DECISION
Little Sleepies, LLC v. RuiYuan Guo / WuHanHuangHangWangLuoKeJiYouXianGongSi
Claim Number: FA2312002075174
PARTIES
Complainant is Little Sleepies, LLC ("Complainant"), represented by Evi T. Christou of Banner & Witcoff, Ltd., District of Columbia, USA. Respondent is RuiYuan Guo / WuHanHuangHangWangLuoKeJiYouXianGongSi ("Respondent"), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <littlesleepiesus.com>, registered with Chengdu West Dimension Digital 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.
The Honorable Neil Anthony Brown KC as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on December 13, 2023; Forum received payment on December 13, 2023.
On December 20, 2023, Chengdu West Dimension Digital Technology Co., Ltd. confirmed by e-mail to Forum that the <littlesleepiesus.com> domain name is registered with Chengdu West Dimension Digital Technology Co., Ltd. and that Respondent is the current registrant of the name. Chengdu West Dimension Digital Technology Co., Ltd. has verified that Respondent is bound by the Chengdu West Dimension Digital 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 December 26, 2023, Forum served the Complaint and all Annexes, including a Chinese and English Written Notice of the Complaint, setting a deadline of January 16, 2024 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@littlesleepiesus.com. Also on December 26, 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 in Chinese and English.
Complainant submitted an Additional Submission which was received by Forum on January 4, 2024.
On January 17, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC 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 name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDING
According to the Registrar's verification response, the registration agreement for the disputed domain name is written in Chinese. Rule 11(a) provides that the language of the proceedings is the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the case. Complainant has submitted pursuant to Rule 11(a) that the proceeding should be conducted in English. When considering such submissions it is established practice also to take UDRP Rules 10(b) and (c) into consideration to ensure fairness and justice to both parties. Factors which previous panels have seen as important when determining submissions under Rule 11(a) include evidence showing that the respondent can understand the language of the complaint, the language of the domain name, the content on any web pages resolving from the domain name, prior correspondence between the parties, and potential unfairness or unwarranted delay in ordering translation of the pleadings and the Decision. See Fair Isaac Corporation v. AKPOVO Chidiac, FA 2034648 (Forum Apr. 12, 2023) (finding panel has discretion to conduct proceedings in English contrary to registration agreement given evidence that respondent understands the language). See also, Maxim Integrated Products, Inc. v. wang xing xing, FA 2035248 (Forum Apr. 11, 2023) ("Respondent … advertise its products and services in English, and the resolving website asks in English for potential customers to contact Respondent directly...."); United Parcel Service of America, Inc. v. MEHKMET ISYAN AYIRKAN, FA 2035819 (Forum Apr. 11, 2023) ("Factors … seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would demonstrate familiarity with the English language, filing of a trademark registration with an entity which shows an understanding of the English language, and any evidence (or lack thereof) exhibiting Respondent's understanding of the … language included in the Registration Agreement."); POC Sweden AB d/b/a POC North America v. Ma Fanghua, FA 2034043 (Forum Apr. 4, 2023) ("The Domain Name contains an English word, resolves to a website ("Respondent's Website") which is entirely in English and contains material copied from Complainant's English-language website.").
In the present case, the Complainant submits that the proceeding should be conducted in the English language for several reasons with which the Panel agrees and which are persuasive reasons why the proceeding should be conducted in English. First, the domain name itself is in the English language and accordingly it must be assumed that the creator of the domain name has some facility with that language and wanted English-speaking internet users to read it as an English language domain name. Secondly, the domain name has an English language addition to the Complainant's LITTLE SLEEPIES trademark, namely the letters "us" signifying the United States and showing that the Respondent was aiming at the US market. Thirdly, the domain name is registered in the generic Top Level Domain ".com" which is a largely English-speaking Domain. Fourthly, as the Complainant rightly points out, the domain name is used for purposes which include the perpetration of an English-language phishing scheme. The Complainant's Exhibit 7 shows that the domain name resolves to an English language website and that the scheme being promoted by the Respondent uses colloquial English, with products named and described in English, the prices in dollars, inducements such as "Rachel, from our E-Commerce team; says the more the merrier! She loves the a mix & match moments to keep the holiday cheer flowing all season long…" and instructions such as "Pay with credit card." Indeed, the Panel does not see any content on the website in any language other than English. It is therefore clear that the entire operation is aimed at an English-speaking market. The Respondent must be assumed to have a good working facility with the English language. It is therefore appropriate that the proceeding be conducted in English.
