DECISION

 

R.G. Barry Corporation v. jie zhu

Claim Number: FA2507002168745

 

PARTIES

Complainant is R.G. Barry Corporation ("Complainant"), represented by Maureen E. Kelly of Vorys, Sater, Seymour and Pease LLC, Pennsylvania, USA. Respondent is jie zhu ("Respondent"), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <thedearfoams.com>, registered with Chengdu West Dimension Digital Technology Co., Ltd.

 

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.

 

 Hon. Karl v. Fink (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on July 30, 2025; Forum received payment on July 30, 2025.

 

On July 30, 2025, Chengdu West Dimension Digital Technology Co., Ltd. confirmed by e-mail to Forum that the <thedearfoams.com> domain name is registered with Chengdu West Dimension Digital Technology Co., Ltd. and that Respondent is the current registrant of the name. Chengdu West Dimension Digital Technology Co., Ltd. has verified that Respondent is bound by the Chengdu West Dimension Digital Technology Co., Ltd. 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 August 5, 2025, Forum served the Complaint and all Annexes, including a Chinese and English Written Notice of the Complaint, setting a deadline of August 25, 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@thedearfoams.com. Also on August 5, 2025, 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 August 26, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Hon. Karl V. Fink (Ret.) 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 PROCEEDING 

Complainant requests that the language of this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request considering the Chinese language Registration Agreement. Respondent has not objected to this request.

 

It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would demonstrate familiarity with the English language, filing of a trademark registration with an entity which shows an understanding of the English language, and any evidence (or lack thereof) exhibiting Respondent's understanding of the English language. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). Further, the Panel may weigh the relative time and expense in enforcing the Chinese language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, "It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.").

 

Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to show that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.

 

PARTIES' CONTENTIONS

A.       Complainant

Complainant has continuously and actively used its DEARFOAMS mark since its registration in 1985. Since 1999, Complainant has owned and operated the website located at the domain <dearfoams.com> where it offers its products including slippers, socks, bath rugs, pillows, and pet beds for sale.

 

The disputed domain name, registered October 4, 2023, incorporates Complainant's entire DEARFOAMS mark and differs only by the addition of the generic term "the" and the ".com" gTLD.

 

Respondent lacks rights or legitimate interests in its disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Respondent been authorized by Complainant to use its DEARFOAMS mark. Respondent has not used or prepared to use the disputed domain name in connection with a bona fide offering of goods or services.

 

Respondent registered and uses the disputed domain name in bad faith to impersonate Complainant. Respondent uses the website to impersonate Complainant. There is no legitimate reason for Respondent's registration and use of the domain name.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

For the reasons set forth below, based upon the uncontested allegations and evidence, the Panel finds that Complainant is entitled to the requested relief of transfer of the <thedearfoams.com> domain name.

 

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 or Confusingly Similar

Complainant has many registrations of the DEARFOAMS mark, including Registration No. 5,455,270, registered April 24, 2018, with the USPTO. Complainant's registration of the DEARFOAMS mark with the United States and other countries establishes Complainant's rights in the mark, as "registration of a mark with a legitimate governmental authority is sufficient under the Policy to allow a rebuttable presumption of rights in the mark." See Target Brands, Inc. v JK Internet Services, FA 349108 (Forum Dec. 14, 2004). The Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).

 

Complainant argues that Respondent's <thedearfoams.com> domain name is confusingly similar to the DEARFOAMS mark because it incorporates that mark completely, while merely adding the generic term ""the"" and the ".com" gTLD. The addition of generic or descriptive words does not avoid a finding of confusing similarity. See Crocs, Inc. v. ouba Ke, FA1369262 (Forum Mar. 2, 2011). Additionally, "it is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis. See Isleworth Land Co. v Lost in Space, SA, FA 117330 (Forum Sept. 27, 2002). The Panel finds that Respondent's <thedearfoams.com> domain name is confusingly similar to the DEARFOAMS mark under Policy ¶ 4(a)(i).

 

Complainant has proved this element.

 

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). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) ("Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests."). The Panel finds that Complainant has made a prima facie case.

 

Complaint argues that Respondent has not been licensed, contracted, or otherwise permitted by the Complainant in any way to use the DEARFOAMS mark or to apply for any domain name incorporating the DEARFOAMS mark, nor has the Complainant acquiesced in any way to such use or application of the DEARFOAMS mark by the Respondent. There is no evidence of fair use and there is no evidence that the Respondent is using or plans to use the DEARFOAMS mark or the domain name incorporating the DEARFOAMS mark for a bona fide offering of goods or services. There is no evidence that Respondent has been commonly known by the disputed domain name.

 

WIPO Overview 3.0, Section 2.1 provides:

While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. 

 

The Panel finds that Respondent has not met the burden and finds that Respondent has no rights or legitimate interests in respect of the domain name.

 

Complainant has proved this element.

 

Registration and Use in Bad Faith

Complainant argues that Respondent is using the disputed domain name in an attempt to pass itself off as Complainant. The disputed domain name's resolving website contains a logo that is identical to Complainant's and offers counterfeits of Complainant's products. This is evidence of bad faith.

 

Respondent had actual knowledge of Complainant's rights in the DEARFOAMS mark when it registered the disputed domain name. Respondent's prior knowledge of Complainant's DEARFOAMS mark is evident from the fame of Complainant's mark and Respondent's use of the disputed domain name. Respondent's registration and use of the disputed domain name with knowledge of Complainant's rights in the DEARFOAMS mark shows Respondent's bad faith registration and use of the disputed domain name pursuant to the Policy. See Lemon Inc. v. Sumer Singh, FA 2110519 (Forum Sept. 5, 2024 ("registration of a disputed domain name with actual knowledge of another's trademark rights is sufficient to establish bad faith, and can be shown by the notoriety of the mark and the use the Respondent makes of the disputed domain name").

 

The Panel finds, from Respondent's knowledge of Complainant's mark and the use made of the disputed domain name, that Respondent registered and uses the domain name in bad faith.

 

Complainant has proved this element.

 

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

 

 

 

Hon. Karl V. Fink (Ret.), Panelist

September 3, 2025

 

 

 

 

 

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