DashAmerica, Inc. d/b/a Pearl iZUMi USA, Inc. v. Mhnfh Undei / Hbdge Ubdew
Claim Number: FA2210002017026
Complainant is DashAmerica, Inc. d/b/a Pearl iZUMi USA, Inc. (“Complainant”), represented by Brian S.S. Auerbach of Ballard Spahr LLP, US. Respondents are Mhnfh Undei and Hbdge Ubdew (“Respondents”), Hong Kong SAR.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <pearlizumishop.com> and <pearlizumisale.com>, registered with Name.com, Inc.
PANEL
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to Forum electronically on October 21, 2022; Forum received payment on October 21, 2022.
On October 24, 2022, Name.com, Inc. confirmed by e-mail to Forum that the <pearlizumishop.com> and <pearlizumisale.com> domain names are registered with Name.com, Inc. and that Respondents are the current registrants of the names. Name.com, Inc. has verified that Respondents are bound by the Name.com, Inc. registration agreement and have thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 27, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 16, 2022 by which Respondents could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondents’ registrations as technical, administrative, and billing contacts, and to postmaster@pearlizumishop.com, postmaster@pearlizumisale.com. Also on October 27, 2022, the Written Notice of the Complaint, notifying Respondents of the e-mail addresses served and the deadline for a Response, was transmitted to Respondents via post and fax, to all entities and persons listed on Respondents’ registrations as technical, administrative and billing contacts.
Having received no response from Respondents, Forum transmitted to the parties a Notification of Respondent Default.
On November 21, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Alan L. Limbury as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondents.
Complainant requests that the domain names be transferred from Respondents to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
Paragraph 3(c) of 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”. Paragraph 1(d) of the Forum's Supplemental Rules defines “The Holder of a Domain Name Registration” as “the single person or entity listed in the registration information, as verified by the Registrar, at the time of commencement” and sub-paragraph 1(d)(i) provides that a Complainant wishing to make an argument for a single Respondent having multiple aliases must comply with Supplemental Rules 4(c) and 17(a)(i).
Complainant contends that the <pearlizumishop.com> and <pearlizumisale.com> domain names are effectively controlled by the same person and/or entity, which is operating under several aliases, noting that both domain names were registered using the same registrar, within one month of each other; both Respondents share the same contact phone number; both Respondent email addresses use the same email service; both Respondents list identical country and zip codes; both Respondent names appear to be pseudo-randomly generated 10-character strings; both domain names redirect to web pages having a similar appearance, each purporting to sell Complainant’s goods in a similarly unauthorized manner; and an examination of the page code at each of the domain names shows extreme similarities and, in many cases, complete identity between the code used (with the exception of “shop” being replaced by “sale”).
In the absence of evidence to the contrary, the above circumstances demonstrate sufficient commonality as between the domain names to satisfy the Panel that they are commonly owned or controlled by a single person who is using multiple aliases. Henceforth this decision will refer to Mhnfh Undei / Hbdge Ubdew as “Respondent”.
A. Complainant
Complainant,
DashAmerica, Inc. d/b/a Pearl iZUMi USA, Inc., sells athletic wear. Complainant has rights in the PEARL IZUMI mark based on
registrations with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <pearlizumishop.com> and <pearlizumisale.com> domain
names are confusingly similar to Complainant’s PEARL IZUMI mark. Complainant is also the registrant of the <pearlizumi.com>
domain name.
Respondent does not have rights or legitimate interests
in the <pearlizumishop.com> and <pearlizumisale.com> domain
names. Respondent is not licensed or authorized to use Complainant’s PEARL IZUMI mark and is not commonly known by either of the
disputed domain names. Respondent does not use the disputed domain names for
any bona fide offering of goods or services or legitimate noncommercial
or fair use. Rather, Respondent attempts to pass itself off as
Complainant.
Respondent registered and uses the <pearlizumishop.com>
and <pearlizumisale.com> domain names
in bad faith to disrupt Complainant’s business by passing itself off as
Complainant and selling counterfeit items, attracting Complainant’s customers
for commercial gain.
The domain
names resolve to fraudulent versions of
Complainant’s actual home page, designed for the sole purpose of siphoning
sales away from Complainant’s potential customers who think they are visiting
one of Complainant’s actual websites to buy legitimate Complainant merchandise.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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 has shown that it has rights in the PEARL IZUMI mark based on registrations with the USPTO (e.g., Reg. No. 1,421,998, registered December 23, 1986). The Panel finds Respondent’s <pearlizumishop.com> and <pearlizumisale.com> domain names to be confusingly similar to Complainant’s PEARL IZUMI mark because they both incorporate the mark in its entirety and add the generic words “shop” or “sale”, neither of which is sufficient to distinguish the domain name from the mark, and the inconsequential “.com” generic top-level domain name (“gTLD”), which may be ignored.
Complainant has established this element.
Rights or
Legitimate Interests
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain names or names corresponding to the domain names in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain names, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain names on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the <pearlizumishop.com> and <pearlizumisale.com> domain names. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014). Respondent has made no attempt to do so.
The Panel finds that Respondent has no rights or legitimate interests in respect of the domain names.
Complainant has established this element.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain names in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:
(iv) by using the domain names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on its website or location.
The circumstances set out above in relation to the second element satisfy the Panel that Respondent was fully aware of Complainant’s PEARL IZUMI mark when Respondent registered the <pearlizumishop.com> and <pearlizumisale.com> domain names and that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites, by creating a likelihood of confusion with Complainant’s mark as to the source of Respondent’s websites and of the goods promoted on those websites. This demonstrates registration and use in bad faith to attract users for commercial gain under Policy ¶ 4(b)(iv).
Complainant has established this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pearlizumishop.com> and <pearlizumisale.com> domain names be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: November 22, 2022.
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