In any event, if the proceeding were not conducted in English, it would have to be conducted in Chinese and all the documents would have to be translated into Chinese, which would be an expensive and unnecessary process.
The Panel therefore determines that pursuant to Rule 11(a), the proceeding will be conducted in the English language.
PARTIES' CONTENTIONS
A. Complainant
Complainant made the following contentions.
1. Complainant is a United States company that is a leading seller of sleepwear, apparel and accessories.
2. Complainant has registered trademark rights in the LITTLE SLEEPIES mark by virtue of its registration of the mark with the United States Patent and Trademarks Office ("USPTO"), Registration No. 5561864, registered on September 11, 2018 and other national and international registrations for LITTLE SLEEPIES and derivatives. The Complainant also has common law trademark rights in the LITTLE SLEEPIES trademark and has had them since 2018 (collectively "the LITTLE SLEEPIES trademark").
3. The LITTLE SLEEPIES trademark has become prominent, has attracted substantial goodwill and is uniquely associated with the Complainant's goods and services.
4. Respondent registered the <littlesleepiesus.com> domain name on December 5, 2023 ("the disputed domain name").
5. In so doing, Respondent has incorporated in the disputed domain name the entirety of Complainant's LITTLE SLEEPIES trademark without any authority to do so, and has added the generic term "us" and the generic Top Level Domain ".com", neither of which negates a finding of confusing similarity.
6. Respondent caused the <littlesleepiesus.com> disputed domain name to resolve to a website that initially promoted and offered to sell the Complainant's products, but as from December 21, 2023 it no longer resolves to an active webpage.
7. The disputed domain name is identical and /or confusingly similar to the Complainant's LITTLE SLEEPIES trademark.
8. The Respondent has no rights or legitimate interests in the disputed domain name. That is so because the Respondent:
(a) has caused the domain name to resolve to a website that initially promoted and offered to sell the Complainant's trademarked products, but which, from December 21, 2023, no longer resolves to an active webpage;
(b) has no trademark rights in LITTLE SLEEPIES;
(c) has never been authorized by the Complainant to use the LITTLE SLEEPIES trademark in a domain name or in any other way;
(d) has sought to pass itself off as the Complainant;
(e) has used paid advertisements to divert users to the Respondent's offending website so as to perpetrate a phishing scheme;
(f) is not commonly known by the domain name;
(g) since December 21, 2023 has caused the domain name to resolve to an inactive webpage and to produce an error message;
(h) has not utilized the domain name for any legitimate business purpose or for a bona fide offering of goods or services within the meaning of Policy ¶4(c)(i); and
(i) has not made a legitimate noncommercial or fair use of the domain name within the meaning of Policy ¶4(c)(iii).
9. The Respondent has registered and used the disputed domain name in bad faith. That is so because the Respondent:
(a) clearly had actual knowledge of the Complainant and its LITTLE SLEEPIES trademark when it registered and used the domain name;
(b) created a website that claimed to be a store front where buyers could purchase the Complainant's branded goods and which was calculated to give the appearance of an association with the Complainant and to earn money for the Respondent;
(c) has intentionally attempted to attract, for commercial gain, internet users to the resolving website by creating confusion with the LITTLE SLEEPIES trademark within the meaning of Policy ¶4(b) (iv), again to make money;
(d) has used a privacy service to hide its identity;
(e) has used the Complainant's LITLE SLEEPIES trademark to mislead internet users by passing itself off as Complainant;
(f) has engaged in passive holding of the domain name;
(g) has been the Respondent in recent proceedings in Forum, showing that it is a repeat offender;
(h) has, by virtue of all of the facts, shown that it registered and used the disputed domain name in bad faith.
