The Complainant is LYMI, INC., United States of America (“United States”), represented by Lane IP Limited, United Kingdom.
The Respondent is 解玉宏 (XIE YU HONG), 陈晓梅 (chen xiao mei), China.
2. The Domain Names and RegistrarThe disputed domain names
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August 12, 2021. On August 13, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 16, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 10, 2021 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 amendment to the Complaint on September 14, 2021.
On September 15, 2021, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed the request that English be the language of the proceeding on September 15, 2021. The Respondent did not comment on the language of the proceeding.
The Center verified that the Complaint together with the amendment to the 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“SupplementalRules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint in English and Chinese, and the proceeding commenced on September 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 11, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 15, 2021.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on November 2, 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 A. ComplainantThe Complainant is a company incorporated in the State of Delaware in the United States and founded in Los Angeles, United States in 2009, and a leading sustainable clothing brand, operating internationally under the trade mark REFORMATION (the “Trade Mark”).
The Complainant is the owner of numerous registrations for the Trade Mark in jurisdictions worldwide, including United States trade mark registration No. 4111272, with a registration date of March 13, 2012; and International trade mark registration No. 1351244, with a registration date of March 3, 2017.
The Complainant is also the owner of several domain names comprising the Trade Mark.
B. RespondentThe Respondent is an individual, apparently with an address in China.
C. The Disputed Domain NamesThe disputed domain names
The disputed domain names resolve to websites that mimic the look and feel of the Complainant’s official website and feature the Complainant’s Trade Mark, and apparently offer for sale discounted clothing under and by reference to the Trade Mark (the “Websites”).
5. Parties’ Contentions A. ComplainantThe Complainant contends that the disputed domain names are identical or confusingly similar to the Trade Marks, the Respondent has no rights or legitimate interests in respect of the disputed domain names, and the disputed domain names were registered and are being used in bad faith.
B. RespondentThe Respondent did not respond to the Complainant’s contentions.
6. Discussion and Findings 6.1. Language of the ProceedingThe language of the Registration Agreement for the disputed domain names is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the Parties, or unless specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the Parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the Parties and undue delay to the proceeding.
The Complainant has requested that the language of the proceeding be English, for several reasons, including the fact the Websites are English language websites.
The Respondent did not file a response and did not file any submissions with respect to the language of the proceeding.
In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs.
The Panel finds there is sufficient evidence to suggest that the Respondent is conversant in the English language. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.
In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondent would be prejudiced, should English be adopted as the language of the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.
6.2 Substantive Elements of the PolicyThe Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.
A. Identical or Confusingly SimilarThe Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration.
The disputed domain names incorporate the entirety of the Trade Mark (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7) followed by the letter “e”, the word “sale”, and the word “sales”, respectively.
Where a relevant trade mark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element (see WIPO Overview 3.0, section 1.8).
The Panel therefore finds that the disputed domain names are confusingly similar to the Trade Mark.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in disputed domain names:
(i) Before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain names or names corresponding to the disputed domain names 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 names even if the respondent has acquired no trade mark or service mark rights; or
(iii) The respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain names or to use the Trade Mark. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, and the burden is thus on the Respondent to produce evidence to rebut this presumption.
The Respondent has failed to show that he has acquired any trade mark rights in respect of the disputed domain names or that the disputed domain names have been used in connection with a bona fide offering of goods or services. To the contrary, the Respondent has used the disputed domain names in order to offer for sale discounted clothing on the Websites under the Trade Mark, without the sponsorship, authorisation, or approval of the Complainant.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain names.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names.
In all the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad FaithGiven the notoriety of the Complainant and of its Trade Mark; the lack of any substantiated credible explanation from the Respondent; and the Respondent’s use of the Websites in the manner described in Section 6.2.B. above, the Panel finds, in all the circumstances, that the requisite element of bad faith has been made out. The Panel considers it is inconceivable the Respondent was not aware of the Complainant’s Trade Mark at the time it registered the disputed domain names. Furthermore, the use of the disputed domain names to resolve the Websites, mimicking the look and feel of the Complainant’s official website, featuring the Complainant’s Trade Mark, and apparently offering for sale discounted clothing, shows an intention by the Respondent to take unfair advantage of the Trade Mark.
For all the foregoing reasons, the Panel concludes that the disputed domain names have been registered and are being used in bad faith.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names,
Sebastian M.W. Hughes
Sole Panelist
Date: November 10, 2021