D.H. Deesigns, LLC v. Yuying Bai
Claim Number: FA2207002005616
Complainant is D.H. Deesigns, LLC (“Complainant”), represented by Christiane S. Campbell of Duane Morris LLP, Pennsylvania, USA. Respondent is Yuying Bai (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <deeoclepposhop.com>, registered with Name.com, Inc..
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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 25, 2022; the Forum received payment on July 25, 2022.
On July 27, 2022, Name.com, Inc. confirmed by e-mail to the Forum that the <deeoclepposhop.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, Inc. 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 July 27, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 16, 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@deeoclepposhop.com. Also on July 27, 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 August 17, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, 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.
A. Complainant
Complainant, D.H. Deesigns, LLC, offers leather handbags, shoes, and accessories. Complainant has rights in the trademark DEE OCLEPPO through its use in commerce since 2014 and its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,763,846 registered June 30, 2015) and the European Intellectual Property Office (“EUIPO") (e.g., Reg. No 017680455 registered July 24, 2018). This trademark enjoys a reputation as a brand that creates and provides the highest quality of precision craftsmanship and customer service. Respondent’s <deeoclepposhop.com> domain name, registered on May 14, 2022, is virtually identical and confusingly similar to Complainant’s mark because it incorporates the DEE OCLEPPO mark in its entirety and adds the term “shop” and the “.com” generic top-level domain (“gTLD”).
Respondent has no legitimate interests in the <deeoclepposhop.com> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed Respondent any rights in the DEE OCLEPPO mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the disputed domain name resolves to a competing online store that displays Complainant’s products in an attempt to confuse users into believing that they are visiting a legitimate Complainant affiliated website.
Respondent registered and uses the <deeoclepposhop.com> domain name in bad faith. Respondent registered the disputed domain name in order to confuse and divert customers for commercial gain. Further, Respondent uses the disputed domain name to engage in phishing activity. Finally, Respondent failed to respond to Complainant’s cease-and-desist letters.
B. Respondent
Respondent failed to submit a Response in this proceeding.
- Complainant has demonstrated that owns rights to the DEE OCLEPPO trademark and that the <deeoclepposhop.com> domain name is confusingly similar to such mark;
- Respondent’s use of the disputed domain name for a website that seeks to pass itself off as Complainant, possibly offer counterfeit or non-existent products and gather information in furtherance of a possible phishing scheme does not impart it with any rights or legitimate interests in the disputed domain name; and
- The disputed domain name was registered and is used in bad faith where Respondent seeks to pass itself off as Complainant and offer possibly counterfeit products for sale or to engage in phishing to harvest personal information of users who visit its website.
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 DEE OCLEPPO mark based upon the registration of the mark with the USPTO and the EUIPO. Registration of a mark with such trademark authorities is a valid showing of rights in a mark under Policy ¶ 4(a)(i). See Brooks Sports, Inc. v. Joyce Cheadle, FA 1819065 (Forum Dec. 28, 2018) (finding that Complainant’s registration of the BROOKS mark with the USPTO sufficiently conferred its rights in the mark under Policy ¶ 4(a)(i).”).
Complainant provides evidence of registration of the DEE OCLEPPO mark in the form of screenshots from the USPTO and EUIPO websites. As such, the Panel finds that the Complainant has rights in the mark under Policy 4(a)(i).
Complainant argues that Respondent’s <deeoclepposhop.com> domain name is identical or confusingly similar to Complainant’s DEE OCLEPPO mark. The addition of a gTLD and a descriptive term fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). 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).”) Here, the disputed domain name contains the DEE OCLEPPO mark in its entirety while adding in the relevant term “shop” and the “.com” gTLD. Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark per 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). Should it succeed in this effort, the burden then shifts to Respondent to show that 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 contends that Respondent lacks rights or legitimate interests in the <deeoclepposhop.com> domain name since Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed to Respondent any rights in the DEE OCLEPPO mark. WHOIS information may be used to inform consideration of whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Guardair Corporation v. Pablo Palermo, FA 1571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). In addition, a lack of authorization to use a complainant’s mark may indicate that a respondent is not commonly known by 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 for the <deeoclepposhop.com> domain name lists the registrant as “Yuying Bai”. Complainant further asserts that it has not licensed or otherwise authorized Respondent to use Complainant’s DEE OCLEPPO mark. The Respondent has not filed a Response or made any other submission in this case and so it does not dispute Complainant’s assertions or supplement the available evidence. Therefore, the Panel finds no grounds upon which to conclude that Respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant next argues that Respondent fails to use the <deeoclepposhop.com> domain name in connection with a bona fide offering of goods and services and that it does not make a legitimate noncommercial or fair use there of as Respondent purports to be affiliated with Complainant through its use of a fraudulent webpage bearing Complainant’s mark and product photos. An attempt by a respondent to pass itself off as an affiliate of the complainant under false pretenses may support a finding that it has failed to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Nokia Corp. v. Eagle, FA 1125685 (Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)). Here, Complainant provides screenshots of Respondent’s website which show that Respondent is using the disputed domain name to operate an online store that utilizes Complainant’s mark and product photos and purports to sell Complainant’s goods. Complainant asserts that this is either a phishing operation in which no goods at all are sold, or that the products offered are counterfeit based on the substantially discounted prices listed on the site. Even if it is the case that Respondent does sell genuine DEE OCLEPPO goods, its website does not disclose the lack of a relationship with Complainant and so it does not pass the test set out in the seminal case of Oki Data Americas Inc v. ASD Inc, D2001-0903 (WIPO Nov. 6, 2001). As noted, Respondent has not participated in this case and so it does not seek to explain its activities. As Complainant has made out a prima facie case that has not been rebutted by Respondent, the Panel finds, by a preponderance of the evidence that Respondent fails to use the disputed domain name for a bona fide offering of goods or services and that it does not make a legitimate noncommercial or fair use thereof under Policy ¶¶ 4(c)(i) or (iii).
