DECISION

 

Stateside Merchants, LLC v. rong liu

Claim Number: FA2305002043263

 

PARTIES

Complainant is Stateside Merchants, LLC ("Complainant"), represented by Lindy Herman of Rutan & Tucker LLP, California, USA. Respondent is rong liu ("Respondent"), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <paihvesshop.com>, registered with Name.com, 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.

 

David E. Sorkin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on May 4, 2023; Forum received payment on May 4, 2023.

 

On May 5, 2023, Name.com, Inc. confirmed by email to Forum that the <paihvesshop.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, 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 May 11, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 31, 2023 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@paihvesshop.com. Also on May 11, 2023, the Written Notice of the Complaint, notifying Respondent of the email 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 June 6, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed David E. Sorkin 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 has used PAIR OF THIEVES since 2014 in connection with underwear, socks, pajamas, and related products and services. Complainant's products are sold online and in retail stores. Complainant's website is located at <pairofthieves.com>. Complainant owns trademark registrations for PAIR OF THIEVES in standard character form in the United States and other jurisdictions, along with registrations for related and other marks, including a Masked Bear design mark.

 

Respondent registered the disputed domain name <paihvesshop.com> in August 2022. The domain name is being used for a website that mimics the appearance of Complainant's website. The website prominently displays Complainant's PAIR OF THIEVES mark and Masked Bear design mark, and offers for sale what Complainant alleges are unauthorized and counterfeit products bearing Complainant's PAIR OF THIEVES mark. Complainant alleges that Internet users searching for Complainant online are likely to find Respondent's website due to Respondent's use of a confusingly similar domain name. Complainant states that Respondent is not commonly known by the domain name and is not authorized to use Complainant's mark.

 

Complainant contends on the above grounds that the disputed domain name <paihvesshop.com> is confusingly similar to its PAIR OF THIEVES mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The Panel finds that Complainant has not proved the disputed domain name to be confusingly similar to a mark in which Complainant has rights.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted 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 Overview of WIPO Panel Views on Selected UDRP Questions, 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").

 

Identical and/or Confusingly Similar

The disputed domain name <paihvesshop.com> incorporates part of Complainant's registered PAIR OF THIEVES trademark but omits several letters. (It also omits the spaces and adds the generic term "shop" and the ".com" top-level domain, but these alterations are inconsequential.)

 

Complainant notes correctly that a domain name can be confusingly similar to a mark even if it omits some letters from the mark, citing ULIONA LTD. v. Ettouil Oualid, FA 2032922 (Forum Mar. 28, 2023) (finding <svfromnet.com> confusingly similar to SAVEFROM); E*Trade Financial Holdings, LLC v. Alex Drown, FA 2013318 (Forum Oct. 21, 2022) (finding <etredae.com> confusingly similar to E*TRADE); ArcBest IP Holdings LLC v. Azinue Bamu, FA 1999386 (Forum July 6, 2022) (finding <arcbst.com> confusingly similar to ARCBEST); and LittleThings, Inc. v. East Softwear, D2016-2254 (WIPO Dec. 23, 2016) (finding <litthings.com> confusingly similar LITTLETHINGS).

 

All of the examples cited by Complainant, however, involve significantly more minor alterations to the corresponding trademark than is the case here. In ULIONA, the domain name retained six of the eight letters in the mark, with two internal vowels being the only omitted letters. In E*Trade, the domain name rearranged but did not omit any letters. In ArcBest, only one letter, an internal vowel, was omitted. And in LittleThings, the domain name retained nine of twelve letters in the mark, omitting only the second syllable of one word. Here, in contrast, <paihvesshop.com> omits nearly half of the letters in Complainant's mark, including multiple consonants and the first letter of the most distinctive component of the mark ("thieves," since "pair" is descriptive of some of Complainant's products). A more analogous example might be RK HOLDINGS, LLP v. Ying Bao, FA 2032319 (Forum Apr. 4, 2023), in which the domain name <lincolntters.com> was found not to be confusingly similar to LINCOLN OUTFITTERS; or possibly Zimmermann Wear Pty Ltd v. Sam Dumond, FA 1802176 (Forum Sept. 17, 2018), in which <zimoutlet.com> was found not to be confusingly similar to ZIMMERMANN.

 

The test for confusing similarity involves a side-by-side comparison of the letters, words, sound, and other sensate aspects of the disputed domain name to the corresponding aspects of the relevant trademark; the manner in which the domain name is used, including the content of the associated website, is normally disregarded for purposes of this analysis. Zimmerman Wear Pty Ltd v. Sam Dumond, supra; see also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, supra,  1.7, 1.15; RK HOLDINGS, LLP v. Ying Bao, supra (citing WIPO Overview 1.15). The fact that users searching for Complainant's mark may find themselves at Respondent's website (a claim made by Complainant without supporting evidence) is likely attributable more to the content of Respondent's website, including its prominent and frequent use of Complainant's marks, than to any similarity between the <paihvesshop.com> domain name and Complainant's PAIR OF THIEVES mark.

 

In the Panel's view, Complainant has failed to meet its burden of proving that the disputed domain name is identical or confusingly similar to a mark in which Complainant has rights.

 

Rights or Legitimate Interests; Registration and Use in Bad Faith

As the Panel's finding with regard to Paragraph 4(a)(i) is dispositive, the Panel declines to reach the issues of rights or legitimate interests and registration and use in bad faith.

 

DECISION

Having considered the elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

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

 

 

David E. Sorkin, Panelist

Dated: June 7, 2023

 

 

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