The Complainant is LovePop, Inc., United States of America (“United States”), represented by Polsinelli PC Law firm, United States.
The Respondent is 葛尧 (Yao Ge), China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on March 26, 2021. On March 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 30, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. On March 31, 2021, the Center sent an email communication to the Complainant providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint in English on April 1, 2021. On March 31, 2021, the Center sent another email communication to the Parties in English and Chinese regarding the language of the proceeding. On April 1, 2021, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 28, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 29, 2021. The Center appointed Matthew Kennedy as the sole panelist in this matter on May 4, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background The Complainant creates laser-cut three-dimensional (“3D”) pop-up greeting cards. It was founded in 2014 and presented its business on the “Shark Tank” television program in 2015. The Complainant markets its cards online through its own website, through LovePop retail locations in the United States and through third party retailers in the United States and abroad. The Complainant’s trademark registrations include United States trademark registration number 4,730,483 for LOVEPOP, registered on May 5, 2015, with a claim of first use in commerce on March 29, 2014, specifying greeting cards and other goods in class 16; United States trademark registration number 5,961,804 for LOVEPOP, registered on January 14, 2020, with a claim of first use in commerce on June 1, 2014, specifying custom design of greeting cards and other services in class 42; and United States trademark registration number 5,961,803, for a device consisting of an image of the silhouette of an opening greeting card with a heart in the center (the “LovePop device”), registered on January 14, 2020, with claims of first use in commerce on March 29, 2014 and June 1, 2014, specifying goods and services in classes 16 and 42. Those trademark registrations remain current. The Complainant has also registered the domain name The Respondent is an individual. The disputed domain name was registered on January 11, 2021. It formerly resolved to a website in English offering pop-up greeting cards for sale. The website displayed the following product description: “Flowers have the same intricate detailing as all our Lovepop greeting cards (…).” Prices were displayed in USD. At the time of this Decision, the website is no longer available; rather, the disputed domain name is passively held. 5. Parties’ Contentions A. Complainant The disputed domain name is confusingly similar to the Complainant’s LOVEPOP mark. The disputed domain name has the dominant word “pop” from the Complainant’s mark with only the addition of one non-distinctive element and the substitution of a phonetically and visually similar word. The Respondent has no rights or legitimate interests with respect to the disputed domain name. The Respondent is not affiliated with the Complainant, licensed to use the Complainant’s LOVEPOP mark, or licensed to register or use domain names, or associated email accounts, incorporating the LOVEPOP mark. The website associated with the disputed domain name is a fraudulent website designed to deceive and divert the Complainant’s customers through use of the LOVEPOP trademark and copying of the Complainant’s website “www.lovepopcards.com”. The disputed domain name was registered and is being used in bad faith. Given the Complainant’s reputation, the composition of the disputed domain name and the content of the associated website, it is clear that the Respondent was well aware of the Complainant and had the Complainant’s LOVEPOP mark firmly in mind when registering the disputed domain name. There is no doubt that many Internet users attempting to visit the Complainant’s website have ended up on the webpage set up by the Respondent, which mimics the Complainant’s website. The Respondent is falsely suggesting that it is the trademark owner and that its website is an official website of the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceeding Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese. The Complainant requests that the language of the proceeding be English. Its main arguments are that it is not able to communicate in Chinese, translation of all documents into Chinese would cause undue delay and substantial expense, while the website associated with the disputed domain name was in English, indicating that the Respondent is competent in that language. Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293. The Panel observes that in this proceeding the Complaint and amended Complaint were filed in English. The website associated with the disputed domain name was also in English, from which it is reasonable to infer that the Respondent is able to understand and communicate in that language. Despite the Center having sent the notification of the Complaint and an email regarding the language of the proceeding in both Chinese and English, the Respondent has not expressed any interest in participating in this proceeding. Therefore, the Panel considers that requiring the Complainant to translate the amended Complaint would create an undue burden and delay, whereas accepting it as filed without translation will not cause unfairness to either Party. Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. The Panel would have accepted a Response in Chinese, but none was filed. 