Complainant argues that Respondent had constructive knowledge of Complainant’s rights in the DEE OCLEPPO mark at the time it registered the <deeoclepposhop.com> domain name based on its assertion that “[t]he Dee Ocleppo Marks have been in continuous and exclusive use” and that the “Marks are long-standing, widely protected, and prominently used on the Internet and elsewhere.” However, apart from submitting screenshots of its own www.deeocleppo.com website, it has not provided any evidence to support these claims. Furthermore, constructive knowledge is generally disfavored under Policy ¶ 4(a)(iii). The Vanguard Group, Inc. v. Manan Shahbaz, FA 2005110 (Forum Aug. 18, 2022) (“panels have not generally regarded constructive notice to be sufficient for a finding of bad faith….”) However, actual knowledge may form a solid foundation upon which an assertion of bad faith registration can be built. Id. Such knowledge is most often evident where a domain name is used in furtherance of a phishing scheme. See Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”) Complainant’s submitted screenshots of the website that resolves from the disputed domain name show that Respondent attempted to pass itself off as Complainant going so far as to copy Complainant’s logo, product photos, and an image of Complainant's namesake founder. From this evidence it is clear to the Panel that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the DEE OCLEPPO mark.
Next, Complainant asserts that Respondent has registered and used the <deeoclepposhop.com> domain name in bad faith because it incorporates the DEE OCLEPPO mark in an attempt to pass Respondent off as Complainant through the use of a fraudulent online store. Use of a disputed domain name to imitate a complainant’s website can be evidence of an attempt to attract users for commercial gain under 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 Russell & Bromley Limited v. Li Wei Wei, FA 1752021 (Forum Nov. 17, 2017) (finding the respondent registered and used the at-issue domain name in bad faith because it used the name to pass itself off as the complainant and offer for sale competitive, counterfeit goods). As previously noted, Complainant provides screenshots of the <deeoclepposhop.com> website showing that Respondent utilized Complainant’s mark and product photos in an effort to misrepresent its online store as being affiliated with Complainant and to purportedly offer for sale Complainant’s goods which may be counterfeit, non-existent, or unauthorized.
Complainant also argues that Respondent is attempting to pass itself off in order to obtain personal financial information from internet users thus demonstrating bad faith registration and use. Seeking personal information from users for nefarious purposes is considered evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Morgan Stanley v. Bruce Pu, FA 1764120 (Forum Feb. 2, 2018) (“[T]he screenshot of the resolving webpage allows users to input their name and email address, which Complainant claims Respondent uses that to fraudulently phish for information. Thus, the Panel agrees that Respondent phishes for information and finds that Respondent does so in bad faith under Policy ¶ 4(a)(iii).”) One of the screenshots submitted by Complainant shows that Respondent’s site contains a form labeled “Ask A Question” in which it invites users to input their name and email address. Another screenshot seeks users’ email addresses ostensibly to sign up for a newsletter. While the seeking of such information does not, of itself, indicate bad faith, when taking into consideration all of the circumstances of this case, the Panel finds that it does raise some suspicion and lends support to Complainant’s claim of phishing.
By a preponderance of the evidence presented here, the Panel finds that Respondent’s registration and use of the disputed domain name to be in bad faith, pursuant to Policy ¶ 4(b)(iv) and, thus, Policy ¶ 4(a)(iii).
Complainant further contends that, because Respondent failed to respond to a cease-and-desist letter and used a falsified address in the WHOIS record, Respondent has further demonstrated bad faith registration and use. Failure to respond to a cease and desist notification may be considered further evidence of bad faith registration and use per Policy ¶ 4(a)(iii). See Seiko Epson Corporation v. Ashish Sen, FA 1702054 (Forum Dec. 12, 2016) (finding that failing to respond to a cease-and-desist demand letter constitutes bad faith). Similarly, providing falsified WHOIS information can indicate bad faith. FIL Limited v. Domain Admin, WhoIs IDCPrivacy Service / Leonard Kitimbo, D2019-1374 (WIPO Aug. 15, 2019) (“Respondent’s submission of inaccurate, incomplete, or falsified contact information to the Registrar, without a street name, postcode, or valid telephone number, further supports a finding of Respondent’s bad faith.”) Here, Complainant provides evidence of a cease and desist letter that it sent to Respondent and to which is claims that it received no response. The Panel finds that this lends support to its prior conclusion of bad faith.
Complainant also points to the postal address listed by Respondent in the WHOIS record for the <deeoclepposhop.com> domain name which states an address in “San Antonio, United Kingdom (UK) 78205.” It is noted that “[t]he ‘United Kingdom’ designation is not merely a typo, as items are shown priced in British Pounds Sterling.” While the Panel is inclined to accept this assertion based on the appearance of the address itself, Complainant has not submitted the results of a map search or other evidence to support its claim that the address is false. As there is already sufficient evidence of Respondent’s bad faith here, the Panel has decided not to opine on the veracity of the WHOIS postal address or its impact on this case.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <deeoclepposhop.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: August 22, 2022
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