DECISION

 

Little Sleepies, LLC v. Qing Zhang

Claim Number: FA2401002077613

PARTIES

Complainant is Little Sleepies, LLC ("Complainant"), represented by Evi T. Christou of Banner & Witcoff, Ltd., District of Columbia, USA. Respondent is Qing Zhang ("Respondent"), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <littlesleepies.org>, registered with West263 International Limited.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Steven M. Levy, Esq. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 3, 2024; Forum received payment on January 3, 2024.

 

On January 4, 2024, West263 International Limited confirmed by e-mail to Forum that the <littlesleepies.org> domain name is registered with West263 International Limited and that Respondent is the current registrant of the name. West263 International Limited has verified that Respondent is bound by the West263 International 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 January 10, 2024, Forum served the Complaint and all Annexes, including a Chinese and English Written Notice of the Complaint, setting a deadline of January 30, 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@littlesleepies.org. Also on January 10, 2024, 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.

 

On January 31, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Steven M. Levy, Esq. 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

The Panel notes that the Registration Agreement for the disputed domain name is written in Chinese, thereby initially making this the language of the proceedings pursuant to Rule 11(a). However, Complainant requests that this Panel exercise its discretion, under Rules 10(b) and (c) and determine that English be the language of the proceedings. In support of its request, Complainant notes that the disputed domain name resolves to a website entirely in English, contains material copied from Complainant's English-language website, offers goods for sale in US Dollars, and contains, on its "Call to Us" page, a copy of Complainant's own mailing address in Los Angeles, California, where English is a predominant language. The Panel notes Complainant's submission of screenshots of Respondent's website and these do appear entirely in the English language. Finally, Forum has provided notice of these proceedings to the Respondent in both Chinese and English, yet the Respondent has not provided a Response or made any other submission in this case. In Zappos.com, Inc. v. Zufu aka Huahaotrade, D2008-1191 (WIPO Oct. 15, 2008) the Panel held that proceedings could be conducted in English even though the registration agreement was in Chinese where "the disputed domain resolves to a website [that] is exclusively in English, from which can be reasonably presumed that the Respondent has the ability to communicate in English in order to conduct his business over the website in English". In light of the fact that Respondent's website displays content entirely in English and taking into account its default in this case and the delay and further expense that would be caused from requiring the Complainant to submit documents in Chinese, the Panel determines that the remainder of these proceedings may be conducted in English without prejudice to the Respondent.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant is a leading seller of sleepwear, apparel, and accessories. Since at least as early as 2018, Complainant has invested significant time and money in the advertisement, promotion, and protection of the trademark LITTLE SLEEPIES as used in connection with the promotion and sale of its products. It operates its website at the address www.littlesleepies.com and it owns a number of trademark registrations for the mark in the United States, Canada, Australia, the European Union, and the United Kingdom (e.g., United States Patent and Trademark Office Reg. No. 5561864 registered on September 11, 2018). Respondent's domain name <littlesleepies.org>, registered on December 15, 2023, is identical to Complainant's mark as it adds only the ".org" TLD.

 

Respondent has no rights or legitimate interests in the disputed domain name where it has used it for a website that passes itself off as Complainant and claims to offer goods which are identical to those offered by Complainant. It also seeks to steal personal and financial information from users of its site.

 

The <littlesleepies.org> domain name was registered and is used in bad faith as its former resolving website passes itself off as Complainant. It is now inactive and passively held which further supports a finding of bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

-       Complainant owns trademark rights to the LITTLE SLEEPIES mark and the <littlesleepies.org> domain name is identical or confusingly similar to such mark;

-       Respondent does not have rights or legitimate interests in the disputed domain name where it is used to pass off advertised goods as those of Complainant and there is no evidence that Respondent is commonly known by the domain name; and

-       The disputed domain name was registered and is used in bad faith where its website passes itself off as 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 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

Complainant claims rights in the LITTLE SLEEPIES mark through registration with various trademark offices. Registration of a mark in this manner is a valid showing of rights in a mark under Policy ¶ 4(a)(i). See Red Hat, Inc. v. Muhammad Shahzad, FA 1787738 (Forum June 19, 2018) ("Registration of a mark with multiple trademark agencies is sufficient to demonstrate rights to a mark per Policy ¶ 4(a)(i).") Complainant provides copies of some of its registration certificates and screenshots from various other trademark office websites and, based on this evidence, the Panel finds that Complainant has demonstrated rights in the mark under Policy ¶ 4(a)(i).

 

Next, Complainant asserts that the disputed domain name is identical to its mark but for the addition of the ".org," TLD which fails to distinguish the domain name from the mark. The Panel agrees and finds that the <littlesleepies.org> domain name is identical or confusingly similar to the LITTLE SLEEPIES mark.

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) ("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").

 

Complainant asserts that Respondent has never been known by the disputed domain name and further states that it has not authorized Respondent to use Complainant's mark. The Panel notes that WHOIS information is often reviewed when considering whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(iii). See Bittrex, Inc. v. Operi Manaha, FA 1815225 (Forum Dec. 10, 2018) (concluding that the respondent was not commonly known by the <appbittrex.com> domain name where the WHOIS information listed Respondent as "Operi Manaha," and nothing else in the record suggested Respondent was authorized to use the BITTREX mark.) Additionally, lack of authorization to use a complainant's mark 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 complainant's mark may support a finding that 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, as verified to Forum by the concerned Registrar, lists the registrant as "Qing Zhang" and there is no evidence to suggest that Respondent is known otherwise or that it is authorized to use the LITTLE SLEEPIES mark. Respondent has not filed a Response or made any other submission in this case and so there is no ground upon which the Panel can find that Respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii).

