DECISION

 

CW Brands LLC v. 陈照

Claim Number: FA2401002080447

 

PARTIES

Complainant is CW Brands LLC ("Complainant"), represented by Mark S. Kaufman of KAUFMAN & KAHN, LLP, New York, USA. Respondent is 陈照 ("Respondent"), China.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <coldwatercreekfactory.com> and <coldwatercreeky.com> ('the Domain Names'), registered with Xiamen 35.com Information Co., Ltd.

 

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.

 

Dawn Osborne as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 23, 2024; Forum received payment on January 23, 2024.

 

On January 24, 2024, Xiamen 35.com Information Co., Ltd. confirmed by e-mail to Forum that the <coldwatercreekfactory.com> and <coldwatercreeky.com> Domain Names are registered with Xiamen 35.com Information Co., Ltd. and that Respondent is the current registrant of the names. Xiamen 35.com Information Co., Ltd. has verified that Respondent is bound by the Xiamen 35.com Information 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 January 26, 2024, Forum served the Complaint and all Annexes, including a Chinese and English Written Notice of the Complaint, setting a deadline of February 15, 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@coldwatercreekfactory.com and postmaster@coldwatercreeky.com. Also on January 26, 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 February 16, 2024 pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Dawn Osborne 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.

 

PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDING

Bearing in mind that the Domain Names are in English and <coldwatercreekfactory.com> points to a commercial site in English, pursuant to UDRP Rule 11 (a) the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language and the Panel decides that the proceedings should be in English.

 

PARTIES' CONTENTIONS

A. Complainant

The Complainant's contentions can be summarised as follows:

 

The Complainant is the owner of the trade mark COLDWATER CREEK registered, inter alia, in the USA in relation to retail services with first use recorded as 1988.

 

The Domain Names were registered in 2024. The <coldwatercreeky.com> domain name is confusingly similar to the Complainant's mark adding only a letter 'y' and the gTLD .com which do not prevent confusing similarity between that domain name and the Complainant's mark. The <coldwatercreekfactory.com> domain name is confusingly similar to the Complainant's mark adding only the generic term 'factory' and the gTLD .com which do not prevent confusing similarity between that domain name and the Complainant's mark.

 

The Respondent is not commonly known by Domain Names and is not authorised by the Complainant.

 

The <coldwatercreekfactory.com> domain name has been used to point to a third-party site offering competing retail services. This is not a bona fide offering of services or a non commercial legitimate fair use. It is registration and use in bad faith to disrupt the business of a competitor and to attract Internet users for commercial gain.

        

The <coldwatercreeky.com> domain name is not being used so there is no bona fide offering of services or non commercial legitimate fair use being made of it. In this case, passive holding is registration and use in bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The Complainant is the owner of the trade mark COLDWATER CREEK registered, inter alia, in the USA in relation to retail services with first use recorded as 1988.

 

The Domain Names were registered in 2024.

 

The <coldwatercreekfactory.com> domain name has been used to point to a third party site offering competing retail services.

 

The <coldwatercreeky.com> domain name is not being used.

 

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 <coldwatercreeky.com> domain name consists of the Complainant's COLDWATER CREEK mark (which is registered, inter alia, in the USA for retail services with first use recorded as 1988), the letter 'y', and the gTLD .com.

 

The <coldwaterfactory.com> domain name consists of the Complainant's COLDWATER CREEK mark (which is registered, inter alia, in the USA for retail services with first use recorded as 1988), the generic term 'factory', and the gTLD .com.

 

Panels have found that adding one letter to a registered mark does not distinguish a domain name from that mark. See Twitch Interactive, Inc. v Antonio Teggi, FA 1626528 (Forum Aug. 3, 2015). Accordingly the addition of the single letter 'y' does not prevent confusing similarity between <coldwatercreeky.com> and the Complainant's trade mark.

 

The addition of the dictionary word 'factory' to the Complainant's trade mark in the <coldwatercreekfactory.com> does not prevent confusion similarity between that domain name and the Complainant mark. See Abbott Laboratories v Miles White, FA 1646590 (Forum Dec. 10, 2015) (holding that the addition of generic terms does not adequately distinguish a disputed domain name from complainant's mark under Policy 4(a)(i)).

 

The gTLD .com does not serve to distinguish either of the the Domain Names from the Complainant's mark, which is the distinctive component of the Domain Names. See Red Hat Inc v Haecke, FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).

 

Accordingly, the Panel holds that the Domain Names are confusingly similar to the Complainant's registered mark.

 

As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.

 

Rights or Legitimate Interests

The Complainant has not authorised the use of its mark. There is no evidence or reason to suggest the Respondent is commonly known by either of the Domain Names. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA 1574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).

 

The <coldwatercreekfactory.com> domain name has been pointed to a third-party competitor of the Complainant and does not make it clear that there is no commercial connection with the Complainant.The Panel finds this use is confusing. As such it cannot amount to the bona fide offering of goods and services. (See Am. Intl Group Inc v Benjamin, FA 944242 (Forum May 11, 2007) finding that the Respondent's use of a confusingly similar domain name to point to services which competed with the Complainant's business did not constitute a bona fide use of goods and services).

 

There has been no use of <coldwatercreeky.com>. See Hewlett-Packard Co. v Shemesh, FA 434145 (Forum Apr. 20, 2005) (where the panel found inactive use is not a bona fide offering of goods or services pursuant to Policy 4(c)(i)).

 

The Respondent has not answered this Complaint and has not rebutted the prima face case evidenced by the Complainant as set out herein.

 

As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Names and that the Complainant has satisfied the second limb of the Policy.

 

Registration and Use in Bad Faith

In the opinion of the panelist the use made of <coldwatercreekfactory.com> is confusing and disruptive in that visitors to the site might reasonably believe it is connected to or approved by the Complainant as it makes use of a confusingly similar mark to offer the same or similar services. Given the established rights of the Complainant and the use for a competing business the Panel believes that it is more likely than not that the Respondent is aware of the Complainant and its business, services and rights.

 

Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its site at <coldwatercreekfactory.com> by creating likelihood of confusion with the Complainant's trade mark as to the source, sponsorship, affiliation or endorsement of the web site or services on it likely to disrupt the business of the Complainant.

 

The <coldwatercreeky.com> domain name has not been used. Passive holding of a domain name containing a mark with a reputation can evidence registration and use in bad faith under the Policy. See Indiana University v. Ryan G Foo / PPA Media Services, FA 1588079 (Forum Dec. 28, 2014) ("Respondent's seemingly inutile holding of the at-issue domain name shows Respondent's bad faith pursuant to Policy ¶ 4(a)(iii)."). 

 

As such, the Panelist believes that the Complainant has made out its case. The <coldwatercreekfactory.com> domain name was registered and used in bad faith and has satisfied the third limb of the Policy under paragraph 4(b)(iii) and (iv). The <coldwatercreeky.com> domain name was registered and used in bad faith and has satisfied the third limb of the Policy under paragraph 4(b)(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 <coldwatercreekfactory.com> and <coldwatercreeky.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Dawn Osborne, Panelist

Dated: February 16, 2024