6.2 Substantive Issues Paragraph 4(a) of the Policy provides that a complainant must prove each of the following elements with respect to the disputed domain name: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar Based on the evidence presented, the Panel finds that the Complainant has rights in the LOVEPOP mark. The disputed domain name incorporates one of the two morphemes in the LOVEPOP mark (i.e., “POP”). The initial morpheme of the disputed domain name is “lucky” whereas the initial morpheme of the mark is “LOVE”. Phonetically, both initial morphemes begin with the same consonant-vowel combination: /lʌ/.1 As a result, the disputed domain name incorporates all but one of the phonemes in the LOVEPOP mark, the exception being the consonant /v/, where the disputed domain name contains the syllable /kɪ/. The disputed domain name adds the word “cards” but, as a mere descriptive term, this element does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s mark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8. The only other element in the disputed domain name is a generic Top-Level Domain (“gTLD”) suffix (“.com”). As a mere technical requirement of registration, this element is generally disregarded in the comparison between a domain name and a trademark for the purposes of the first element of paragraph 4(a) of the Policy. See WIPO Overview 3.0, section 1.11. The Panel recalls that the first element of paragraph 4(a) of the Policy functions primarily as a standing requirement. On balance, the Panel considers that the disputed domain name is confusingly similar to the LOVEPOP mark for the purposes of that requirement. Further, the Panel takes note that the website to which the disputed domain name formerly resolved claimed to sell “Lovepop” greeting cards. This evidence confirms that the Respondent was seeking to target the LOVEPOP trademark through the disputed domain name and affirms the confusing similarity. See WIPO Overview 3.0, section 1.15. Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy: “(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or (ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or (iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” The disputed domain name, which is confusingly similar to the Complainant’s LOVEPOP trademark, formerly resolved to a website that claimed to sell the Complainant’s goods. However, the Complainant submits that the Respondent is not affiliated with the Complainant, licensed to use the Complainant’s LOVEPOP mark, or licensed to register or use domain names, or associated email accounts, incorporating the LOVEPOP mark. Whether or not the products sold on the Respondent’s website were genuine LovePop products or not, there was no disclaimer clarifying that the Respondent lacked any relationship with the Complainant. At the time of this Decision, the disputed domain name is passively held. Accordingly, the Panel does not consider either use of the disputed domain name to be in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. Nor is either use a legitimate noncommercial or fair use of the disputed domain name within the meaning of paragraph 4(c)(iii) of the Policy. The Respondent is identified by the Registrar as “葛尧 (Yao Ge)”. The title of the Respondent’s website read “LUCKYPOP” (without “cards”). There is no evidence that the Respondent is known as an individual, business or organization either by that name or the disputed domain name. There is no evidence that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent failed to rebut that prima facie case because he did not respond to the Complainant’s contentions. Therefore, based on the record of this proceeding, the Panel finds that the Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows: “(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.” As regards registration, the disputed domain name was registered in 2021, after the Complainant obtained its trademark registrations for LOVEPOP. The Panel recalls that the disputed domain name incorporates one of two morphemes in the LOVEPOP mark (i.e., “POP”) and all but one of the phonemes in that mark. The disputed domain name also includes the word “cards”, as does the Complainant’s domain name As regards use, the Complainant argues that the Respondent’s website mimicked its own website. A side-by-side comparison of the website headers as they appeared shortly before the Complaint was filed shows that both titles were red. The Respondent’s website title was a hot air balloon in the shape of a heart alongside the name LUCKYPOP; while the Complainant’s website title was the LovePop device, which contains a heart, above the LOVEPOP trademark. The tab headings below the titles were mostly the same as those on the Complainant’s website, including a star graphic. Overall, there are similarities and differences between the website headers. However, the text of the Respondent’s website also made the claim that it sold “Lovepop” greeting cards. Given these circumstances and the findings in section 6.2B above, the Panel considers it likely that the Respondent, by using the disputed domain name, has intentionally attempted to attract for commercial gain Internet users to his website by creating a likelihood of confusion with the Complainant’s LOVEPOP trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of the greeting cards offered on that website within the terms of paragraph 4(b)(iv) of the Policy. The Panel takes note that the use of the disputed domain name has recently changed and that it no longer resolves to an available website. This does not alter the Panel’s conclusion; rather, it may be a further indication of bad faith. Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name Matthew Kennedy 1 The transcription uses the International Phonetic Alphabet.
Sole Panelist
Date: May 10, 2021
Full & Egal Universal Law Academy