Crown Laboratories, Inc. v. Chen Long
Claim Number: FA2308002055765
Complainant is Crown Laboratories, Inc. (“Complainant”), represented by Joelle Harvill of Envisage Law, North Carolina, USA. Respondent is Chen Long (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bluelizardsunscreenus.com>, registered with Jiangsu Bangning Science & technology Co. Ltd..
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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to Forum electronically on August 1, 2023; Forum received payment on August 1, 2023.
On August 3, 2023, Jiangsu Bangning Science & technology Co. Ltd. confirmed by e-mail to Forum that the <bluelizardsunscreenus.com> domain name is registered with Jiangsu Bangning Science & technology Co. Ltd. and that Respondent is the current registrant of the name. Jiangsu Bangning Science & technology Co. Ltd. has verified that Respondent is bound by the Jiangsu Bangning Science & technology Co. 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 August 8, 2023, Forum served the Complaint and all Annexes, including a Chinese and English Written Notice of the Complaint, setting a deadline of August 28, 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@bluelizardsunscreenus.com. Also on August 8, 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 August 29, 2023 pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed James Bridgeman SC 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
Complainant claims rights in the BLUE LIZARD trademark established by its ownership of the trademark registration described below and goodwill and reputation established by its use of the mark in its skincare business.
In support of its claim to have a protectable goodwill and reputation in the BLUE LIZARD mark, Complainant submits that its brands generally have collectively generated more than a billion dollars in sale and billions of consumer impressions in the United States and around the world, and specifically its sales of BLUE LIZARD branded sunscreen sales accounts for tens of millions of dollars in annual sales.
Complainant asserts that for over 20 years, it has produced and sold mineral and mineral-based sunscreens under the BLUE LIZARD mark. BLUE LIZARD sunscreens are available online via Complainant’s website at <www.BlueLizardSunscreen.com> as well as on <www.Amazon.com>, <www.Walgreens.com>, <www.Target.com>, and <www.Walmart.com>.
Complainant adds that its BLUE LIZARD sunscreens are also available in various brick and mortar retail stores throughout the United States and around the world.
In an annex to the Complaint, Complainant has provided a screen capture of its website at <www.BlueLizardSunscreen.com> with information regarding where the sunscreen can be purchased.
Complainant firstly alleges that the disputed domain name <bluelizardsunscreenus.com> is confusingly similar to Complainant’s BLUE LIZARD mark because it fully consists of the BLUE LIZARD mark in its entirety.
It is further contended that the addition of the common English abbreviation for the United States “us” in the disputed domain name does not distinguish the disputed domain name from Complainant’s BLUE LIZARD mark because BLUE LIZARD is clearly identifiable and the primary and dominant element of the disputed domain name. See Experian Information Solutions, Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095 (“. . . if a domain name incorporates a complainant’s mark in its entirety, it is confusingly similar to that mark despite the addition of other words.”).
Complainant next alleges that Respondent has no rights or legitimate interests in the disputed domain name, arguing that the burden is on Respondent to establish rights or legitimate interests in the disputed domain name See, e.g., PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor, WIPO Case No. D2003-0174.
Complainant adds that its extensive use of the BLUE LIZARD predates the registration and first use of the disputed domain name in 2023 as shown in the Registrar’s WhoIs.
It is argued that there is no relationship between Complainant and Respondent giving rise to any license, permission, or other right by which Respondent could own or use any domain name incorporating or imitating the BLUE LIZARD mark or the <bluelizardsunscreen.com> domain name. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding no rights or legitimate interests where “Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to apply for or use any domain name incorporating any of those marks”).
Complainant asserts that Respondent has never been given any permission by Complainant to register or use the disputed domain name, or any other domain name incorporating or imitating Complainant’s BLUE LIZARD mark.
Furthermore, it is asserted that Respondent is not an authorized affiliate of Complainant and there has never been any business relationship between Complainant and Respondent.
Complainant also asserts that it does not sponsor or endorse Respondent’s activities in any respect and has not provided its consent to Respondent’s use and exploitation of Complainant’s mark in the disputed domain name. See Dr. Ing. h.c. F. Porsche AG v. Ron Anderson, WIPO Case No. D2004-0312 (“right or legitimate interests in such a case [where there is no authorization or license by the Complainant to use its mark] cannot exist unless the Respondent proves that it had the authorization or approval of the trademark rights holder to use and replicate the Complainant’s mark in a registered domain name that is used so openly to associate with the Complainant’s business”).
Next Complainant alleges that the disputed domain name was registered and is being used in bad faith.
