DECISION

 

Lavender Lingerie, LLC and Roraj Trade, LLC v. Zhang Fei

Claim Number: FA2411002124683

PARTIES

Complainant is Lavender Lingerie, LLC and Roraj Trade, LLC ("Complainant"), represented by J.B. Frost of Coleman Frost LLP, Colorado, USA. Respondent is Zhang Fei ("Respondent"), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <savagexfentybrasil.com>, (the "Domain Name") registered with Dominet (HK) 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.

 

Dawn Osborne as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on November 12, 2024; Forum received payment on November 12, 2024.

 

On November 12, 2024, Dominet (HK) Limited confirmed by e-mail to Forum that the <savagexfentybrasil.com> Domain Name is registered with Dominet (HK) Limited and that Respondent is the current registrant of the name. Dominet (HK) Limited has verified that Respondent is bound by the Dominet (HK) 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 November 14, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 4, 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@savagexfentybrasil.com. Also on November 14, 2024, 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 December 5, 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 Name be transferred from Respondent to Complainant.

 

PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS

Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") provides that "[a]ny person or entity may initiate an administrative proceeding by submitting a complaint." Forum's Supplemental Rule 1(e) defines "The Party Initiating a Complaint Concerning a Domain Name Registration" as a "single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint."  Roraj Trade LLC is the owner of the FENTY trade mark (see further details below). Lavender Lingerie LLC is the owner of the SAVAGE X registered trade mark and the exclusive licensee of the FENTY mark (see further details below). The Complainants have satisfied the nexus required.

 

PARTIES' CONTENTIONS

A. Complainant

Roraj Trade LLC is the owner of the mark FENTY registered, inter alia, in the USA for clothing since 2020 with first use in commerce recorded as 2018.

 

Lavender Lingerie LLC is the owner of the mark SAVAGE X registered, inter alia, in the USA for underwear since 2018 with first use in commerce recorded as 2017. Lavender Lingerie LLC is also the exclusive licensee of the FENTY trade mark for clothing and related business services.

 

The Domain Name registered in 2024 is confusingly similar to the Complainant's trade marks containing them it in their entirety and adding the generic geographical term 'Brasil' meaning Brazil and the gTLD .com none of which prevents such confusing similarity.

 

The Respondent does not have any rights or legitimate interests in the Domain Name, is not commonly known by it and is not authorised by the Complainant.

 

The Domain Name points to a site prominently displaying the Complainant's trade marks and logo in its masthead and material taken from the Complainant's site, giving the false impression that Respondent and its website is affiliated with, or operated by, the Complainant and purporting to offer the Complainant's goods. Customers have been confused into paying for products believing that the Respondent's site was a genuine site of the Complainant and did not receive anything for the money they had paid.

 

Phishing and impersonating a Complainant is not a bona fide offering of goods or services or a legitimate non commercial or fair use. It is fraudulent registration and use in opportunistic bad faith confusing Internet users for commercial gain.

 

The Respondent has been subject to a number of adverse UDRP decisions for similar conduct showing a pattern of bad faith activity.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Roraj Trade LLC is the owner of the mark FENTY registered, inter alia, in the USA for clothing since 2020 with first use in commerce recorded as 2018.

 

Lavender Lingerie LLC is the owner of the mark SAVAGE X registered, inter alia, in the USA for underwear since 2018 with first use in commerce recorded as 2017. Lavender Lingerie LLC is also the exclusive licensee of the FENTY trade mark for clothing and related business services.

 

The Domain Name registered in 2024 points to a site prominently displaying Complainant's trade marks and logo in its masthead and using material taken from the Complainant's site, giving the false impression that Respondent and its website is affiliated with, or operated by, the Complainant and purporting to offer the Complainant's goods. Customers have been confused into paying for products on the Respondent's site believing they are buying products from the Complainant, but did not receive any goods.

 

The Respondent has been subject to a number of adverse UDRP decisions for similar conduct.

 

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 Domain Name consists of the Complainant's SAVAGE X and FENTY marks (registered as detailed above), the generic word 'brasil' and the gTLD .com.

 

Adding a generic term to a Complainant's mark does not prevent confusing similarity between it and a domain name. See PG&E Corp. v Anderson, D2000-1264 (WIPO Nov. 22, 2000)(finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underlying mark held by the Complainant). Accordingly the Panel agrees that the addition of the generic term 'brasil' meaning Brazil does not prevent confusing similarity between the Domain Name and the Complainant's trade mark pursuant to the Policy.

 

The gTLD .com does not serve to distinguish the Domain Name from the Complainant's mark, which is the distinctive component of the Domain Name. 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 Name is confusingly similar for the purposes of the Policy with marks in which the Complainant has rights.

 

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 marks. There is no evidence or reason to suggest the Respondent is commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 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 use of the Domain Name is commercial and so cannot be legitimate non commercial or fair use.

 

The web site attached to the Domain Name uses the Complainant's marks and logo in its masthead and material taken from the Complainant's web site to represent that it is an official site of the Complainant and purport to offer the Complainant's goods. There is evidence that the site is taking money from deceived customers and not providing any goods in return. The Panel finds this use is phishing. As such it cannot amount to the bona fide offering of goods and services. See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) ("a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.").

 

The Respondent has not answered this Complaint or rebutted the prima facie case evidenced by the Complainant.

 

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

 

Registration and Use in Bad Faith

In the opinion of the Panel, the use made of the Domain Name in relation to the Respondent's site was deceptive and disruptive. Visitors to the Respondent's site reasonably believed it was connected to or approved by the Complainant as the site used the Complainant's marks and logo as a masthead and material taken from the Complainant's web site to purport to be an official site of the Complainant. The use of the Complainant's logo and material from the Complainant's web site clearly demonstrates that the Respondent has actual knowledge of the Complainant and its rights, business and services.

 

Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant's trade mark as to the source, sponsorship, affiliation or endorsement of the web site likely to disrupt the business of the Complainant. See Allianz of AM. Corp v Bond, FA 680624 (Forum June 2, 2006)(finding bad faith registration and use where the respondent was diverting Internet users searching for the complainant to its own website). This use is phishing. Phishing conduct is evidence of bad faith registration and use within the Policy 4 (a)(iii). See Klabzuba Oil & Gas, Inc v LAKHPAT SINGH BHANDARI, FA 1506001625750 (Forum July 17, 2015).

 

Further the Respondent has been the subject of a number of adverse decisions under the UDRP for similar activity evidencing a pattern of bad faith. See Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum Nov. 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)).

 

As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under para 4(b)(ii), (iii) and (iv).

 

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

 

 

 

Dawn Osborne, Panelist

Dated: December 5, 2024