain names at issue are effectively controlled by the same person and/or entity. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
The domain names in the present dispute are similarly constructed as each domain name contains Complainant’s SWEATY BETTY trademark, is followed by a geographical term, a hyphen, a term suggestive of shopping, and/or a combination thereof. Each domain name concludes with the “.com” top-level domain name. Further, the domain names were each registered using Alibaba as the registrar, were registered on March 13, 2022 or March 14, 2022, and are assigned similar IP addresses. The relevant contact information for each domain name is identical. Additionally, at one time or another each of the domain names resolved to the same website. Therefore, the at-issue domain names clearly appear to be related to, or controlled by, the same person, persons, or entity. Notably, Complainant’s contention that the domain names’ registrants be treated as a single entity in the instant proceeding is unopposed.
Based on the foregoing, the Panel will treat the domain names’ registrants as a single entity for the purposes of this proceeding. The registrants will collectively be referred to as Respondent.
A. Complainant
Complainant contends as follows:
Complainant produces and sells active wear.
Complainant has rights in the SWEATY BETTY trademark through its registration with the USPTO.
Respondent’s <sweatybettyportugal.com>, <sweatybettyoutlet.com>, <sweatybettysaleuk.com>, <sweatybettysingapore.com>, <sweatybettystores.com>, <sweatybettysale.com>, <sweatybettyfrance.com>, <sweatybetty-nz.com>, <sweatybettyblackfriday.com>, <sweatybettycanada.com>, <sweatybetty-australia.com>, <sweatybettynetherlands.com>, <sweatybettyitalia.com>, <sweatybettynorge.com>, <sweatybettyireland.com>, and <sweatybettydeutschland.com> domain names are identical or confusingly similar to Complainant’s mark as they incorporate the mark in its entirety and add some combination of a generic word, geographic term, hyphen, and a generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <sweatybettyportugal.com>, <sweatybettyoutlet.com>, <sweatybettysaleuk.com>, <sweatybettysingapore.com>, <sweatybettystores.com>, <sweatybettysale.com>, <sweatybettyfrance.com>, <sweatybetty-nz.com>, <sweatybettyblackfriday.com>, <sweatybettycanada.com>, <sweatybetty-australia.com>, <sweatybettynetherlands.com>, <sweatybettyitalia.com>, <sweatybettynorge.com>, <sweatybettyireland.com>, and <sweatybettydeutschland.com> domain names. Respondent is not commonly known by the at-issue domain names, nor has Complainant authorized or licensed Respondent to use its SWEATY BETTY mark in the at-issue domain names. Respondent does not use the at-issue domain names for any bona fide offerings of goods or services, nor any legitimate noncommercial or fair uses, but instead uses the domain names to sell goods competing with Complainant. Furthermore, Respondent is not making active use of six of the at-issue domain names.
Respondent registered and uses the <sweatybettyportugal.com>, <sweatybettyoutlet.com>, <sweatybettysaleuk.com>, <sweatybettysingapore.com>, <sweatybettystores.com>, <sweatybettysale.com>, <sweatybettyfrance.com>, <sweatybetty-nz.com>, <sweatybettyblackfriday.com>, <sweatybettycanada.com>, <sweatybetty-australia.com>, <sweatybettynetherlands.com>, <sweatybettyitalia.com>, <sweatybettynorge.com>, <sweatybettyireland.com>, and <sweatybettydeutschland.com> domain names in bad faith. Respondent is attempting to sell apparel that competes with Complainant’s business. In addition, Respondent is attempting to pass off as Complainant through its use of geographic terms, possibly creating the false impression that it is a distributor of Complainant’s product. Furthermore, Respondent is not actively using six of the at-issue domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the SWEATY BETTY trademark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademarks in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the SWEATY BETTY trademarks.
Respondent’s domain name’s each addressed or addresses a website offering goods that compete with Complainant’s offering.
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 names are each confusingly similar to a trademark in which Complainant has rights.
Complainant shows that it has a USPTO registration for SWEATY BETTY. A national trademark registration is sufficient to demonstrate Complainant’s rights in a mark under Policy ¶ 4(a)(i). 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).”).
