Pendleton Woolen Mills, Inc. v. Wang Jiazhang
Claim Number: FA2302002033136
Complainant is Pendleton Woolen Mills, Inc. (“Complainant”), represented by Parna A. Mehrbani of Tonkon Torp LLP, Oregon, USA. Respondent is Wang Jiazhang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <storepend.com>, (‘the Domain Name’) registered with Gname.com Pte. Ltd..
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.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to Forum electronically on February 23, 2023; Forum received payment on February 23, 2023.
On February 28, 2023, Gname.com Pte. Ltd. confirmed by e-mail to Forum that the <storepend.com> Domain Name is registered with Gname.com Pte. Ltd. and that Respondent is the current registrant of the name. Gname.com Pte. Ltd. has verified that Respondent is bound by the Gname.com Pte. Ltd. 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 March 2, 2023, Forum served the Complaint and all Annexes, including a Chinese and English Written Notice of the Complaint, setting a deadline of March 22, 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@storepend.com. Also on March 2, 2023, the Chinese and English 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 March 30, 2023 pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Dawn Osborne 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
The Complainant owns the trade mark PENDLETON registered, inter alia, in the USA for blankets with first use recorded as 1895. Since 1961 it has made some use of the shortened form of its mark, namely ‘PEND’ prefixed marks, although evidence of such use is not submitted with this Complaint and the Complainant does not currently hold any trade mark registrations for the shortened form of the mark.
The Domain Name registered in 2022 consists of the shortened version of the Complainant’s trade mark, namely PEND, and adding the generic term ‘store’ and the gTLD “.com” which does not prevent said confusing similarity between the Domain Name and the Complainant’s mark. The Complainant’s trade mark is still recognizable in the Domain Name.
Respondent is not commonly known by the Domain Name and is not authorized by the Complainant.
The web site connected with the Domain Name purports to sell the Complainant’s products using the Complainant’s full PENDLETON trade mark in its logo form as a masthead and material taken from the Complainant’s web site without permission. Since Internet users will be duped into believing the site attached to the Domain Name is official this is not a bona fide offering of goods or services or legitimate noncommercial fair use. It is registration and use in bad faith confusing and diverting Internet users for commercial gain. The use of the Complainant’s logo, material taken from the Complainant’s web site on the Respondent’s web site and the reference to the Complainant’s products on the Respondent’s web site shows the Respondent had actual knowledge of the Complainant, its rights, business and services. The Complainant is concerned about possible phishing.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant owns the trade mark PENDLETON registered, inter alia, in the USA for blankets with first use recorded as 1895.
The Domain Name registered in 2022 purports to sell the Complainant’s products using the Complainant’s full PENDLETON trade mark in its logo form as a masthead and material taken from the Complainant’s web site without permission.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDINGS
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
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”).
The Domain Name consists of a shortened form of the Complainant's PENDLETON mark (which is registered, inter alia, in the USA for blankets with first use recorded as 1895) namely PEND, the generic term ‘store’ and the gTLD “.com”.
The Panel agrees that shortening or misspellings of a complainant’s mark in a domain name do not prevent confusing similarity between that domain name and the Complainant's trade mark pursuant to the Policy. See Coachella Music Festival LLC v. Domain Administrator/China Capital Investment Limited, FA 1734230 (Forum July 17, 2017). As such removing the suffix ‘leton’ from the Complainant’s mark does not prevent the Domain Name being confusingly similar to the Complainant’s trade mark under the Policy.
Previous panels have found confusing similarity when a respondent merely adds a generic term to a Complainant's mark. See PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underlying mark held by the Complainant). The Panel agrees that the addition of the generic term ‘store’ does not prevent confusing similarity between the Domain Name and the Complainant's registered trade mark.
The gTLD “.com” does not serve to prevent confusing similarity between the Domain Name and the Complainant’s mark. See Red Hat Inc. v. Haecke, FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar to the Complainant’s registered mark.
As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.
Rights or Legitimate Interests
The Complainant has not authorized the use of its mark. There is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The use of the Domain Name is commercial and so cannot be noncommercial legitimate fair use.
The web site attached to the Domain Name uses the Complainant’s PENDLETON mark in full in its logo form as a masthead, and material taken from the Complainant’s web site, to suggest that it is an official site of the Complainant when it is not. The Panel finds this use is deceptive and confusing. As such it cannot amount to the bona fide offering of goods and services. See Am. Intl Group Inc. v. Benjamin, FA 944242 (Forum May 11, 2007) (finding that the Respondent's use of a confusingly similar domain name to compete with the Complainant's business did not constitute a bona fide use of goods and services.).
The Respondent has not answered the Complaint or rebutted the prima facie case evidenced by the Complainant as set out herein.
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
In the opinion of the panelist the use made of the Domain Name in relation to the Respondent’s site is confusing and disruptive in that visitors to the site might reasonably believe it is connected to or approved by the Complainant as it offers products under the Complainant’s full PENDLETON mark in its logo form used as a masthead and uses material taken from the Complainant’s site giving the impression that the site attached to the Domain Name is an official or approved site of the Complainant. The use of the Complainant’s full PENDLETON mark, its logo, material taken from the Complainant’s web site and the references to the Complainant’s products on the site shows that the Respondent has actual knowledge of the Complainant and its business, products and rights.
Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant's trade mark as to the source, sponsorship, affiliation or endorsement of the web site likely to disrupt the business of the Complainant. See Asbury Auto Group Inc. v. Tex. Int'l Prop Assocs, FA 958542 (Forum May 29, 2007) (finding that the respondent's use of the disputed domain name to compete with the complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of a competing business and was therefore evidence of bad faith and use).
As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under paragraphs 4(b)(iii) and (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <storepend.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: March 31, 2023
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