 

Next, Complainant asserts that the disputed domain name resolves to a website that seeks to pass itself off as a legitimate outlet for Complainant's products. Prior decisions have held that passing oneself off as a complainant and diverting users to a respondent's webpage, is neither a bona fide offering of goods or services under Policy ¶ 4(c)(ii) nor is it a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). See Kmart of Mich., Inc. v. Cone, FA 655014 (Forum Apr. 25, 2006) (The panel found the respondent's attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to [UDRP] Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant's website). See also Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug.21, 2017) ("Respondent uses the [disputed] domain name to divert Internet users to Respondent's website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under [UDRP] Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).") Here, Complainant provides screenshots of the resolving <littlesleepies.org> website which prominently displays the LITTLE SLEEPIES mark and graphic logo as well as text and photographs of sleepwear products which are nearly identical to those offered on Complainant's own website. It claims that Respondent uses the disputed domain name to "pass itself off as Complainant and/or as a legitimate outlet for Complainant's products". It further claims that "[o]nce users proceed to the 'Checkout' page, they are asked to provide their personal shipping and billing addresses and credit card information." The Panel has reviewed the submitted screenshots of both Complainant's and Respondent's websites and notes that it does appear that the overall look-and-feel are very similar. The <littlesleepies.org> website features the LITTLE SLEEPIES name and graphic logo at the top of each page and the copyright notice "©2023 Littlesleepies" at the bottom. It also contains certain photographs, graphics, and text which are identical to those appearing on Complainant's own site. Further, below the various images of sleepwear products, Respondent displays one price in a grey, strikethrough font and a significantly lower price in a red font, all in the typical manner of indicating reduced prices. There is also a "Billing Details" page with a form into which users are asked to input their name, address, phone, email address, and credit card details. From this evidence, the Panel finds support for the claim that Respondent is misleading consumers by passing itself off as Complainant and either offering counterfeit or unauthorized products. Respondent has not filed a Response or made any other submission in this case and so it provides no explanation for its activities. Thus, the Panel finds that Complainant has made a prima facie case which has not been rebutted by Respondent and that there is no evidence that Respondent is using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or that it is making a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).

 

Considering all of the above, the Panel finds, by a preponderance of the presented evidence, that Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

Complainant asserts that Respondent registered the disputed domain name with actual knowledge of Complainant's rights in the LITTLE SLEEPIES mark. Actual knowledge can provide a solid foundation upon which to build an argument of bad faith registration under Policy ¶ 4(a)(iii) and can be demonstrated based on the use to which a disputed domain name is put. See WordPress Foundation v. mich delorme / mich d dots tlds, FA 1584295 (Forum, Nov. 25, 2014) ("Because Respondent here relies on the WORDPRESS mark in the disputed domain name and also makes use of Complainant's services at the resolving page, the Panel finds that Respondent had actual knowledge of Complainant's mark, and that such knowledge evidences Policy ¶ 4(a)(iii) bad faith.") Complainant asserts that "Respondent had actual knowledge of Complainant's rights in LITTLE SLEEPIES when it registered the Infringing Domain, as evidenced by at least (1) Respondent's incorporation of Complainant's registered trademark in the Infringing Domain, and (2) Respondent's use of the Infringing Domain purporting to offer identical goods of the Complainant". The Panel finds that Respondent's copying of content from Complainant's website and passing itself off as Complainant supports the conclusion that Respondent had actual knowledge of the LITTLE SLEEPIES mark at the time that it registered the disputed domain name.

 

Complainant further argues that Respondent registered and uses the <littlesleepies.org> domain name in bad faith because Respondent passes itself off as Complainant by confusing and deceiving consumers into thinking that they are dealing with a website that originates with a source for Complainant's genuine products. Such conduct is indicative of bad faith per Policy ¶ 4(b)(iv). See Occidental Manufacturing, Inc. v. Ddfsfd Scd, D2022-4113 (Dec. 20, 2022) ("Respondent has tried to copy the Complainant's logo and content from the Complainant's website" and "[s]uch use of the Domain Names shows … that the Domain Names were registered and are being used in bad faith"); Tesla Inc. v. Ultimate / Jonathan Littlewood, FA 2052426 (Forum Aug. 2, 2023) (finding bad faith where "Respondent has attempted to commercially gain or otherwise benefit by fraudulently impersonating Complainant to entice shoppers to purchase on Respondent's website.") Complainant asserts that the products sold by the Respondent are identical in nature to the sleepwear sold by Complainant and the Panel again references the submitted screenshots which show Respondent's use of the LITTLE SLEEPIES mark and logo, text and images which have been copied from Complainant's own website, the offering for sale of sleepwear products at unusually low prices, a misleading copyright notice, and the listing of Complainant's own postal address. The evidence presented gives the clear impression that Respondent's website originates with Complainant and is improperly seeking commercial gain based on confusion with the LITTLE SLEEPIES mark. It is thus targeting the mark and seeking to compete with Complainant. For its part, Respondent has not participated in these proceedings and so has not offered a plausible explanation for its actions. As such, the Panel finds firm ground upon which to conclude that Respondent both registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv) and thus under ¶ 4(a)(iii).

 

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 <littlesleepies.org> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Steven M. Levy, Esq., Panelist

Dated: February 1, 2024