DECISION

 

CW Brands LLC v. zhang meng ni

Claim Number: FA2401002080510

 

PARTIES

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

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <coldwaterrcreek.com>, registered with Gname 097 Inc.

 

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.

 

Debrett G. Lyons as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 23, 2024; Forum received payment on January 24, 2024.

 

On January 25, 2024, Gname 097 Inc confirmed by e-mail to Forum that the <coldwaterrcreek.com> domain name is registered with Gname 097 Inc and that Respondent is the current registrant of the name. Gname 097 Inc has verified that Respondent is bound by the Gname 097 Inc 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 25, 2024, Forum served the Complaint and all Annexes, including a Chinese and English Written Notice of the Complaint, setting a deadline of February 14, 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@coldwaterrcreek.com. Also on January 25, 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 15, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Debrett G. Lyons 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

Paragraph 11(a) of the Rules governs the language of the proceedings. The Registrar's registration agreement is written in Chinese. Rule 11(a) directs that the proceedings be in Chinese.

 

The Complaint was submitted in English. Normally, the Forum would send a Deficiency Notice to Complainant stating either that the Complaint be translated into Chinese, or that the Complaint be modified to explain why Respondent is capable of understanding English and why the proceedings should be conducted in English.

 

In this case no Deficiency Notice was sent because the Complaint, as filed, pre-empted this issue and requested that the language of the proceedings be English because the trademark at issue, COLDWATER CREEK, "are English language words presented in the Roman alphabet and Respondent's ability to create a typographical variation of such words [in the disputed domain name] indicates the Respondent's facility with the English language".

 

Despite Rule 11(a), the Panel has a residual discretion to allow the proceeding to go forward in another language. Albeit that Complaint's submission (above) does not of itself demonstrate a facility in the English language, the Panel considers that assembly of the disputed domain name does require an understanding of not only English syntax, but also of the common typographical errors in English (the double "r" in this case being a representative example). Moreover, many UDRP decisions recognize that there is a low threshold for satisfaction of this language ability and so, on balance, the Panel determines, pursuant to Rule 11(a), that the proceedings should be conducted in English.

 

PARTIES' CONTENTIONS

A.       Complainant

Complainant asserts trademark rights in COLDWATER CREEK.  Complainant holds national registrations for that trademark.  Complainant submits that the disputed domain name is confusingly similar to its trademark.  

 

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.

 

Complainant alleges that Respondent registered and used the disputed domain name in bad faith.

 

B.       Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The factual findings pertinent to the decision in this case are that:

1.       Complainant is the owner of, inter alia, United States Patent & Trademark Office Reg. No. 1,861,320, registered November 1, 1994, for COLDWATER CREEK ("USPTO Registration"); and

2.       the disputed domain name was registered on January 3, 2024, and resolves to a Chinese language website for Jiashan Gouzhi Security Co., Ltd. and/or Wuhu Shengli Technology Co., Ltd.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted 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.  

 

Identical and/or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.

 

It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)).  Complainant therefore has rights since it provides proof of registration of the trademark COLDWATER CREEK with the a national trademark authority.

 

For the purposes of comparison of the disputed domain name with the trademark, the gTLD, ".com" can be disregarded (see, for example, Am. Int'l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Forum Dec. 31, 2007)). The disputed domain name then differs from the trademark by simple repetition of the letter "R" in the word, "COLDWATER". The error is, as described above, a type of common typographical error, and results in a term which is phonetically identical to the original, and visually almost indistinguishable from the original. The Panel finds that the domain name is confusingly similar to the trademark and so finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

 

Rights or Legitimate Interests

Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:

 

(i)                      before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

 

(ii)                      you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

 

(iii)                      you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000)).

 

The name of the domain name owner does not carry any suggestion that Respondent might be commonly known by the domain name. There is no evidence that Respondent has any trademark rights of its own.  The website resolving from the disputed domain name shows the names of two Chinese companies. One is translated into English as a "security" company. The images on the site are either generic or show domestic heating and other appliances. Complainant does not explicitly describe its business, but the USPTO Registration is for "retail store services for gift, craft, clothing and jewelry items."  Accordingly, there is no connection with the goods or services described/shown at the resolving website and those offered under the trademark.

 

The Panel finds that a prima facie case has been made and that the onus shifts to Respondent (see, for example, Materia, Inc. v. Michele Dinoia, FA 1627209 (Forum Aug. 20, 2015) ("The Panel finds that Respondent is using a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks, that Respondent has no other rights to the domain name, and finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use.")).

 

In the absence of a Response, the Panel finds that Respondent has not discharged that onus and finds the Respondent has no rights or interests. Complainant has satisfied the second limb of the Policy.

 

Registration and Use in Bad Faith

Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith.  

 

Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established. 

 

The four specified circumstances are:

 

(i)                      circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or

 

(ii)                      the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

 

(iii)                      the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

 

(iv)                      by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent's website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on the site or location.'

 

Complainant merely asserts those four scenarios without providing reasoning of any kind. Some cases may support Complainant (see, for example, Charter Communications Holding Company, LLC v. Webdesk Two, FA 1800636 (Forum Sept. 5, 2018) finding bad faith in registration of <spectrumpack.com> because "[u]se of a domain name to create a false impression of affiliation with a complainant in order to compete with and disrupt the complainant's business is behavior indicative of bad faith registration and use per Policy ¶¶ 4(b)(iii) and (iv).") but this Panel finds insufficient evidence to support paragraph 4(b) of the Policy.  Nevertheless, the paragraph 4(b) scenarios are expressed by the Policy to be non-exhaustive and the Panel finds, as separate matters, registration in bad faith and use in bad faith. In particular, the Panel has already found the disputed domain name to be confusingly similar to the trademark. It is a classic example of 'typosquatting' and strongly suggests the Respondent targeted the trademark at the time of registration. Further, the use is in bad faith because there is no reasonable inference to be drawn that Respondent has a legitimate expectation to use the words, "coldwater creek", in respect of a Chinese language website ostensibly connected with a security business or domestic living space products.

 

The Panel finds that Complainant has satisfied the third and final element of the Policy.

 

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 <coldwaterrcreek.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Debrett G. Lyons, Panelist

February 16, 2024