Aquatalia IP LLC and RTW Retailwinds Acquisition LLC v. yanlu lu
Claim Number: FA2301002026817
Complainant is Aquatalia IP LLC and RTW Retailwinds Acquisition LLC (“Complainant”), represented by Renee Reuter, United States of America (“United States”). Respondent is yanlu lu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aquatalua.com> (the “disputed domain name”), registered with Dynadot16 LLC (the “Registrar”).
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to Forum electronically on January 9, 2023; Forum received payment on January 9, 2023.
On January 10, 2023, the Registrar confirmed by e-mail to Forum that the <aquatalua.com> disputed domain name is registered with Dynadot16 LLC and that Respondent is the current registrant of the name. The Registrar has verified that Respondent is bound by the Dynadot16 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 January 11, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 31, 2023 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@aquatalua.com. Also on January 11, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On February 3, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Lynda M. Braun 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 Respondent.
Complainant requests that the disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is an online footwear retailer. Complainant has rights in the AQUATALIA trademark through numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., United States Registration No. 4,349,879, registered on June 11, 2013). Complainant also has rights in the AQUATALIA trademark in several other jurisdictions worldwide. The aforementioned trademarks will hereinafter collectively be referred to as the “AQUATALIA Mark”.
Complainant contends that Respondent’s <aquatalua.com> disputed domain name is confusingly similar to the AQUATALIA Mark because it misspells the trademark by replacing the letter “i” with the letter “u” and adds the generic Top-Level Domain (“gTLD”) “.com”.
The disputed domain name initially directed to a website that contained pornography and gambling material. As of the writing of this decision, however, the disputed domain name directs to a landing page that states: “This site can’t be reached. aquatalua.com’s server IP address could not be found.”
Complainant also claims that Respondent lacks rights or legitimate interests in the <aquatalua.com> disputed domain name since Complainant has not authorized Respondent to use Complainant’s AQUATALIA Mark and is not commonly known by the disputed domain name. In addition, Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name. Moreover, Complainant states that Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to display adult-oriented pornographic material and promote gambling activity, and in this way, Respondent is diverting Internet traffic for commercial gain, specifically as to gambling and adult-oriented content.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that Complainant holds valid trademark rights in the AQUATALIA Mark in the United States and jurisdictions worldwide. The Panel holds that the disputed domain name is confusingly similar to Complainant’s AQUATALIA Mark, that Respondent lacks rights or legitimate interests in the use of the disputed domain name, and that Respondent registered and is using the disputed domain name 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 disputed domain name should be cancelled or transferred:
(1) the disputed 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 disputed domain name; and
(3) the disputed 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”).
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
Previous panels have interpreted Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. See Vancouver Org. Comm. for the 2010 Olympic and Paralympic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006) (holding that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity); see also Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003) (holding that the two complainants were deemed a single entity where both parties held rights in trademarks contained within the disputed domain names).
That is precisely the case here. There are two Complainants in this matter: Aquatalia IP LLC and RTW Retailwinds Acquisition LLC. The two Complainants
are related companies. RTW Retailwinds Acquisition LLC, the owner of the domain name <aquatalia.com> is owned by Saadia Group, LLC following an acquisition in 2000. Aquatalia IP LLC, the owner of the Aquatalia trademark registrations in the United States and jurisdictions worldwide, was acquired by Saadia Group, LLC in 2021. The Panel finds that there is a sufficient nexus or link between the Complainants and thus, should be treated as a single entity in this proceeding. Therefore, the Panel finds that the above-named related companies are both proper Complainants in this proceeding.
Accordingly, in this decision, the Complainants will be collectively referred to as the “Complainant.”
The Panel finds that the disputed domain name is confusingly similar to the AQUATALIA Mark as set forth below.
The Panel finds that Complainant has rights in the AQUATALIA Mark based on its registration with the USPTO (e.g., United States Registration No. 4,349,879, registered on June 11, 2013). Registration with the USPTO is sufficient to establish rights in a trademark pursuant to Policy paragraph 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
The Panel also finds that Complainant has rights in the AQUATALIA Mark based on its registration with multiple trademark offices in jurisdictions worldwide. Registration of a mark with multiple trademark agencies is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (“Complainant has rights in the GMAIL mark based upon its registration of the mark with numerous trademark agencies around the world.”).
Registration of a disputed domain name that replaces a letter in a trademark does not distinguish the disputed domain name from the mark per Policy paragraph 4(a)(i). See Staples, Inc. v. Whois Privacy Shield Services, FA 1617690 (Forum June 5, 2015) (changing a letter is a minor enough change to support a finding of confusing similarity under Policy paragraph 4(a)(i)); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the addition of a gTLD to a domain name is irrelevant to a Policy paragraph 4(a)(i) analysis). Respondent misspells Complainant’s AQUATALIA Mark by replacing the letter “i” with the letter “u” in the trademark “AQUATALIA” to create the term “AQUATALUA”. Therefore, the Panel concludes that the disputed domain name is confusingly similar to the AQUATALIA Mark.
