Lady of Leisure Holdings Limited v. qifu Guo
Claim Number: FA2204001994386
Complainant is Lady of Leisure Holdings Limited (“Complainant”), represented by Malaina J Weldy of Warner Norcross + Judd LLP, Michigan, USA. Respondent is qifu Guo (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sweaty-betty.com>, registered with DotMedia 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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 29, 2022; the Forum received payment on April 29, 2022.
On May 10, 2022, DotMedia Limited confirmed by e-mail to the Forum that the <sweaty-betty.com> domain name is registered with DotMedia Limited and that Respondent is the current registrant of the name. DotMedia Limited has verified that Respondent is bound by the DotMedia 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 May 13, 2022, the Forum served the Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of June 2, 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@sweaty-betty.com. Also on May 13, 2022, 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 June 8, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho-Hyun Nahm, 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 PROCEEDING
The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese. Complainant has alleged that because Respondent is conversant and proficient in English, the proceeding should be conducted in English. The Panel has the discretion under UDRP Rule 11(a) it has the discretion to determine the appropriate language of the proceedings taking into consideration the particular circumstances of the administrative proceeding. 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). Complainant contends Respondent targeted a U.K. and U.S.-based company; the disputed domain name uses English characters; and Respondent’s knowledge of the English language is further demonstrated because the word BETTY and the phrase “SWEATY BETTY” has no specific meaning in the Chinese language. Further, Complainant is not conversant nor proficient in the Chinese language and would require delay and unnecessary costs to translate the document.
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 has a familiarity with the English language. After considering the circumstance of the present case, in the absence of Response and no objection to the Complainant's request for the language of proceeding, the Panel decides that the proceeding should be in English.
A. Complainant
i) Complainant produces and sells active wear. Complainant has rights in the SWEATY BETTY mark through its registration with multiple authorities such as the United States Patent and Trademark Office (“USPTO”) .The disputed domain name is identical or confusingly similar to Complainant’s mark as it incorporates the entire mark and adds a hyphen along with the “.com” generic top-level domain (“gTLD”).
ii) Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has the Complainant authorized or licensed Respondent to use its SWEATY BETTY mark. Respondent does not use the disputed domain name for any bona fide offering of goods or services nor a legitimate noncommercial or fair use, but instead uses the disputed domain name’s resolving website containing adult-oriented content.
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent diverts Internet users to its website containing adult-oriented images. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the SWEATY BETTY mark.
B. Respondent
Respondent did not submit a response in this proceeding.
1. The disputed domain name was registered on February 6, 2022.
2. Complainant has established rights in the SWEATY BETTY trademark through its registration with the United States Patent and Trademark Office (e.g., Reg. No. 3,250,398, registered June 12, 2007).
3. The disputed domain name’s resolving website displays adult-oriented photographs.
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 claims rights in the SWEATY BETTY trademark through its registration with multiple authorities such as the United States Patent and Trademark Office (“USPTO”). Complainant provides copies of its registration in the SWEATY BETTY mark with the USPTO (e.g., Reg. No. 3,250,398, registered June 12, 2007). Therefore, the Panel finds Complainant has established rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that the disputed domain name <sweaty-betty.com> is identical or confusingly similar to Complainant’s SWEATY BETTY mark. Under Policy ¶ 4(a)(i), adding a hyphen and a gTLD is insufficient in differentiating from the mark it incorporates. See ADP, LLC. v. Ella Magal, FA 1773958 (Forum Aug. 2, 2017) (“Respondent’s <workforce-now.com> domain name appropriates the dominant portion of Complainant’s ADP WORKFORCE NOW mark and adds a hyphen and the gTLD “.com.” These changes do not sufficiently distinguish the disputed domain name from the ADP WORKFORCE NOW mark.”). The disputed domain name adds a hyphen between the terms “sweaty” and “betty” of Complainant’s mark, along with the “.com” gTLD. Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
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), then the burden shifts to Respondent to show 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 is not commonly known by the disputed domain name. Under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by the disputed domain name, while a lack of evidence demonstrating otherwise may affirm a Complainant’s assertion that it never authorized or licensed Respondent to use its mark in the disputed domain name. See Bittrex, Inc. v. Operi Manaha, FA 1815225 (Forum Dec. 10, 2018) (concluding that the respondent was not commonly known by the <appbittrex.com> domain name where the WHOIS information listed Respondent as “Operi Manaha,” and nothing else in the record suggested Respondent was authorized to use the BITTREX mark.). The WHOIS information identifies Respondent as “Qifu Guo”. Further, there is no evidence to suggest that Respondent is either authorized to use or commonly known by the disputed domain name. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent is not using the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use as Respondent uses the disputed domain name’s resolving website to display adult-oriented photographs. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to display adult-oriented photographs does not constitute a bona fide offering of goods nor a legitimate noncommercial or fair use. See MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and adult-oriented material where such use is calculated to mislead consumers and to tarnish the complainant’s mark). Complainant provides a screenshot of the disputed domain name’s resolving website, which displays adult-oriented photographs. The Panel therefore finds Respondent is not using the disputed domain name for any bona fide offering of goods or services nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant argues that Respondent registered and uses the disputed domain name in bad faith by using the disputed domain name’s resolving website to divert Internet users to a site containing adult-oriented photographs. Under Policy ¶ 4(a)(iii), using a disputed domain name to divert users to a site displaying adult-oriented material is evidence of bad faith registration and use. See Molson Canada 2005 v. JEAN LUCAS / DOMCHARME GROUP, FA1412001596702 (Forum Feb. 10, 2015) (“Further, Respondent’s diversion of the domain names to adult-oriented sites is registration and use of the disputed domain names in bad faith under Policy ¶ 4(a)(iii).”). The Panel recalls Complainant’s screenshot of the disputed domain name’s resolving website, which displays adult-oriented photographs. The Panel therefore finds Respondent registered and uses the disputed domain name in bad faith under 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 <sweaty-betty.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: June 10, 2022
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