Aquatalia IP LLC and RTW Retailwinds Acquisition LLC v. Client Care / Web Commerce Communications Limited
Claim Number: FA2303002035055
Complainant is Aquatalia IP LLC and RTW Retailwinds Acquisition LLC (“Complainant”), represented by Renee Reuter, Missouri. Respondent is Client Care / Web Commerce Communications Limited (“Respondent”), MY.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aquataliabootscanada.com>, registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to Forum electronically on March 8, 2023; Forum received payment on March 8, 2023.
On March 10, 2023, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED confirmed by e-mail to Forum that the <aquataliabootscanada.com> domain name is registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED and that Respondent is the current registrant of the names. ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED has verified that Respondent is bound by the ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED 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 13, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 3, 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@aquataliabootscanada.com. Also on March 13, 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 April 10, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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.
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 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.”
In the instant proceedings, there are two discrete Complainants: Aquatalia IP LLC and RTW Retailwinds Acquisition LLC. They assert in their Complaint that they are affiliated companies in that RTW Retailwinds Acquisition LLC, the owner of the <aquatalia.com> domain name under which Aquatalia IP LLC does business, is owned by Saadia Group, LLC following an acquisition in 2000, while Aquatalia IP LLC, the owner of an Aquatalia trademark registration in the United Sates, was also acquired by Saadia Group LLC in 2021, so that the two enterprises are subsidiaries of the same parent company, each with a substantial reason to protect their common interests in the mark AQUATALIA.
It is well established that multiple parties may proceed as one party in a UDRP proceeding where they can show a sufficient link to one another.
See, for example, Vancouver Org. Comm. for the 2010 Olympic and Paralympic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel there finding that:
It has been accepted 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 December 28, 2003), in which a panel treated two complainants as a single entity where both held rights in trademarks contained within disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum February 6, 2004), a panel found a sufficient link between multiple complainants where there was a license between them regarding use of a mark at issue in the proceeding.
Therefore, there being no objection from Respondent, on the facts before us the allegations of the Complaint are sufficient to establish a nexus between Aquatalia IP LLC and RTW Retailwinds Acquisition LLC justifying that they be permitted to proceed as one complainant in this proceeding. Accordingly, throughout this Decision the two companies will be referred to collectively as “Complainant.”
A. Complainant
Complainant is an international online marketer of footwear.
Complainant holds a registration for the AQUATALIA service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 4,349,879, registered June 11, 2013.
Complainant does business online via the domain name <aquatalia.com>.
Respondent registered the domain name <aquataliabootscanada.com> on January 30, 2023.
The domain name is confusingly similar to Complainant’s AQUATALIA mark.
Respondent has not been commonly known by the domain name.
Complainant has not licensed or otherwise authorized Respondent to use its AQUATALIA mark in a domain name.
Respondent does not use the domain name for either a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Instead, Respondent uses the domain name to pass itself off as Complainant online in order to divert Internet users to its own competing website which mimics the “look and feel” of Complainant’s official site at <aquatalia.com> and prominently displays Complainant’s AQUATALIA mark while purporting to sell Complainant’s footwear products.
Respondent lacks both rights to and legitimate interests in the domain name.
Respondent used a privacy service to hide its identity when registering the domain name.
Respondent’s use of the domain name disrupts Complainant’s business.
Respondent registered the domain name while knowing of Complainant’s rights in the AQUATALIA mark.
Respondent both registered and now uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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 domain name should be cancelled or transferred:
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
By reason of its registration of the AQUATALIA service mark with a national trademark authority, the USPTO, Complainant has established that it has rights in that mark sufficient to satisfy the requirement of Policy¶4(a)(i) that it demonstrate standing to pursue its claim against Respondent in this proceeding. This is true without regard to whether Complainant’s rights in its mark arise from its registration in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Malaysia). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy¶4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the central question posed by Policy¶4(a)(i), we conclude from a review of the record that Respondent’s <aquataliabootscanada.com> domain name is confusingly similar to Complainant’s AQUATALIA mark.