10. The Complainant has cited numerous prior UDRP decisions to support its contentions.
11. It is therefore submitted by the Complainant that it has shown all of the elements that it must establish and that the domain name should be transferred from the Respondent to the Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
C. Additional Submissions
The Complainant made an additional submission.
D. The Respondent did not reply to the Complainant's additional submission.
FINDINGS
1. Complainant is a United States company that is a leading seller of sleepwear, apparel and accessories.
2. Complainant has established by the evidence that it has registered trademark rights in the LITTLE SLEEPIES mark by virtue of its registration of the mark with the United States Patent and Trademarks Office ("USPTO"), Registration No. 5561864, registered on September 11, 2018 and other national and international registrations for LITTLE SLEEPIES and derivatives. The evidence also shows that the Complainant has common law trademark rights in the LITTLE SLEEPIES trademark and that it has had those rights since 2018 (collectively "the LITTLE SLEEPIES trademark")
3. The LITTLE SLEEPIES trademark has become well known, has attracted substantial goodwill and is uniquely associated with the Complainant's goods and services.
4. Respondent registered the <littlesleepiesus.com> domain name on December 5, 2023.
5. Respondent caused the <littlesleepiesus.com> disputed domain name to resolve to a website that trades on the Complainant's goodwill and derives commercial benefit from the Respondent's falsely asserted association with the Complainant, initially promoted and offered to sell the Complainant's LITTLE SLEEPIES products, but as from December 21, 2023 resolves to an inactive webpage that produces an error message.
6. By reason of the matters aforesaid and as demonstrated by the evidence, the disputed domain name is confusingly similar to the Complainant's LITTLE SLEEPIES trademark, the Respondent has no rights or legitimate interests in the domain name and the domain name has been registered and used in bad faith.
7. Accordingly, the disputed domain name should be transferred to the Complainant.
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: 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 first question that arises is whether the Complainant has rights in a trademark or service mark on which it may rely.
The evidence shows that the Complainant has established its registered trademark rights in the LITTLE SLEEPIES mark by virtue of its registration of the mark with the United States Patent and Trademarks Office ("USPTO"), Registration No. 5561864, registered on September 11, 2018 and other national and international registrations for LITTLE SLEEPIES and derivatives. The evidence also shows that the Complainant has common law trademark rights in the LITTLE SLEEPIES trademark and that it has had those rights since 2018 (collectively "the LITTLE SLEEPIES trademark").
The Complainant has adduced evidence of the foregoing registrations, which the Panel has examined and which it finds to be in order. Registration of a trademark with a recognized authority such as the USPTO is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i) and that the Complainant "has" a trademark, which is the element that it must prove and which it has established. Since Complainant has registered and established its rights in the LITTLE SLEEPIES trademark through its widespread registration and use of the mark, the Panel finds that the Complainant has rights in the LITTLE SLEEPIES trademark under Policy ¶ 4(a)(i).
In that regard, the Panel finds that the registered trademark was registered and the common law trademark rights were acquired well prior to the Respondent's registration of the disputed domain name on December 5, 2023.
The next question that arises is whether the disputed domain name is identical or confusingly similar to the Complainant's LITTLE SLEEPIES trademark. The Panel finds that the disputed domain name is virtually identical to the LITTLE SLEEPIES trademark because only the letters "us", signifying the United States, have been added to the dominant portion of the trademark. The domain name is therefore confusingly similar to the trademark as, in constructing it, the Respondent has both added the letters "us" and also the generic top-level domain ".com", neither of which can negate the confusing similarity between the domain name and the trademark. Indeed the addition of the letters "us" has the effect of indicating that the domain name is meant to cover activities carried out under the Complainant's trademark in the United States. Panels routinely hold that neither of these factors can negate a finding of confusing similarity which exists, as it does in the present case. Taken as a whole, the domain name means and would be interpreted by internet users to mean that it is invoking the Complainant and its LITTLE SLEEPIES trademark and its use by the Respondent with the approval of the Complainant. It is therefore clear that the domain name is similar to the trademark and confusingly so.
