The Fragrance Outlet, Inc. v. wenda chen
Claim Number: FA2307002052082
Complainant is The Fragrance Outlet, Inc. (“Complainant”), represented by Rachel Hofstatter of Honigman LLP, District of Columbia, USA. Respondent is wenda chen (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fragranceoutletan.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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to Forum electronically on July 6, 2023; Forum received payment on July 6, 2023.
On July 7, 2023, Name.com, Inc. confirmed by e-mail to Forum that the <fragranceoutletan.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 July 12, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 1, 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@fragranceoutletan.com. Also on July 12, 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 August 3, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Petter Rindforth 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 is one of the largest retailers of genuine designer fragrances, perfumes and colognes and related accessories in USA. Complainant asserts rights in the FRAGRANCE OUTLET trademark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 5,970,209, registered January 28, 2020). The <fragranceoutletan.com> domain name is identical or confusingly similar to Complainant’s trademark because the disputed domain name consists of the entirety of Complainant’s FRAGRANCE OUTLET trademark with the addition of the term “an” at the end as well as the “.com” generic top level domain (“gTLD”).
Respondent has no legitimate interests in the <fragranceoutletan.com> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed Respondent any rights in the FRAGRANCE OUTLET trademark. Additionally, 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 is impersonating Complainant to obtain personal information from consumers.
Respondent registered and uses the <fragranceoutletan.com> domain name in bad faith. Respondent is impersonating Complainant, thus disrupting Complainant’s business. Also, Respondent is using the disputed domain name in furtherance of a phishing scheme. Additionally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the FRAGRANCE OUTLET trademark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registrations:
No. 5,970,209 FRAGRANCE OUTLET (word), registered January 28, 2020 for services in Intl Class 35; and
No. 5,970,210 FRAGRANCE OUTLET (fig), registered January 28, 2020 for services in Intl Class 35.
The disputed domain name <fragranceoutletan.com> domain name was registered on May 19, 2023.
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 asserts rights in the FRAGRANCE OUTLET trademark (e.g. Reg. No. 5,970,209, registered January 28, 2020) based upon registration with the USPTO. Registration of a trademark with the USPTO is a valid showing of rights in a trademark. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Since Complainant provides evidence of registration of the FRAGRANCE OUTLET trademark with the USPTO, the Panel find that the Complainant has rights in the trademark under Policy 4(a)(i).
Complainant argues that Respondent’s <fragranceoutletan.com> domain name is identical or confusingly similar to Complainant’s trademark. The addition of a generic term and a gTLD fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”). Here, the disputed domain name consists of the entirety of Complainant’s FRAGRANCE OUTLET trademark with the addition of the term “an” (a suffix occurring originally in adjectives borrowed from Latin) at the end as well as the “.com” gTLD. As such, the Panel find that the disputed domain name is at least confusingly similar to Complainant’s trademark per Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first 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, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Complainant contends that Respondent lacks rights or legitimate interests in the <fragranceoutletan.com> domain name since Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed to Respondent any rights in the FRAGRANCE OUTLET trademark. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s trademark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “wenda chen,” and there is no other evidence to suggest that Respondent was authorized to use the FRAGRANCE OUTLET trademark. Therefore, the Panel find that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant claims that Respondent fails to use the <fragranceoutletan.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent has fraudulently impersonated Complainant by using the disputed domain name to deceptively solicit credit card information and the personal information of Complainant’s consumers, and continues to do so now. Passing off as complainant in furtherance of a phishing scheme is indeed not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Juno Online Servs., Inc. v. Nelson, FA 241972 (Forum Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use). Here, Complainant provides evidence of this fraud. Thus, the Panel agree with Complainant’s conclusion and find that the Respondent fails to use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).
Complainant claims that Respondent registered and uses the <fragranceoutletan.com> domain name in bad faith since Respondent fraudulently and illegally impersonated Complainant in advertisements and in receipts in an attempt to deceive consumers and solicit a transfer of funds to Complainant. Such use of the disputed domain name by Respondent to pretend that it is Complainant or that it is associated with Complainant shows that Respondent registered the domain for the purpose of disrupting the business of Complainant and indicates bad faith under Policy ¶ 4(b)(iv). See Nestlé Waters North America, Inc. v. Domain Administrator / Fundacion Privacy Services LTD, FA 1792308 (Forum July 22, 2018) (Finding Respondent uses the domain names to point to a site which offers links relating to Complainant’s business. “Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation or endorsement of the web site likely to disrupt the business of the Complainant.”). Here, Complainant provides evidence of this fraudulent impersonation. The Panel agrees, and find that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Complainant contends that Respondent registered and uses the <fragranceoutletan.com> domain name in bad faith due to the fact that Respondent knowingly and purposefully uses the disputed domain name in an enterprise to deceive and mislead consumers into providing their credit card numbers and personal information after luring them into purported purchases from Facebook ads using Complainant’s FRAGRANCE OUTLET registered word and logo trademarks. Use of the disputed domain name to engage in fraudulent phishing against Complainant is a clear bad faith registration and use under Policy ¶ 4(a)(iii). See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1506001622862 (Forum Aug. 10, 2015) (finding that the respondent’s apparent use of the disputed domain name in furtherance of a ‘phishing’ scheme further established its bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii)). Here, Complainant provides evidence of this fraud and printouts from the disputed domain name’s website – redirecting to show a CNAME error on June 7, 2023 and used to advertise goods for sale under a Foreyes mark on July 2, 2023. Based on the clear evidence provided by the Complainant, the Panel find that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Complainant argues that Respondent had knowledge of Complainant’s rights in the FRAGRANCE OUTLET trademark at the time of registering the <fragranceoutletan.com> domain name. The Panel disregards arguments of bad faith based on constructive notice as UDRP case precedent declines to find bad faith as a result of constructive knowledge. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Instead, the Panel choose to determine whether Respondent had actual knowledge of Complainant's rights in the trademark prior to registering the disputed domain name as actual knowledge can adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”). To support this assertion, Complainant points to the goodwill associated with the FRAGRANCE OUTLET name and trademark. As such, the Panel find it likely that Respondent did have actual knowledge of Complainant’s right in its trademark, which support a finding of bad faith under 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 <fragranceoutletan.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: August 14, 2023
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