lululemon athletica canada inc. v.
Claim Number: FA2205001995586
Complainant: lululemon athletica canada inc. of Vancouver, British Columbia, Canada.
Complainant Representative:
Complainant Representative: DLA Piper LLP (US) of Washington, District of Columbia, USA.
Respondent: Redacted for Privacy / Privacy service provided by Withheld for Privacy ehf of Reykjavik, Capital Region, International, IS.
Respondent Representative: N/A
REGISTRIES and REGISTRARS
Registries: GMO Registry, Inc.
Registrars: NameCheap, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Examiner in this proceeding.
Flip Jan Claude Petillion, as Examiner.
Complainant submitted: May 9, 2022
Commencement: May 11, 2022
Default Date: May 26, 2022
Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules").
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
The Complainant, lululemon athletica canada inc., is a retailer of yoga apparel and related goods and services. The Complainant owns several trademarks for the sign LULULEMON, including the following:
- a United States word mark LULULEMON registered under No. 3,990,179 for retail store services.
Respondent registered the disputed domain name <jp-lululemon.shop> on December 18, 2021. According to the Complainant’s evidence, the disputed domain name refers to a website which appears to be an online shop in Japanese language for goods similar to the Complainant’s goods. The website includes the Complainant’s LULULEMON trademark as well as the logo used on the Complainant’s official website.
Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.
[URS
1.2.6.1] The registered domain name(s) is/are identical or confusingly similar
to a word mark:
(i) for which the Complainant holds a valid national or regional registration
and that is in current use; or
(ii) that has been validated through court proceedings; or
(iii) that is specifically protected by a statute or treaty in effect at the
time the URS complaint is filed.
Determined: Finding for Complainant
The record makes clear that the Complainant "holds a valid national or regional registration and that [it] is in current use". The Examiner observes that the second-level portion of the disputed domain name includes the Complainant’s LULULEMON registered trademark in its entirety. In the Examiner’s view, the addition of the terms “jp” and a hyphen does not eliminate the likelihood of confusion with the Complainant’s mark. As the top level domain is irrelevant in assessing identity or confusing similarity, the new gTLD “.SHOP” is of no consequence here (Facebook Inc. v. Radoslav, Claim Number: FA1308001515825). As the registered domain name is confusingly similar to a word mark for which the Complainant holds a valid national or regional registration that is in current use, the Examiner considers that the Complainant has satisfied the first element of the URS in accordance with paragraph 1.2.6.1 of the URS.
[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.
Determined: Finding for Complainant
Although the Complainant does not expressly mention this in its Complaint, it appears clearly from the circumstances of the case that the Complainant has not authorized the Respondent to use its registered LULULEMON trademark. The Respondent has not submitted any evidence to prove that he or she is commonly known under the disputed domain name. There is no evidence about rights or legitimate interest in the LULULEMON term and the disputed domain name, or evidence about a fair use either.
The Examiner observes that the disputed domain name is confusingly similar to the Complainant’s LULULEMON trademark. Combined with the gTLD “.SHOP”, which can easily be considered as referring to the Complainant’s retail business, the Examiner finds that the disputed domain name carries a high risk of implied affiliation with the Complainant (see section 2.5.1 of WIPO Overview 3.0). This is further strengthened by the fact that the disputed domain name refers to a website which copies essential elements of the Complainant’s official website. The Examiner finds that such impersonation cannot constitute fair use (see section 2.13 of WIPO Overview 3.0). The Respondent does not contest the arguments of the Complainant. Therefore, the Examiner finds that the second element for the Complainant to obtain the suspension of a domain name under URS 1.2.6.2 has also been proven.
[URS
1.2.6.3] The domain name(s) was/were registered and is being used in bad faith.
a. Registrant has registered or acquired the domain name primarily for the
purpose of selling, renting or otherwise transferring the domain name
registration to the complainant who is the owner of the trademark or service
mark or to a competitor of that complainant, for valuable consideration in
excess of documented out-of-pocket costs directly related to the domain name;
or
b. Registrant has registered the domain name in order to prevent the trademark
holder or service mark from reflecting the mark in a corresponding domain name,
provided that Registrant has engaged in a pattern of such conduct; or
c. Registrant registered the domain name primarily for the purpose of
disrupting the business of a competitor; or
d. By using the domain name Registrant has intentionally attempted to attract
for commercial gain, Internet users to Registrant’s web
site or other on-line location, by creating a likelihood of confusion with
the complainant’s mark as to the source, sponsorship,
affiliation, or endorsement of Registrant’s web site or location or of a
product or service on that web site or location.
Determined: Finding for Complainant
Given the fact that the disputed domain name is confusingly similar to the Complainant’s LULULEMON trademark and refers to a website including the Complainant’s mark, it is inconceivable that the Respondent was unaware of the Complainant and its trademark rights when registering the disputed domain name. The Respondent even copied the Complainant’s official logo.
In the circumstances of this case, the Examiner finds that the disputed domain name was used to attract Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant's LULULEMON trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. In the Examiner’s view, hosting a website which appears to sell goods similar to the Complainant’s goods using the Complainant’s mark and logo is a clear indication of the Respondent’s bad faith (see section 3.4 of WIPO Overview 3.0).
In addition, the Examiner finds that it is difficult to imagine any future good faith use of the disputed domain name by the Respondent.
The Respondent did not file any response to contest the above. Therefore, the Examiner finds that the third element for the Complainant to obtain the suspension of a domain name under URS 1.2.6.3 has been proven.
After reviewing the Complainant’s submissions, the Examiner determines that
the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain names be SUSPENDED for the duration of the registration.
<jp-lululemon.shop>
Flip Jan Claude Petillion, Examiner
Dated: June 2, 2022
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