Complainant argues that Respondent’s bad faith registration and use of the disputed domain name is established by the fact that (i) the disputed domain name fully incorporates Complainant’s exact BLUE LIZARD mark and Complainant’s BLUELIZARDSUNSCREEN.COM domain name, (ii) the disputed domain name was acquired by Respondent long after Complainant established rights in the BLUE LIZARD mark and was using the <bluelizardsunscreen.com> domain name, (iii) Respondent intentionally uses the disputed domain name to direct Internet users to its own website from which Respondent is seeking to profit through offering counterfeit products.
Complainant contends that the website to which the disputed domain name resolves which has been exhibited in an annex to the Complaint, Complainant argues that the screen capture shows that Respondent’s website mimics Complainant’s official website using the same layout, same pictures, and same products. Complainant invites this Panel to note and compare Complainant’s own website with Respondent’s website, screen captures of each of which are exhibited in an annex to the Complaint.
Complainant adds that Respondent is not licensed or authorized to sell Complainant’s products, and upon information and belief, Respondent is not reselling products at deeply discounted prices as it purports to do on the website to which the disputed domain name resolves but instead is using the disputed domain name as a phishing site.
Complainant asserts that when an Internet user attempts to purchase a product on the website to which the disputed domain resolves, the website does not allow the user to complete the transaction but gathers credit card information; the transaction is then denied; and the user is requested to try another card.
Complainant submits that in setting up the transaction, Respondent has gathered name, address, phone number, email, and credit card information of the unsuspecting user.
Complainant adds that Respondent’s purported online shopping site mimics Complainant’s site and uses Complainant’s own pictures which underscores Respondent’s bad faith, and accordingly, Complainant believes that it is entitled to the remedy requested below.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a skin care company and markets its products with branding that includes BLUS LIZARD mark for which it owns a portfolio of trademark registrations including:
United States Registered Trademark BLUE LIZARD mark, registration number 2,501,179 registered on the Principal Register on October 30, 2001.
Complainant has an established internet presence and is the owner the of the domain name <bluelizardsunscreen.com> which was registered on June 23, 2005 and has been used to market Complainant’s BLUE LIZARD product since at least as early as May 23, 2020.
The disputed domain name <bluelizardsunscreenus.com> was registered on June 27, 2023, and resolves to a purported online shopping site that mimics and uses images from Complainant’s own website, while purporting to offer Complainant’s branded goods at hugely discounted prices.
There is no information available about Respondent, except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the request by the Forum for details of the registration of the disputed domain name in the course of this proceeding.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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”).
Preliminary issue on Language of the Proceeding
Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), provide
“10. General Powers of the Panel
(a) The Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules.
(b) In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.
(c) The Panel shall ensure that the administrative proceeding takes place with due expedition. It may, at the request of a Party or on its own motion, extend, in exceptional cases, a period of time fixed by these Rules or by the Panel.
(d) The Panel shall determine the admissibility, relevance, materiality and weight of the evidence.
11. Language of Proceedings
(a) Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
Complainant requests the Panel to exercise his discretion and decide that notwithstanding that the Registrar has confirmed that Chinese is the language of the registration agreement, that the proceedings should be conducted in English.
Complainant has sought a copy of the Registration Agreement by going to the Registrar’s website and contacting Registrar directly. The Registrar’s website is in English and links to ICANN’s English version of the Registration Agreement. In response to the Forum’s request, the Registrar provided information in English and Chinese and indicated that the Registration agreement is in Chinese. Complainant requests the Panel to consider the following circumstances for conducting the proceeding in English.
(i) The disputed domain name and the website to which it resolves are completely in the English Language as shown in a screen capture exhibited in an annex to the Complaint;
(ii) The disputed domain name incorporates Complainant’s domain name in its entirety and adds the abbreviation for the United States, “us,” at the end of the disputed domain name, thus targeting English speaking internet users from the United States.
(iii) Respondent has provided contact information on the website to which the disputed domain name resolves with an address in the state of Tennessee in the United States.
(iv) On the website to which the disputed domain name resolves, Respondent has provided in the terms of use page that the governing law is the law in Nashville, Tennessee in the United States. The state of Tennessee’s laws are in the English language and the courts conduct proceedings in English.
(v) The website to which the disputed domain name resolves lists prices for products in United States dollars.
(vi) The IP address for the disputed domain name is located in the state of California in the United States.
Complainant submits that this Panel may take these circumstances into consideration and exercise its discretion in a spirit of fairness and justice to both parties. Vans, Inc. v guruoyu, chen fali, WIPO Case No. D2012-0957. When faced with domain names and content of websites all being in English and evidence that Respondent appeared able to communicate in English, Panelist have determined English the language of the proceedings. Camper, S.L. v. zhengmainsen, jolin Kelly, zy, WIPO Case No. D2011-1750.
Having regard to Rules rr. 10-11 and having considered the submissions of Complainant, this Panel agrees and finds that it is appropriate that this proceeding should be conducted in the English language as requested, notwithstanding that r.11(a) designates Chinese, being the language of the registration agreement as the default language of the proceedings.
