DECISION

 

18th and Walnut LLC v. su peng

Claim Number: FA2506002161346

 

PARTIES

Complainant is 18th and Walnut LLC ("Complainant"), represented by Chintan A. Desai of Lippes Mathias LLP, New York, USA. Respondent is su peng ("Respondent"), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <bagdagnedover.com>, registered with Dynadot 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.

 

Ho-Hyun Nahm, Esq. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on June 17, 2025; Forum received payment on June 17, 2025.

 

On June 18, 2025, Dynadot Inc confirmed by e-mail to Forum that the <bagdagnedover.com> domain name is registered with Dynadot Inc and that Respondent is the current registrant of the name. Dynadot Inc has verified that Respondent is bound by the Dynadot 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 June 23, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 14, 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@bagdagnedover.com. Also on June 23, 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 July 15, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. 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

i) Complainant is a handbag company engaged in the design and manufacture of designer bags with an emphasis on functionality, fashion, and sustainability. Complainant has rights in the DAGNE DOVER mark through Complainant's registration of the mark with the USPTO (e.g., Reg. No. 4,905,401, registered February 23, 2016). The disputed domain name is confusingly similar to Complainant's DAGNE DOVER mark, as it incorporates Complainant's mark and merely adds the generic term "bag," and the generic top-level domain ("gTLD") ".com."

 

ii) Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Respondent been authorized by Complainant to use the DAGNE DOVER mark. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services, as Respondent uses the disputed domain name to pass off as Complainant and sell competing products.

 

iii) Respondent registered and is using the disputed domain name in bad faith. The website to which the disputed domain name resolves disrupts Complainant's business, as it passes off as Complainant and confuses users as to the sponsorship or endorsement of the website. Respondent's registration of the domain name using a privacy service raises a rebuttable presumption of bad faith. Respondent had actual knowledge of Complainant's rights in the DAGNE DOVER mark prior to registering the disputed domain name.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

1. The disputed domain name was registered on May 18, 2024.

 

2. Complainant has established rights in the DAGNE DOVER mark through Complainant's registration of the mark with the USPTO (e.g., Reg. No. 4,905,401, registered February 23, 2016).

 

3. The website to which the disputed domain name resolves prominently displays Complainant's DAGNE DOVER mark and images of products that are competing versions of Complainant's goods.

 

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

Complainant asserts rights in the DAGNE DOVER mark through Complainant's registration of the mark with the USPTO (e.g., Reg. No. 4,905,401, registered February 23, 2016). Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). Since Complainant provides evidence of trademark registration with the USPTO, the Panel finds Complainant has established rights in the DAGNE DOVER mark per Policy ¶ 4(a)(i).

 

Complainant contends that the disputed domain name <bagdagnedover.com> is confusingly similar to Complainant's DAGNE DOVER trademark because it incorporates the mark in its entirety and adds the generic term "bag," as well as the ".com" gTLD. The addition of a generic term and a gTLD does not distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Svensson Viljae, FA 1784650 (Forum June 1, 2018) ("The disputed domain name <skechers-outlet.com> adds a hyphen and the generic term 'outlet' to Complainant's registered SKECHERS mark, and appends the '.com' top-level domain."). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant's DAGNE DOVER mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Section 2.1, WIPO Jurisprudential Overview 3.0 ("Where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.").

 

Complainant argues that Respondent has no rights or legitimate interest in the disputed domain name as Respondent is not commonly known by the disputed domain name, nor has Respondent been authorized by Complainant to use Complainant's mark, and Respondent is not affiliated with Complainant. Relevant information, such as WHOIS information, can be used as evidence to show a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). The Panel notes that the unmasked WHOIS data lists "su peng" as the registrant, and there is no evidence in the record to suggest Respondent was authorized to use the mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).

 

Next, Complainant argues that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use, as Respondent passes itself off as Complainant by selling competing goods. Using a disputed domain name to pass off as a complainant for the purpose of selling competing products may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) ("use of a domain to sell products and/or services that compete directly with a complainant's business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).").

 

Complainant provides screenshots of Respondent's resolving website, highlighting how Respondent's website prominently displays Complainant's DAGNE DOVER mark and the pictures of its products, which are competing versions of Complainant's products. Complainant argues Respondent is deliberately attempting to trade upon the goodwill associated with Complainant and confuse and mislead users. Therefore, the Panel finds Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).

 

The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.

 

Registration and Use in Bad Faith

Complainant contends Respondent registered and uses the disputed domain name in bad faith, as Respondent registered the disputed domain name to pass off as Complainant and sell competing versions of Complainant's products for Respondent's financial gain. Registration of a confusingly similar domain name with the intent to disrupt business by passing off as a complainant by selling competing products can evince bad faith registration and use per Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) ("The Panel agrees that Respondent's use of the website to display products similar to Complainant's, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv)."); see also Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).

 

The Panel recalls Complainant provides screenshots of the resolving webpage of the disputed domain name, in which Respondent offers similar or identical products for sale. Complainant argues Respondent has created a likelihood of confusion with Complainant's mark and confuses users into believing Respondent's website is sponsored or endorsed by Complainant for Respondent's financial gain. The Panel finds that Respondent registered and uses the disputed domain name in a manner that disrupts Complainant's business by diverting Internet users seeking Complainant to Respondent's website for Respondent's commercial benefit per Policy ¶¶ 4(b)(iii) and 4(b)(iv).

 

Complainant argues Respondent registered the disputed domain name with actual knowledge of Complainant's rights in the DAGNE DOVER mark, based on Respondent's use of the DAGNE DOVER mark and Respondent's resolving website directly copying images from Complainant's website.

 

The Panel notes that Complainant's mark became well known prior to the registration of the disputed domain name on May 18, 2024 in the fashion industry, and its products were distributed and sold across the world, which are supported by copies of news articles and press releases regarding Complainant and its associated DAGNE DOVER mark. The Panel infers, due to the notoriety of Complainant's mark and the manner of use of the disputed domain name, that Respondent had knowledge of Complainant's rights in the DAGNE DOVER mark at the time of registering the disputed domain name, and finds that Respondent registered the disputed domain name in 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 <bagdagnedover.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Ho-Hyun Nahm, Esq., Panelist

Dated: July 17, 2025