Hanky Panky, Ltd. v. Chunmei465 Tang
Claim Number: FA2301002028433
Complainant is Hanky Panky, Ltd. (“Complainant”), USA, represented by Meichelle MacGregor of Cowan, Liebowitz & Latman, P.C., New York. Respondent is Chunmei465 Tang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hanky-shop.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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to Forum electronically on January 20, 2023; Forum received payment on January 20, 2023.
On January 23, 2023, Name.com, Inc. confirmed by e-mail to Forum that the <hanky-shop.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 January 23, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 13, 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@hanky-shop.com. Also on January 23, 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 17, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. 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 domain name be transferred from Respondent to Complainant.
A. Complainant
i) Complainant, Hanky Panky, Ltd., is a manufacturer and retailer of lingerie and underwear. Complainant has rights in the HANKY PANKY mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,496,845, registered on July 19, 1988). The disputed domain name is identical or confusingly similar to Complainant’s HANKY PANKY mark because the domain name incorporates the term “Hanky” which is a dominant portion in Complainant’s mark while adding a hyphen and the generic or descriptive term “shop”, along with the “.com” gTLD.
ii) Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its HANKY PANKY mark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use, but instead passes off as Complainant in furtherance of a phishing scheme.
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent impersonates Complainant while capitalizing on the confusing similarity between the mark and the domain name. Additionally, Respondent phishes for users’ personal information. Respondent had constructive and/or actual knowledge of Complainant’s rights in the HANKY PANKY mark.
B. Respondent
Respondent did not submit a response in this proceeding.
1. The disputed domain name was registered on July 9, 2022.
2. Complainant has established rights in the HANKY PANKY mark through its registration with the USPTO (e.g., Reg. No. 1,496,845, registered on July 19, 1988).
3. The disputed domain name's resolving site advertises and offers for sale products that are identical or nearly identical to Complainant’s, uses the HANKY PANKY mark and Complainant’s name in multiple locations throughout the site, and purports to be Complainant.
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 argues the disputed domain name is identical or confusingly similar to Complainant’s HANKY PANKY mark. The Panel notes that the disputed domain name incorporates the term “Hanky” which is the first term in Complainant’s mark. Replicating only the first and most dominant portion of a mark in a domain name—even when other portions of the mark are missing may not obviate the confusing similarity. The Panel also notes that Complainant’s goods are identified by the first and most dominant portion of its HANKY PANKY mark. A Google search for webpages that contain both the terms “hanky” and “lingerie” or “hanky” and “underwear” both yielded numerous results, the first several pages of which refer to Complainant’s official website and authorized retailers and its products in both sponsored an organic results. Under Policy ¶ 4(a)(i), adding hyphen along with a generic or descriptive word along with the “.com” gTLD is insufficient in differentiating from the mark. See Ant Small and Micro Financial Services Group Co., Ltd. v. Ant Fin, FA 1759326 (Forum Jan. 2, 2018) (“Respondent’s <antfinancial-investorrelations.com> Domain Name is confusingly similar to Complainant’s ANT FINANCIAL mark. It incorporates the mark entirely. It adds a hyphen, the descriptive terms “investor relations,” and the “.com” gTLD, but these additions are insufficient to distinguish the Domain name from complainant’s mark for the purposes of Policy ¶ 4(a)(i).”); see also Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy).
The disputed domain name incorporates the term “Hanky” which is the first and dominant portion in Complainant’s mark while adding a hyphen and the generic or descriptive term “shop”, along with the “.com” gTLD. The Panel therefore finds the disputed domain name is confusingly similar to Complainant’s HANKY PANKY mark under 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), then the burden shifts to Respondent to show 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 argues Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its HANKY PANKY mark in the disputed domain name. Under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name. See Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Deutsche Lufthansa AG v. Mohamed elkassaby, FA 1801815 (Forum Sep. 17, 2018) (“The WHOIS lists “Mohamed elkassaby” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).”). Here, the WHOIS information identifies Respondent as “Chunmei465 Tang.” Therefore, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues Respondent is not using the disputed domain name for any bona fide offering of goods or services, nor any noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), passing off while phishing is not a bona fide offering of goods or services, nor any noncommercial or fair use. See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”). Complainant provides a screenshot of the disputed domain name's resolving site that advertises and offers for sale underwear and lingerie items that are identical or nearly identical to Complainant’s products, uses the HANKY PANKY mark and Complainant’s name in multiple locations throughout the site, and purports to be Complainant in an attempt to scam consumers, including by (i) prominently stating it is the “Hanky Panky Official Shop”; (ii) using Complainant’s logo; (iii) using Complainant’s unique product names; and (iv) misappropriating copyrighted content, text and photos, from Complainant's authorized website, including photos Complainant’s products and models. The Panel therefore finds Respondent is not using the disputed domain name for any bona fide offering of goods or services, nor any noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant argues Respondent registered and uses the disputed domain name in bad faith by impersonating Complainant and capitalizing on the confusing similarity between the domain name and the mark. Under Policy ¶ 4(b)(iv), passing off as a complainant while creating confusion among users is evidence of bad faith registration and use. 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 Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (holding that the respondent was taking advantage of the confusing similarity between the <lilpunk.com> domain name and the complainant’s LIL PUNK mark by using the contested domain name to maintain a website with various links to third-party websites unrelated to Complainant, and that such use for the respondent’s own commercial gain demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). The Panel recalls that Complainant provides a screenshot of the disputed domain name's resolving site that advertises and offers for sale underwear and lingerie items that are identical or nearly identical to Complainant’s products, uses the HANKY PANKY mark and Complainant’s name in multiple locations throughout the site, and purports to be Complainant in an attempt to scam consumers. Therefore, the Panel finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant further asserts that Respondent registered the disputed domain name with constructive and/or actual knowledge of Complainant’s rights in the HANKY PANKY mark. The Panel infers, due to the notoriety of Complainant’s HANKY PANKY mark and the manner of use of the disputed domain name that Respondent had actual knowledge of Complainant’s rights in the mark, which supports a finding of bad faith registration of the disputed domain name per Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hanky-shop.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: February 21, 2023
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