The reasons for the Panel’s decision is that the record shows that Respondent either understands and carries on his business in the English language or has at its disposal resources which permits him to create, maintain and host an English language website; proceeding in English will not prejudice Respondent, but proceeding in Chinese would impose a burden on Complainant; the website to which the disputed domain name resolves is in the English language.
Furthermore this Panel is satisfied and finds that for the same reasons, Respondent has not been prejudiced by service of documents in this proceeding in the English language, and on the balance of probabilities his failure to engage with this proceeding or to file any timely response is not due to any inability to understand the documents served to date.
Complainant’s Rights
Complainant has provided convincing, uncontested evidence that it has rights in the BLUE LIZARD mark, established by the ownership of the United States registered trademark described above, and its use of the mark in annual international sales of BLUE LIZARD branded sunscreen amounting to tens of millions of dollars.
Confusing Similarity
The disputed domain name <bluelizardsunscreenus.com>, consists of Complainant’s BLUE LIZARD mark in its entirety in combination with the words “sunscreen” and “us”, in combination with the gTLD extension <.com>.
Complainant’s BLUE LIZARD mark is the initial, dominant and only distinctive element in the disputed domain name. The addition of the descriptive word “sunscreen” does not add any distinguishing character and its presence within the disputed domain name does not prevent a finding of confusing similarity.
Neither do the letters “us” prevent a finding of confusing similarity because they would, in context, on the balance of probabilities be taken to refer to the United States.
Similarly, the gTLD extension <.com> does not prevent a finding of confusing similarity as the circumstances of this proceeding, it would be considered to be a necessary technical requirement for a domain name registration,
This Panel finds therefore that the disputed domain name is confusingly similar to the BLUE LIZARD mark, and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights legitimate interests in the disputed domain name arguing that
· the burden is on Respondent to establish rights or legitimate interests in the disputed domain name;
· Complainant’s extensive use of the BLUE LIZARD mark on its sunscreen products predates the registration and first use of the disputed domain name in 2023 as shown in the Registrar’s WhoIs;
· There is no relationship between Complainant and Respondent giving rise to any license, permission, or other right by which Respondent could own or use any domain name incorporating or imitating the BLUE LIZARD mark or the <bluelizardsunscreen.com> domain name;
· Respondent has never been given any permission by Complainant to register or use the disputed domain name, or any other domain name incorporating or imitating Complainant’s BLUE LIZARD mark;
· Respondent is not an authorized affiliate of Complainant and there has never been any business relationship between Complainant and Respondent;
· Complainant does not sponsor or endorse Respondent’s activities in any respect and has not provided its consent to Respondent’s use and exploitation of Complainant’s mark in the disputed domain name.
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.
Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Complainant has adduced clear and convincing, uncontested evidence that it has trademark and service mark rights in the BLUE LIZARD mark which predate the registration and first use of the disputed domain name on June 27, 2023.
The BLUE LIZARD mark is distinctive, and it is used by Complainant to distinguish its sunscreen product. Complainant has an established internet presence and is the owner of the domain name <bluelizardsunscreen.com> which it uses as its official website address.
It is therefore most improbable that the disputed domain name which is composed of the BLUE LIZARD mark, the term “sunscreen” which describes the exact product on which Complainant uses the BLUE LIZARD mark, and the letters “us” which in context infer a reference to the market in the United States, was chosen and registered without knowledge of Complainant.
This Panel finds therefore that on the balance of probabilities the disputed domain name was registered in bad faith with Complainant in mind to take predatory advantage of Complainant’s goodwill and reputation in the BLUE LIZARD mark.
The screen captures annexed to the Complaint show that the website to which the disputed domain name resolves contains images which are identical to Complainant’s own website. Complainant has averred that these images are used without license or permission.
As a consequence, Respondent is using the disputed domain name within its website address to impersonate Complainant.
The screen captures also show that Respondent is purporting to offer Complainant’s branded goods at 25% of the normal price. Complainant has alleged that Respondent is using the website to which the disputed domain name resolves to engage in phishing but has not adduced sufficient evidence to support this allegation. Nonetheless, on the balance of probabilities the goods offered at 25% of normal price are hardly bona fide products.
This Panel finds therefore that Respondent is using the disputed domain name to attract and confuse Internet users, and to misdirect Internet traffic to Respondent’s website, and upon arrival at Respondent’s website the Internet user is presented with a website that mimics Complainant’s own website. Such use of the disputed domain name to mislead Internet users and to impersonate Complainant constitutes bad faith for the purposes of the Policy.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has succeeded in the third element of the test in Policy paragraph 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 <bluelizardsunscreenus.com> domain name be TRANSFERRED from Respondent to Complainant.
___________________________________________
James Bridgeman SC
Panelist
Dated: August 31, 2023
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