DECISION

 

VA International, LLC v. Yusen Wu

Claim Number: FA2310002064713

 

PARTIES

Complainant is VA International, LLC ("Complainant"), represented by Yuo-Fong C. Amato of VA International, LLC, Pennsylvania, USA. Respondent is Yusen Wu ("Respondent"), Heilongjiang, China.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <swimsuitvitamin.com> and <swimvitamin.com>, registered with Hong Kong Juming Network Technology Co., Ltd. and Hong Kong Juming Network Technology Co., Ltd.

 

PANEL

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.

 

Paul M. DeCicco, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on October 4, 2023; Forum received payment on October 4, 2023.

 

On October 7, 2023, Hong Kong Juming Network Technology Co., Ltd. and Hong Kong Juming Network Technology Co., Ltd confirmed by e-mail to Forum that the <swimsuitvitamin.com> and <swimvitamin.com> domain names are registered with Hong Kong Juming Network Technology Co., Ltd. and Hong Kong Juming Network Technology Co., Ltd and that Respondent is the current registrant of the names. Hong Kong Juming Network Technology Co., Ltd. and Hong Kong Juming Network Technology Co., Ltd have verified that Respondent is bound by the Hong Kong Juming Network Technology Co., Ltd. and Hong Kong Juming Network Technology Co., Ltd registration agreements 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 October 9, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 30, 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@swimsuitvitamin.com, postmaster@swimvitamin.com. Also on October 9, 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 October 31, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco, 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant contends as follows:

 

Complainant and its predecessors have been selling VITAMIN A®-branded swimwear since 1996. The swimwear, made from sustainable materials, VITAMIN A®-branded swimwear is well-known by consumers as the go-to brand for swimsuits that are all about feeling good, looking good, and doing good. Complainant sells VITAMIN A®-branded swimwear through licensed retailers, and directly to end consumers through the official, authorized e-commerce website located at www.vitaminaswim.com.

 

Complainant has registered its VITAMIN A trademark with the USPTO. Respondent's domain names are confusingly similar to Complainant's trademark as they each contains a misspelled version of Complainant's mark where the "A" has been deleted, prefixed with the suggestive terms "swimsuit" or "swim," and with all followed by the "com" top-level domain name.

 

Respondent has no rights or legitimate interests in the at-issue domain names. Respondent is not authorized to use Complainant's trademark. Furthermore, the domain name is no used in connection with a bona fide offering of goods or services and Respondent has never been known by either domain name.

 

Respondent registered and uses the at-issue domain names in bad faith. The at-issue domain names address websites appearing like Complainant's genuine website that purportedly offer to sell unauthorized or counterfeit products offered under the VITAMIN A brand.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant has rights in the VITAMIN A trademark.

 

Respondent is not affiliated with Complainant and had not been authorized to use Complainant's trademark in any capacity.

 

Respondent registered the at‑issue domain names after Complainant acquired rights in VITAMIN A.

 

Respondent uses the at-issue domain names to address a website using Complainant's trademark and trade dress offering VITAMIN A swimwear that has been improperly obtained or is counterfeit.

 

DISCUSSION

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").

 

Identical and/or Confusingly Similar

 

The at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.

 

Complainant shows that it has USPTO registrations for its VITAMIN A trademark. Any of such registrations is sufficient to demonstrate Complainant's rights in the VITAMIN A mark under Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Jimmy Yau, FA 1764034 (Forum Jan. 25, 2018) ("The Panel finds that complainant has rights in BLOOMBERG mark under Policy ¶ 4(a)(i) based upon its registration with multiple trademark agencies, including the USPTO.").

 

Respondent's swimsuitvitamin.com> and <swimvitamin.com> domain names each contain Complainant's VITAMIN A trademark less its "A" prefixed by the descriptive term "swimsuit" or "swim", with all followed by the ".com" top-level domain name. The differences between either of the at-issue domain names and Complainant's VITAMIN A trademark are insufficient to distinguish either domain name from VITAMIN A for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent's swimsuitvitamin.com> and <swimvitamin.com> domain names are each confusingly similar to Complainant's VITAMIN A trademark. See Myspace, Inc. v. Kang, FA 672160 (Forum June 19, 2006) (finding that the <myspce.com> domain name was confusingly similar to the complainant's MYSPACE mark and the slight difference in spelling did not reduce the confusing similarity); See also See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) ("Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element."); 

 

Rights or Legitimate Interests

 

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. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant's prima facie showing acts conclusively.

 

Respondent lacks both rights and legitimate interests in respect of each at-issue domain name. Respondent is not authorized to use Complainant's trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of any of the at‑issue domain names. 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 at-issue domain names identifies their registrant as "Yusen Wu" and the record before the Panel contains no evidence that otherwise tends to show that Respondent is commonly known by either of the at-issue domain names. The Panel therefore concludes that Respondent is not commonly known by either at-issue domain names for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).

 

Respondent's at-issue domain names address websites that are designed to appear as if authorized by, or otherwise endorsed, by Complainant. Notably, the websites copy the look and feel of Complainant's genuine website and display Complainant's VITAMIN A trademark and images related to VITAMIN A products, while offering suspected counterfeit versions of such products for sale. Respondent's use of the domain names in this manner constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a non-commercial or fair use under Policy ¶ 4(c)(iii). See Watts Water Technologies Inc. v. wo ci fa men zhi zao (kun shan) you xian gong si, FA 1740269 (Forum Aug. 11, 2017) ("Respondent has used the domain name to resolve to a website that mimics the color scheme associated with Complainant's WATTS brand and displays counterfeit versions of Complainant's products for purchase in an attempt to pass itself off as Complainant… [therefore], the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.").

 

Given the forgoing, Complainant satisfies its initial burden and demonstrates Respondent's lack of rights and lack of legitimate interests in respect of each at-issue domain names pursuant to Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

As discussed below without being exhaustive, circumstance are present which allow the Panel to conclude that Respondent acted in bad faith regarding each at-issue domain name, pursuant to paragraph 4(a)(iii) of the Policy.

 

Respondent misappropriates Complainant's trademark to use in the at-issue domain names and associated websites so that it may attempt to pass itself off as Complainant. Respondent thereby intends to attract consumers to its commercial websites so visitors may purchase suspected counterfeit VITAMIN A products or otherwise be defrauded by Respondent. Respondent's use of the at-issue domain names to deceive internet users in this manner disrupts Complainant's business and shows Respondent's bad faith registration and use of the at-issue domain names pursuant to Policy ¶ 4(b)(iii) and/or Policy ¶ 4(b)(iv). See Ontel Products Corporation v. waweru njoroge, FA1762229 (Forum December 22, 2017) ("Respondent's primary offering seem to be counterfeits of Complainant's toy car products. Respondent's use of the <magictrackscars.com> domain name is thus disruptive to Complainant's business per Policy ¶ 4(b)(iii)"); see also, Carey Int'l, Inc. v. Kogan, FA 486191 (Forum July 29, 2005) ("[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith under Policy ¶ 4(b)(iv)."); see also, Russell & Bromley Limited v. Li Wei Wei, FA 1752021 (Forum Nov. 17, 2017) (finding the respondent registered and used the at-issue domain name in bad faith because it used the name to pass off as the complainant and offer for sale competitive, counterfeit goods).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <swimsuitvitamin.com> and <swimvitamin.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Paul M. DeCicco, Panelist

Dated: October 31, 2023