Accordingly, the Panel finds that Policy paragraph 4(a)(i) has been established by Complainant.
The Panel finds that Respondent holds no rights or legitimate interests in the disputed domain name. Under the Policy, Complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy paragraph 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”). As Respondent did not respond to the Complaint, Respondent cannot have carried its burden to come forward with evidence of its rights or legitimate interests in the disputed domain name. The Panel notes that, given the facts here, Respondent would have been hard-pressed to furnish availing arguments had it chosen to respond:
In support, the Panel finds that Respondent is not commonly known by the disputed domain name or any name similar to it, nor has Complainant authorized or licensed Respondent to use its AQUATALIA Mark in the disputed domain name. Furthermore, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services, or in connection with a legitimate noncommercial or fair use because here, Respondent uses the disputed domain name to resolve to a website that displays adult entertainment content. Using a confusingly similar domain name in connection with adult-oriented material generally does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Altria Group, Inc. and Altria Group Distribution Company v. xiazihong, FA 1732665 (Forum July 7, 2017) (holding that “[u]se of a domain name to display adult-oriented images is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy.”). As such, the Panel finds that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy paragraph 4(c)(i) and Policy paragraph 4(c)(iii).
Accordingly, the Panel finds that Policy paragraph 4(a)(ii) has been established by Complainant.
The Panel concludes that Respondent registered and is using the disputed domain name in bad faith.
First, the use of a disputed domain name to intentionally attempt to attract Internet users to a respondent’s website or online location by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website or online location demonstrates registration and use in bad faith. Bad faith under Policy paragraph 4(b)(iv) can be found where a respondent uses a confusingly similar domain name to falsely indicate an association with a complainant. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006).
Second, Respondent is attempting to attract, for commercial gain, Internet users to its adult website by creating confusion as to the source, sponsorship, affiliation, or endorsement of the resolving website and/or the products or services at the resolving website. Using a confusingly similar domain name to trade upon the goodwill of a complainant’s mark for commercial gain can evince bad faith under Policy paragraph 4(b)(iv). See Menard, Inc. v. Domain Admin / Whois Privacy Corp., FA 1785761 (Forum June 13, 2018) (“A respondent’s appropriation of a complainant’s mark in a confusingly similar domain name to divert potential consumers to its own web site is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Bad faith can also be found where the resolving webpage displays adult-oriented material. See H-D U.S.A., LLC v. Nobuyoshi Tanaka / Personal, FA1312001534740 (Forum Jan. 31, 2014) (“Therefore, the Panel concludes that Respondent is acting in bad faith because Respondent is using the <harley-davidsonsales.com> domain name to tarnish Complainant’s HARLEY-DAVIDSON mark, as the Panel also finds that the content displayed on the resolving website constitutes adult-oriented content.”). Accordingly, the Panel finds that Respondent attempted to commercially benefit from the AQUATALIA Mark in bad faith under Policy paragraph 4(b)(iv).
Third, Respondent has engaged in typosquatting, which, in and of itself, is evidence of bad faith. See Morgan Stanley v. Hom, FA 200100187796 (Forum Feb. 9, 2020) (registration and use of <morganstlanley.com> was a misspelling of the MORGAN STANLEY mark and thus constituted typosquatting and was evidence of bad faith); Hilton Int’l Holding LLC v. Tamm, FA1809001809730 (Forum Nov. 5, 2018) (registration and use of <hitlon.com> was a misspelling of the HILTON trademark and thus constituted typosquatting and evidence of bad faith).
Finally, the Panel finds that Respondent had actual knowledge of the Complainant’s AQUATALIA Mark. Respondent registered the disputed domain name on June 6, 2022, years after the AQUATALIA Mark was first registered and used. It therefore strains credulity to believe that Respondent had not known of the Complainant or its AQUATALIA Mark when registering the disputed domain name, especially since the disputed domain name consists of a slight misspelling of the AQUATALIA Mark . Thus, as here, prior knowledge of a complainant’s trademark when registering a disputed domain name is sufficient to find bad faith under Policy paragraph 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (finding actual knowledge due to the domain name chosen and the use made of it). Therefore, the Panel concludes that Respondent had actual knowledge of Complainant’s rights in the AQUATALIA Mark when registering the disputed domain name, constituting bad faith under the Policy paragraph 4(a)(iii).
Accordingly, the Panel finds that Policy paragraph 4(a)(iii) has been established by 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 <aquatalua.com> disputed domain name be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: February 13, 2023
[i] This misspelling is an example of typosquatting, a situation in which a disputed domain name includes a misspelled term.
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