DECISION

 

Stitch Fix, Inc. v. yao qi

Claim Number: FA2502002141784

 

PARTIES

Complainant is Stitch Fix, Inc. ("Complainant"), represented by Jered E. Matthysse of Pirkey Barber PLLC, Texas, USA. Respondent is yao qi ("Respondent"), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <41-hawthorn.com>, registered with Tucows Domains Inc.

 

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.

 

Richard Hill as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on February 24, 2025; Forum received payment on February 24, 2025.

 

On February 25, 2025, Tucows Domains Inc. confirmed by e-mail to Forum that the <41-hawthorn.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 February 27, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 19, 2025 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@41-hawthorn.com. Also on February 27, 2025, 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 March 20, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Richard Hill 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.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant states that it is an online fashion retailer and personal shopping company that blends the benefits of a brick-and-mortar retail experience with today's modern technology. Complainant offers online retail store services featuring clothing, fashion accessories, and related apparel, as well as personal-shopping and fashion-consulting services. Complainant provides information concerning fashion and personal style through its website at <stitchfix.com> and through its Facebook pages at <facebook.com/stitchfix> and <facebook.com/stitchfixmen>. In connection with its personal-shopping and fashion-consulting services, Complainant offers exclusive private brands that can only be found at its online retail stores, including the women's clothing brand 41HAWTHORN. Complainant asserts rights in the mark 41HAWTHORN through its registration in the United States in 2015.

 

Complainant alleges that the disputed domain name is confusingly similar to its 41HAWTHORN mark as it incorporates mark in its entirety and merely adds a hyphen and the ".com" generic top-level domain ("gTLD").

 

According to Complainant, Respondent has no rights or legitimate interests in the disputed domain name as Respondent is not commonly known by the disputed domain name and Respondent has not been licensed, authorized, or otherwise permitted by Complainant to use its mark. Respondent's use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondent uses the disputed domain name to pass of as Complainant and purport to offer Complainant's products and services. However, the products and services offered by Respondent at the resolving website appear to be a scam; for instance, the home page of the resolving website says its address is 74 Bradford Road, Watertown, MA, but the "ABOUT US" page claims it is located in California (where Complainant is located); and every page contains a "LEAVE A REPLY" prompt, which asks for visitors' names and email addresses: this could be used in furtherance of phishing.

 

Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. Respondent uses the disputed domain name to pass off as Complainant and purport to offer Complainant's products and services, and to engage in in phishing. Respondent used a privacy service.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant owns the mark 41HAWTHORN and uses it to provide clothing, fashion accessories, and related apparel, as well as personal-shopping and fashion-consulting services.

 

Complainant's rights in its mark date back to 2015.

 

The disputed domain name was registered in 2024.

 

Complainant has not licensed or otherwise authorized Respondent to use its mark.

 

The resolving website displays Complainant's mark and images of Complainant's products, impersonates Complainant's legitimate website, and purports to offer Complainant's products and services.

 

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 disputed domain name incorporates Complainant's 41HAWTHORN mark in its entirety and merely adds a hyphen and the ".com" generic top-level domain ("gTLD"). Under Policy ¶ 4(a)(i), adding a gTLD and/or a hyphen is generally insufficient in differentiating a disputed domain name from the mark it incorporates. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) ("Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element."); see also Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant's mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Respondent has not been licensed or authorized by Complainant to use its mark. Respondent is not commonly known by the disputed domain name: under Policy ¶ 4(c)(ii), relevant WHOIS information can be used as evidence to show a respondent is or is not commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA 1626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named "Fred Wallace" as registrant of the disputed domain name). Here, the WHOIS information of record identifies the registrant of the disputed domain name as "yao qi". Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).

 

Complainant provides evidence showing that the resolving website impersonates Complainant's legitimate website and purports to offer Complainant's products and services. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to pass off as a Complainant does not constitute a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Am. Int'l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) ("In effect, Respondent attempted to pass itself off as Complainant online. Such blatant unauthorized use of Complainant's mark is evidence that Respondent has no rights or legitimate interests in the disputed domain name."); see also Bloomberg L.P v. Bloomberg Realty (India) Private Limited, FA 1439263. ("Use of a domain name which intentionally trades on the fame of another cannot constitute a bona fide offering of goods and services."). Therefore the Panel finds that Respondent fails to use the disputed domain name to make a bona fide offering of goods or services, or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.

 

Registration and Use in Bad Faith

Respondent (who did not reply to Complainant's contentions) has not presented any plausible explanation for its use of Complainant's mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent's failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.

 

Indeed, as already noted, Respondent uses the disputed domain name to pass off as Complainant. Under the Policy, using a disputed domain name to take advantage of the confusing similarity between the domain name and the mark is evidence of bad faith registration and use. See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Carey Int'l, Inc. v. Kogan, FA 486191 (Forum July 29, 2005) ("[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith."); see also Fossil, Inc. v. www.fossil-watch.org c/o Host Master, FA 335513 (Forum Nov. 9, 2004) ("Respondent's use of the disputed domain name to pass itself off as Complainant is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii)."). Therefore the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).

 

Further, Respondent registered the disputed domain name with actual knowledge of Complainant's mark: the resolving website displays Complainant's mark and images of Complainant's products. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant's rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) ("The Panel notes that although the UDRP does not recognize 'constructive notice' as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it."); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel finds that Respondent had actual knowledge of Complainant's rights in the mark prior to Respondent's registration of the disputed domain name and that this constitutes bad faith under Policy ¶ 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 <41-hawthorn.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Richard Hill, Panelist

Dated: March 20, 2025