Urban Sophistication Ltd. v. Zhi Wei Chen
Claim Number: FA2205001997556
Complainant is Urban Sophistication Ltd. ("Complainant"), Israel, represented by Mari-Elise Paul of Stites & Harbison, PLLC, United States. Respondent is Zhi Wei Chen ("Respondent"), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <urbanpuffer.com>, registered with GoDaddy.com, LLC.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 23, 2022; the Forum received payment on May 23, 2022.
On May 24, 2022, GoDaddy.com, LLC confirmed by email to the Forum that the <urbanpuffer.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 27, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 16, 2022 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@urbanpuffer.com. Also on May 27, 2022, the Written Notice of the Complaint, notifying Respondent of the email 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 23, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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
Complainant is an online retailer of streetwear and accessories. Complainant has used URBAN SOPHISTICATION in connection with various products since 2015 and owns a United States trademark registration for that mark in standard character form issued in May 2021. In 2019 Complainant began selling a polyurethane phone case resembling a quilted down puffer jacket, under the name THE PUFFER CASE. Complainant asserts common law trademark rights in THE PUFFER CASE and has applied for a United States trademark registration.
Respondent registered the disputed domain name <urbanpuffer.com> in January 2022. The domain name is being used for a website that displays a logo containing the text "THE URBAN PUFFER," combining components of Complainant’s URBAN SOPHISTICATION and THE PUFFER CASE marks. The website also includes photographs taken from Complainant’s social media account and website, and images of what appear to be counterfeit goods offered for sale on Respondent’s website. Complainant states that Respondent is not commonly known by the domain name, is not a licensee of nor associated or affiliated with Complainant, and is not authorized to use Complainant's marks.
Complainant contends on the above grounds that the disputed domain name <urbanpuffer.com> is confusingly similar to its URBAN SOPHISTICATION and THE PUFFER CASE marks; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used 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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
Complainant asserts common law rights in THE PUFFER CASE, based upon Complainant's pending trademark application, its promotional efforts, unsolicited media coverage, and photographs of the product posted by celebrities and social media influencers. Complainant's rights have been recognized in previous proceedings under the Policy. See Urban Sophistication Ltd. v. Luke Donnelly / Puffer Case Store, FA 1994161 (Forum June 1, 2022); Urban Sophistication Ltd. v. Irad Nils / shop.smartbottle, FA 1994159 (Forum May 30, 2022). However, the media mentions cited by Complainant in this proceeding generally use "puffer case" in a descriptive sense rather than as a source identifier (e.g., "[Dua] Lipa's Urban Sophistication puffer case"), and Complainant offers no specifics regarding its sales volumes, advertising expenditures, or public recognition of the mark, as normally is expected for an assertion of common law rights. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, supra, § 1.3. Nonetheless, the Panel need not determine whether Complainant has sufficiently substantiated its claim of common law rights in THE PUFFER CASE, as its registered trademark rights in URBAN SOPHISTICATION are sufficient for purposes of this proceeding.
The disputed domain name <urbanpuffer.com> incorporates a distinctive component of Complainant's registered URBAN SOPHISTICATION mark, adding the word "puffer," which relates to Complainant's products, and the ".com" top-level domain. The Panel considers the disputed domain name to be confusingly similar to Complainant's URBAN SOPHISTICATION mark.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization, and it is being used for a misleading website that passes off as Complainant and promotes what appear to be counterfeit versions of its products. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Urban Sophistication Ltd. v. Luke Donnelly / Puffer Case Store, supra (finding lack of rights or interests in similar circumstances); Urban Sophistication Ltd. v. Irad Nils / shop.smartbottle, supra (same).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent'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 [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent registered a domain name incorporating components of Complainant's registered mark and its claimed common law mark, and is using the domain name to pass off as Complainant, promoting competing and apparently counterfeit products. Such conduct is indicative of bad faith registration and use under the Policy. See, e.g., Urban Sophistication Ltd. v. Luke Donnelly / Puffer Case Store, supra (finding bad faith in similar circumstances); Urban Sophistication Ltd. v. Irad Nils / shop.smartbottle, supra (same). The Panel so finds.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <urbanpuffer.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: June 24, 2022
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