DECISION

 

NHN Global, Inc. v. MingShen Tu

Claim Number: FA2503002144471

 

PARTIES

Complainant is NHN Global, Inc. ("Complainant"), represented by Christine Chung of NHN Global, Inc., California, USA. Respondent is MingShen Tu ("Respondent"), represented by Charleen Hsieh, California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <fashiongogo.com>, registered with Cloudflare, 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.

 

Flip Petillion as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on March 11, 2025; Forum received payment on March 11, 2025.

 

On March 12, 2025, Cloudflare, Inc. confirmed by e-mail to Forum that the <fashiongogo.com> domain name is registered with Cloudflare, Inc. and that Respondent is the current registrant of the name. Cloudflare, Inc. has verified that Respondent is bound by the Cloudflare, 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 March 17, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 7, 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@fashiongogo.com. Also on March 17, 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.

 

A timely Response was received and determined to be complete on April 7, 2025.

 

On April 7, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Flip Petillion as Panelist.

 

On April 9, 2025, the Complainant submitted an Additional Submission. On April 15, 2025, the Respondent submitted an Additional Submission. On April 16, 2025, the Complainant submitted a second Additional Submission. On April 18, 2025, the Respondent submitted a second Additional Submission.

 

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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

The Complainant claims that the <fashiongogo.com> domain name (hereafter, the "Disputed Domain Name") is confusingly similar to its FASHIONGO trademarks.

 

The Complainant further contends that the Respondent should be considered as having no rights or legitimate interests in respect to the Disputed Domain Name. According to the Complainant:

-       the WHOIS records for the Disputed Domain Name do not include any information about the registrant;

-       the Complainant did not authorize anyone to register and use the Disputed Domain Name, nor did the Complainant authorize any third party to use the FASHIONGO mark in a domain name; 

-       the Disputed Domain Name misrepresents an association between the Respondent and the Complainant, a competitor, and infringes the Complainant's FASHIONGO marks;

-       the Respondent is not commonly known by the Disputed Domain Name.

 

Finally, the Complainant alleges that the Disputed Domain Name should be considered to have been registered and used in bad faith because, according to the Complainant:

-       the Respondent registered the Disputed Domain Name primarily for the purpose of disrupting Complainant's business;

-       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 FASHIONGO marks as to the source, sponsorship, affiliation, and endorsement of the Respondent's website and its goods and services;

-       the Respondent's knowledge of the Complainant's rights in the FASHIONGO trademarks may be presumed from the virtual identity between the Disputed Domain Name and the Complainant's FASHIONGO marks. The Complainant's FASHIONGO marks have been registered at the USPTO since 2013 and in use since 2002, well before the Respondent registered the Disputed Domain Name in 2004;

-       the website content at the Disputed Domain Name shows the Respondent registered and is using the Disputed Domain Name in bad faith. The goods purportedly offered for sale on this website, dresses and accessories, are very similar to goods sold on the Complainant's website.

 

B. Respondent

In summary, the Respondent asserts that there is no confusing similarity as:

-       the Disputed Domain Name predates the Complainant's trademark by 9 years;

-       the logos used by the respective parties are different;

-       the parties have distinct business models.

 

The Respondent asserts it has legitimate rights in the Disputed Domain Name as:

-       the Disputed Domain Name has been used for more than 20 years for retail;

-       the Complainant's trademark covers wholesale services (Class 35), while the Respondent operates a retail store.

 

The Respondent also claims the Disputed Domain Name was not registered or used in bad faith as:

-       the Disputed Domain Name predates the Complainant's trademark;

-       the Respondent did not target the Complainant. The Complainant initiated contact and there is no evidence of diversion. 

 

Finally, the Respondent contends that the Complainant brought the Complaint in bad faith.

 

FINDINGS

The Complainant, NHN Global, Inc., is an is an e-commerce platform development company that operates a one-stop online clothing, shoe, fashion accessory, and home decor wholesale marketplace under the mark FASHIONGO at the domain names <fashiongo.com> and

<fashiongo.net>. 

 

The Complainant is the owner of the following trademarks:   

 

-       FASHIONGO, USA word mark, registered under No. 4,288,702 on February 12, 2013, in class 35;

-       FASHIONGO.NET, USA word mark, registered under No. 4,288,700 on February 12, 2013, in class 35;

 

The Respondent, MingShen Tu, appears to be an individual operating a website linked to the Disputed Domain Name.

 

The Disputed Domain Name was registered on July 29, 2004, and appears to resolve to a website selling wedding dresses and related accessories. 

 

In January 2025, the Complainant sent a cease-and-desist letter through the contact form on the website linked to the Disputed Domain Name but received no response.   

 

DISCUSSION

Preliminary procedural issue: the parties' additional submissions

Before entering into the merits of the case, the Panel addresses the matter of the unsolicited supplemental filings submitted by the parties. It follows from paragraphs 10 and 12 of the Rules and Rule 7 of Forum's Supplemental Rules that the Panel, in its sole discretion, may determine the admissibility, relevance, materiality, and weight of the evidence, insofar as both parties are treated with equality and are given a fair opportunity to present their case.

 

Both parties submitted unsolicited supplemental filings which is generally discouraged. When doing so, a party is usually required to prove that the supplemental filing is of utmost importance to the case and it could not have provided the information within its initial Complaint or Response.