Respondent’s <sweatybettyportugal.com>, <sweatybettyoutlet.com>, <sweatybettysaleuk.com>, <sweatybettysingapore.com>, <sweatybettystores.com>, <sweatybettysale.com>, <sweatybettyfrance.com>, <sweatybetty-nz.com>, <sweatybettyblackfriday.com>, <sweatybettycanada.com>, <sweatybetty-australia.com>, <sweatybettynetherlands.com>, <sweatybettyitalia.com>, <sweatybettynorge.com>, <sweatybettyireland.com>, and <sweatybettydeutschland.com> domain names each contain Complainant’s SWEATY BETTY trademark, an irrelevant hyphen, and one or more generic terms and/or terms suggestive of Complainant’s SWEATY BETTY apparel business. Each domain name concludes with the “.com” top-level domain name. The differences between any at-issue domain name and Complainant’s trademark are insufficient to distinguish any of the domain names from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <sweatybettyportugal.com>, <sweatybettyoutlet.com>, <sweatybettysaleuk.com>, <sweatybettysingapore.com>, <sweatybettystores.com>, <sweatybettysale.com>, <sweatybettyfrance.com>, <sweatybetty-nz.com>, <sweatybettyblackfriday.com>, <sweatybettycanada.com>, <sweatybetty-australia.com>, <sweatybettynetherlands.com>, <sweatybettyitalia.com>, <sweatybettynorge.com>, <sweatybettyireland.com>, and <sweatybettydeutschland.com> domain names are each confusingly similar to a mark in which Complainant has rights. See 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).”); see also Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Svensson Viljae, FA 1784650 (Forum June 1, 2018) (finding confusing similarity where “[t]he disputed domain name <skechers-outlet.com> adds a hyphen and the generic term ‘outlet’ to Complainant's registered SKECHERS mark, and appends the ‘.com’ top-level domain.”).
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).
Here, Respondent lacks both rights and legitimate interests in respect of each 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 the at‑issue domain name. See Charter Communications Holding Company, LLC v. Taha Shaikh / Tskdesigners, FA 1814475 (Forum Nov. 25, 2018) (finding no rights or legitimate interests in <spectrumfeature.com> because complainant never gave respondent permission to use the mark in any manner and “Panels may use these assertions as evidence that no rights or legitimate interests exist in a disputed domain name.”).
WHOIS information for the at-issue domain names identifies the nominal registrants/respondents as “Web Commerce Communications Limited” and the record before the Panel contains no evidence that tends to prove that any of the nominal registrants is commonly known by any at-issue domain name. The Panel therefore concludes that Respondent is not commonly known by <sweatybettyportugal.com>, <sweatybettyoutlet.com>, <sweatybettysaleuk.com>, <sweatybettysingapore.com>, <sweatybettystores.com>, <sweatybettysale.com>, <sweatybettyfrance.com>, <sweatybetty-nz.com>, <sweatybettyblackfriday.com>, <sweatybettycanada.com>, <sweatybetty-australia.com>, <sweatybettynetherlands.com>, <sweatybettyitalia.com>, <sweatybettynorge.com>, <sweatybettyireland.com>, or <sweatybettydeutschland.com> for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent’s <sweatybettyportugal.com>, <sweatybettyoutlet.com>, <sweatybettysaleuk.com>, <sweatybettysingapore.com>, <sweatybettystores.com>, <sweatybettysale.com>, <sweatybettyfrance.com>, <sweatybetty-nz.com>, <sweatybettyblackfriday.com>, <sweatybettycanada.com>, <sweatybetty-australia.com>, <sweatybettynetherlands.com>, <sweatybettyitalia.com>, <sweatybettynorge.com>, <sweatybettyireland.com>, and <sweatybettydeutschland.com> domain names have each at one time addressed a website displaying Complainant’s mark along with items for sale relating to complainant’s business. The common website addressed by the domain names competes with Complainant. Respondent’s use of the at-issue domain names to attempt pass itself off as Complainant and to offer goods competing with those products offered by Complainant constitutes neither a bona fide offering of goods or services nor legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (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, Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”).
Given the forgoing and absent any contrary evidence from Respondent, Complainant satisfies its initial burden and shows Respondent’s lack of rights and legitimate interests in the at-issue domain names under Policy ¶ 4(a)(ii).
As discussed below without limitation, circumstances are present from which the Panel concludes that Respondent registered and used the at-issue domain names in bad faith pursuant to Policy ¶ 4(a)(iii).
As mentioned above regarding rights and legitimate interests, Respondent has used each at-issue domain name to pass itself off as Complainant and address a website offering products that compete with Complainant’s offering. Respondent’s use of the domain names in this manner demonstrates 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.”); see also, 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).”). While several of the at-issue domain names are being passively held by Respondent, their current use or lack thereof does not diminish the effect of their prior use to pose as, and compete with, Complainant. Even if it did, Respondent’s passive holding is in itself an indication of Respondent’s bad faith regarding such domain names. See Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (“Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sweatybettyportugal.com>, <sweatybettyoutlet.com>, <sweatybettysaleuk.com>, <sweatybettysingapore.com>, <sweatybettystores.com>, <sweatybettysale.com>, <sweatybettyfrance.com>, <sweatybetty-nz.com>, <sweatybettyblackfriday.com>, <sweatybettycanada.com>, <sweatybetty-australia.com>, <sweatybettynetherlands.com>, <sweatybettyitalia.com>, <sweatybettynorge.com>, <sweatybettyireland.com>, and <sweatybettydeutschland.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: May 18, 2022
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