The Panel therefore finds that the disputed domain name is confusingly similar to Complainant's LITTLE SLEEPIES trademark under Policy ¶ 4(a)(i).
The Complainant has thus made out the first of the three elements that it must establish.
Rights or Legitimate Interests
The Panel finds on the evidence that the Complainant has made out a prima facie case that arises from the following considerations:
(a) the Respondent has chosen to take the Complainant's LITTLE SLEEPIES trademark and to use it in its domain name, adding only the letters "us" and ".com" which do not negate the confusing similarity between the domain name and the trademark, generating the clear impression that it is referring to and invoking the Complainant's LITTLE SLEEPIES trademark and that the Respondent is authorized to do so. The Respondent had no right to do any of this, meaning that there is no foundation at all for finding that it had the right to do so or that it gave the Respondent any legitimate interest in the domain name so created;
(d) having registered the disputed domain name, the Respondent then set about causing it to resolve to a website that initially promoted and offered to sell the Complainant's products, but as from December 21, 2023 the Respondent caused it to resolve to an inactive webpage;
(e) the former could not give the Respondent a right or legitimate interest in the domain name as it was dishonestly asserting that genuine products could be bought via the website and with the approval of the Complainant and this was a clear infringement of the trademark; moreover an intrinsic part of the use that the Respondent made of its website was to perpetrate an illegal phishing scheme;
(f) the latter likewise could not give the Respondent a right or legitimate interest in the domain name because it was still an unauthorized use of the trademark in the domain name, even although it then presented an error message and this also was an infringement of the trademark and gave rise to the potential for it to be used thereafter for an unlawful purpose;
(g) both uses of the domain name were attempts by the Respondent to pass itself off as the Complainant;
(h) the evidence of these matters is contained in the Complainant's Exhibits 7 , 8 and 9. The first exhibit shows the website of the Respondent when it was active and it shows a wide range of products for sale under the label "little sleepies", with prices, delivery arrangements, an alleged testimonial from the founder of Little Sleepies, a cart for purchases, facilities for paying by credit card if details are provided by the purchaser, a form to provide personal information and all the other accoutrements a buyer would expect to see on a website of this sort. Exhibit 8 is evidence of search results from the use of Bing.com which shows products promoted under the name "Little Sleepies" and links to the Respondent's website where purchases may allegedly be made. All of this evidence shows an intention to use the Complainant's trademark, to pretend that the Respondent is the Complainant, to conduct business allegedly with the permission of the Complainant and of course to sell goods under the Complainant's name and trademark. Exhibit 9 shows that the domain name currently produced the error message "This site can't be reached."
(i) In all, the only conclusion that can be reached on the evidence is that the Respondent is using the Complainant's trademark and business to make money by offering the same or counterfeit products to those of the Complainant. It is clearly deceptive because the whole thrust of the offer is that it is a legitimate LITTLE SLEEPIES service that is being offered, which is an entirely false assertion;
(j) the evidence shows that the Respondent is not commonly known by the domain name;
(k) the evidence also shows that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. Indeed, the opposite is the case, as the evidence shows that the Respondent is not using it for a bona fide offering of goods or services but is using it to resolve to a website and thus falsely asserting that it can offer legitimate LITLE SLEEPIES goods and services promoted by the website. This is tantamount to a fraud on internet users which cannot give rise to a right or legitimate interest in the domain name;
(l) the evidence also shows that the domain name is not being used for a legitimate non-commercial or fair use of the domain name; the use of the domain name has been demonstrated to be illegitimate; it also cannot be said to be non-commercial in any sense as it clearly is intended to be used by the Respondent for a financial purpose, namely to make money; nor is it fair, as it is clearly unfair to use a trademark without permission and to pretend that it is being used with the approval of the Complainant as trademark owner;
(m) the evidence shows that there is no relationship between the Complainant and the Respondent and that the Complainant has not authorized or licensed the Respondent to register the domain name or to use the LITTLE SLEEPIES trademark in any way;
(n) the Complainant and the Respondent are not affiliated, connected, or associated with each other;
(o) all of the above considerations disprove any suggestion that the Respondent has a right or legitimate interest in the domain name.