The domain name incorporates the mark in its entirety, with the addition of the generic term “boots,” which relates directly to Complainant’s business model, plus the geographic term “canada,” which identifies one of the countries in which Complainant does business, and, finally, the generic Top Level Domain (“gTLD”) “.com.” These accretions to the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy.
See, for example, Steve Madden, Ltd. v. Faich Child, FA1519165 (Forum, October 28, 2013) (finding the domain name <stevemaddenboots.us> confusingly similar to the mark STEVE MADDEN).
See also Oboz Footwear LLC v. Bichuanlin, FA2011363 (Forum, October 12, 2022) (finding the domain name <oboz-canada.com> confusingly similar to the mark OBOZ).
Further see Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum September 27, 2002):
[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy¶4(a)(i) analysis.
This is because every domain name requires a gTLD or other TLD.
Under Policy¶4(a)(ii), Complainant must make out a prima facie showing that Respondent has neither rights to nor legitimate interests in the domain name <aquataliabootscanada.com>, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum, August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP¶4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See, for example, Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy¶4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the contested <aquataliabootscanada.com> domain name, and that Complainant has not licensed or otherwise authorized Respondent to use the AQUATALIA mark in a domain name. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Client Care / Web Commerce Communications Limited,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy¶4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner).
We next observe that Complainant further asserts, without objection from Respondent, that Respondent uses the <aquataliabootscanada.com> domain name to pass itself off as Complainant online in order to divert Internet users to its own competing website which mimics the “look and feel” of Complainant’s official site at <aquatalia.com> and prominently displays Complainant’s AQUATALIA mark while purporting to sell Complainant’s footwear products. This employment is neither a bona fide offering of goods or services by means of the domain name under Policy¶4(c)(i) nor a legitimate noncommercial or fair use of it under Policy¶4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, Amer. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003):
…, Respondent attempted to pass itself off as Complainant online. Such blatant unauthorized use of Complainant’s mark is evidence that Respondent has no rights [to] or legitimate interests in the disputed domain name.
See also Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding that a respondent did not use a disputed domain name to make either a bona fide offering of goods or services under Policy¶4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii) where the website resolving from the domain copied a UDRP complainant’s mark and images used in that complainant’s business).
The Panel therefore finds that Complainant has amply satisfied the proof requirements of Policy¶4(a)(ii).
We are persuaded by the evidence presented that Respondent’s use of the <aquataliabootscanada.com> domain name in the manner detailed in the Complaint and accompanying submissions disrupts Complainant’s business. Under Policy¶4(b)(iii), this stands as proof of Respondent’s bad faith in registering and using the domain name. See, for example, Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum March 8, 2007) (finding that a respondent’s registration and use of a disputed domain name, which resolved to a website displaying content virtually identical to a UDRP complainant’s official website, was evidence of bad faith registration and use of the domain name under Policy¶4(b)(iii)).
We are also convinced that Respondent’s employment of the challenged <aquataliabootscanada.com> domain name, which we find confusingly similar to Complainant’s AQUATALIA mark, is an attempt by Respondent to profit illegitimately from the confusion thus caused among Internet users as to the possibility of Complainant’s association with the domain name. Under Policy¶4(b)(iv), this too stands as evidence of Respondent’s bad faith in registering and using the domain name. See, for example, Bittrex, Inc. v. Caroline Alves Maia, FA 1796113 (Forum August 6, 2018) (finding that a respondent registered and used a contested domain name in bad faith within the meaning of Policy¶4(b)(iv) where that respondent deployed the domain name to present Internet users with a website that had “the same color scheme, the same layout and the same substantive content” as that of a UDRP complainant, which passing off was aimed at profiting illicitly from access to Internet users’ cryptocurrency accounts).
The Panel thus finds that Complainant has met its obligations of proof under Policy¶4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <aquataliabootscanada.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: April 12, 2023
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