 

In the present case, the Panel finds that the additional submissions do not add any essential information impacting the Panel's decision.

 

Therefore, the Panel rejects the additional submissions.

 

Substantive matter

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.

 

Identical and/or Confusingly Similar

The Policy ¶ 4(a)(i) requires the Complainant to show that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.   

 

Registration of a mark with the USPTO suffices to establish the rights under the Policy. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018). ("Complainant's ownership of a USPTO registration for DIRECTV demonstrate its rights in such a mark for the purposes of Policy ¶ 4(a)(i)"). The Complainant provided evidence that it owns trademarks consisting of or including the FASHIONGO sign through USPTO registrations (e.g., Reg. No. 4,288,702 registered on February 12, 2013).   

 

The Panel notes that that the entirety of the FASHIONGO mark is reproduced within the Disputed Domain Name, except for the addition of the term "go". The Panel is of the view that this addition does not prevent a finding of confusing similarity with the Complainant's FASHIONGO trademark since the FASHIONGO trademark is recognizable within the Disputed Domain Name. See principles set out in WIPO Jurisprudential Overview 3.0 at ¶1.7 and 1.8; see also Stardust Materials v. Neil Ivey, FA 940188 (Forum Jun. 1, 2021).   

 

Therefore, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant's mark per Policy ¶ 4(a)(i).  

 

Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

 

In this case the Panel does not need to consider or decide this issue, given its decision on the third element below and the fact that a successful complaint under the UDRP must establish all three elements under paragraph 4(a) of the Policy.

 

Registration and Use in Bad Faith

The Policy requires the Complainant to prove bad faith registration and use. See Platterz v. Andrew Melcher, FA 1729887 (Forum Jun. 19, 2017). 

 

The Panel observes that the Disputed Domain Name has been registered in 2004, while the Complainant's trademarks have been registered more than eight years later, in 2013.

 

Where a respondent registers a domain name before the complainant's trademark rights accrue, panels will not normally find bad faith on the part of the respondent. See WIPO Jurisprudential Overview 3.0 at ¶3.8.1.

 

In these circumstances, the Panel would expect the Complainant to come

forward with specific evidence showing unregistered or common law trademark rights.

 

To establish unregistered or common law trademark rights for purposes of the UDRP, a complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant's goods and/or services. Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.

 

Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint.

 

Conclusory allegations of unregistered or common law rights, even if undisputed in a particular UDRP case, would not normally suffice to show secondary meaning. In cases involving unregistered or common law marks that are comprised solely of descriptive terms which are not inherently distinctive, there is a greater onus on a complainant to present evidence of acquired distinctiveness/secondary meaning. See WIPO Jurisprudential Overview 3.0 at ¶1.3.

 

Although the Complainant relies on a claimed first use in commerce of its FASHIONGO trademark on February 7, 2002, the Panel finds that the Complainant does not provide sufficient evidence of (the extent of) this use apart from the mention of the 'February 7, 2002' date in the trademark certificate.

 

Since the Complainant's trademark is composed of two dictionary words, namely "fashion" and "go", and given the absence of any evidence of acquired distinctiveness or secondary meaning of the Complainant's marks between the claimed first use in commerce in 2002 and the registration of the Disputed Domain Name in 2004, the Panel finds insufficient indications that the Respondent targeted the Complainant's mark when registering the Disputed Domain Name.

 

Therefore, the Panel finds that the Complainant failed to prove that the Respondent registered the Disputed Domain Name in bad faith.

 

In the absence of proof of bad faith registration, it is unnecessary to address any claims of bad faith use of the Disputed Domain Name. To the extent the Complainant considers that the current use of the Disputed Domain Name infringes on its trademark rights, the decision in this case is without prejudice to any other means, besides the UDRP, that the Complainant might pursue to protect its rights.

 

In view of the above circumstances, the Panel finds that the Complainant has failed to establish that the third condition of paragraph 4(a) of the Policy has been fulfilled.

 

REVERSE DOMAIN NAME HIJACKING

The Respondent has requested a finding of Reverse Domain Name Hijacking (RDNH).

 

Paragraph 15(e) of the Rules provides that, if "after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking (RDNH) or was brought primarily to harass the domain name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding".

 

RDNH is furthermore defined under the Rules as "using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name." See WIPO Jurisprudential Overview 3.0 at ¶4.16.

 

Panels have consistently found that the mere lack of success of a complaint is not in itself sufficient for a finding of RDNH.

 

Even though the Panel found that the Complainant failed to provide sufficient evidence supporting the Respondent's bad faith registration of the Disputed Domain Name, the Panel is unable to conclude that the Complaint was brought primarily to harass the Respondent, nor that the proceeding was commenced in bad faith (both in general in accordance with paragraph 15(e) of the Rules, and in accordance with RDNH as defined under the Rules).

 

The Panel also notes that the Respondent misrepresented some facts in its Response, notably regarding the "Continuous Retail Use" of the Disputed Domain Name since 2004.

 

The Panel therefore declines to declare that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

 

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <fashiongogo.com> domain name REMAIN WITH Respondent.

 

 

 

Flip Petillion, Panelist

Dated: April 21, 2025