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response and did not reply to the Complainant's additional submission or attempt by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
Registration and Use in Bad Faith
It is clear that to establish bad faith for the purposes of the Policy, the Complainant must show that the disputed domain name was registered and used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) are not exclusive but that UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
The Complainant has submitted that the Respondent has registered and used the disputed domain name in bad faith on several grounds, namely that the Respondent:
(a) clearly had actual knowledge of the Complainant and its LITTLE SLEEPIES trademark when it registered and used the domain name;
(b) created a website that claimed to be a store front where buyers could purchase the Complainants branded goods and which was calculated to give the appearance of an association with the Complainant and to earn money for the Respondent;
(c) has intentionally attempted to attract, for commercial gain, internet users to the resolving website by creating confusion with the LITTLE SLEEPIES trademark within the meaning of Policy ¶4(b) (iv), again to make money;
(d) has used a privacy service to hide its identity;
(e) has used the Complainant's LITLE SLEEPIES trademark to mislead internet users;
(f) has engaged in passive holding of the domain name;
(g) has been the Respondent in recent proceedings in Forum, showing that it is a repeat offender;
(h) has, by virtue of all of the facts, shown that it registered and used the disputed domain name in bad faith.
The Panel finds that each of the grounds relied on by the Complainant has been made out by the detailed case presented by the Complainant and it is not necessary to repeat all of the evidence that points unequivocally to that conclusion.
The Panel will add, however, that Respondent has registered and used the domain name in bad faith because the evidence shows that the Respondent:
(a) clearly had actual knowledge of the Complainant and its LITTLE SLEEPIES trademark when it registered and used the domain name; that is because the LITTLE SLEEPIES trademark is obviously well known and the Respondent must have had actually knowledge of it because it took the mark, used it in its domain name and website and tried to pass itself off as the Complainant;
(b) created a website that claimed to be a store front where buyers could purchase the Complainant's branded goods and which was calculated to give the appearance of an association with the Complainant and to earn money for the Respondent but which in reality was a fraud and a thinly disguised framework for running a phishing scheme;
(c) intentionally attempted to attract, for commercial gain, internet users to the resolving website by creating confusion with the LITTLE SLEEPIES trademark within the meaning of Policy ¶ 4(b)(iv), again to make money; the Respondent obviously tried to pretend that it was the Complainant or was authorized by it and set about confusing internet users;
(d) moreover, it set about engaging in conduct that showed it was intending to disrupt the Complainant's business within the Policy ¶4(b) (iii); and as
(e) all of the other grounds relied on by the Complainant have been well and truly proved by the evidence.
Finally, in addition to the specific provisions of the Policy and having regard to the totality of the evidence, the Panel finds that, in view of the Respondent's registration of the disputed domain name using the LITTLE SLEEPIES trademark and in view of the conduct that the Respondent has engaged in when using the domain name for its website and subsequently using it to resolve to an inactive webpage producing an error message, the Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
The Complainant has correctly cited several prior UDRP decisions that support its contentions.
Complainant has thus made out the third of the three elements that it must establish.
Complainant has established all of the elements that it must show under the Policy and is therefore entitled to the relief it seeks.
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 <littlesleepiesus.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC, Panelist
Dated: January 21, 2024
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