The Complainant is Lymi, Inc., United States of America (“United States”), represented by Lane IP Limited, United Kingdom.
The Respondent is 张平平 (Zhang Ping Ping), China.
2. The Domain Names and RegistrarThe disputed domain names
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 14, 2021. On September 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 16, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On September 24, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On September 24, 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 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 in English and Chinese of the Complaint, and the proceedings commenced on October 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 21, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 22, 2021.
The Center appointed Rachel Tan as the sole panelist in this matter on November 1, 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.
The Complainant, Lymi, Inc., began its business by selling vintage clothing in Los Angeles in 2009. It launched the “Reformation” brand nationally aiming to reform the fashion industry by using sustainable materials and methods in producing apparel and accessories. The Complainant now has 20 “Reformation” branded stores across the United States, Canada, and the United Kingdom. Its official website offers free worldwide shipping on all orders and ships to over 270 countries.
The Complainant owns a range of registrations for the REFORMATION trade mark in different jurisdictions, including the United States Registration No. 4111272, registered on March 13, 2012, in class 25; the United States Registration No. 4114140, registered on March 20, 2012, in class 35; and International Registration No. 1351244 registered on March 3, 2017, in classes 25 and 35.
The Complainant launched its website “www.thereformation.com” in 2011, and has operated it continuously since then. The Complainant is the owner of various domain names containing the element “reformation”, including
The Respondent is 张平平 (Zhang Ping Ping), China.
The disputed domain names were registered on June 30, 2021, and do not resolve to active websites at the date of this decision. According to the screenshots provided by the Complainant, the disputed domain names previously resolved to websites in English, displaying the Complainant’s REFORMATION trade mark and offering apparel for sale. These websites also used images and wordings from the Complainant’s official website.
5. Parties’ Contentions A. ComplainantThe Complainant contends that the disputed domain names are confusingly similar to the Complainant’s REFORMATION mark. The disputed domain names all begin with the Complainant’s REFORMATION mark followed by the ordinary words, namely “discount”, “online shop”, “sales shop”, or “specials” which are related to the Complainant’s products and online shop. The “.com” Top-Level Domain (“TLD”) can be disregarded for purposes of comparing the disputed domain names to the Complainant’s mark.
The Complainant further alleges that there is no evidence to support that the Respondent is commonly known or referred to as “Reformation” or has any rights or legitimate interests in the disputed domain names. The Respondent is not affiliated with the Complainant, nor is it licensed or authorized by the Complainant to use its mark, and the Complainant does not endorse or sponsor the Respondent’s use of the disputed domain names. Instead of making legitimate or fair use of the disputed domain names in connection with a bona fide offering of goods or services, the Respondent is using the disputed domain names in bad faith.
The Complainant finally asserts that the Respondent registered and uses the disputed domain names in bad faith. Each of the disputed domain names resolved to a website headed with the Complainant’s REFORMATION stylized mark and offered clothing for sale. The resolved websites featured copyrighted images copied from the Complainant’s official website and included a dedicated page headed “Oh hi, we’re Reformation” with wording copied from the Complainant’s official website. The Respondent’s intention is to mislead visitors to the resolved websites into thinking that they are accessing the Complainant’s website, or the websites associated with, or affiliated to the Complainant. Further, the addition of the terms “sales shop”, “online shop”, “discount”, and “specials” in the disputed domain names is likely to increase the likelihood of confusion, and may induce Internet users to believe that there is an association between the disputed domain names and the Complainant.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings 6.1 Language of the ProceedingInitially, the Panel must address the language of the proceeding. Paragraph 11(a) of the Rules provides that the language of the administrative proceeding shall be the language of the Registration Agreement unless otherwise agreed by the parties, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding. The panel may choose to write a decision in either language, or request translation of either party’s submissions.
In this case, the Registrar has confirmed to the Center that the language of the Registration Agreement as used by the registrant for the disputed domain names is Chinese. However, the Complainant has requested that English be adopted as the language of the proceeding for the reasons summarized below:
(a) The disputed domain names are composed of English words;
(b) The disputed domain names resolved to websites in English which indicates the Respondent can understand and use English. Therefore, the Respondent would not be in any way prejudiced if the proceeding is conducted in English; and
(c) The Complainant would be put to great expense and inconvenience to have to translate the Complaint and its evidence, which would cause undue delay.
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 Panel having considered the circumstances finds that English shall be the language of this proceeding. The reasons are set out below.
(a) The Complainant is a company based in the United States. Requiring the Complainant to submit documents in Chinese would lead to delay and cause the Complainant to incur translation expenses;
(b) The Respondent’s choice of Roman letters for the disputed domain names and the English content of the webpages under the disputed domain names, indicates some familiarity with the English language;
(c) Even if the Respondent does not possess a sufficient command of English to understand the Complaint, there were ample opportunities for the Respondent to raise an objection. The Center notified the Parties in English and Chinese of the Complainant’s request for English to be the language of the proceeding, but the Respondent did not protest against this request; and
(d) The Respondent has failed to participate in the proceeding even though the Center sent the notification of the Complaint in English and Chinese, and has been notified of its default;
(e) The Complaint has been submitted in English. No foreseeable procedural benefit may be served by requiring Chinese to be used. On the other hand, the proceeding may proceed expeditiously in English.
Accordingly, the Panel will proceed with issuing this decision in English.
6.2 Substantive Issues A. Identical or Confusingly SimilarThe Panel is satisfied that the Complainant has adduced evidence to demonstrate its established rights in the REFORMATION mark.
The Panel notes that the REFORMATION mark is wholly encompassed within the disputed domain names. In cases where a domain name incorporates the entirety of a trade mark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Moreover, the additional elements “discount”, “onlineshop”, “salesshop”, or “specials” do not preclude a finding of confusing similarity between the REFORMATION mark and the disputed domain names. It is accepted by previous UDRP panels that the addition to the complainant’s trade marks of words or terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity of the disputed domain name from the trade mark under the first element of the Policy (see section 1.8 of the WIPO Overview 3.0). The Panel further notes that the elements “discount”, “onlineshop”, “salesshop”, or “specials” are closely related to the Complainant’s fashion business.
Lastly, it is permissible for the Panel to ignore the TLD, in this case “.com”, under the first element confusing similarity test. See section 1.11.1 of the WIPO Overview 3.0.
Accordingly, the Complainant has satisfied the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate InterestsIn circumstances where the Complainant possesses exclusive rights to the REFORMATION mark, whereas the Respondent seems to have no trade mark rights, the Panel is satisfied that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, and the burden of production shifts to the Respondent. See section 2.1 of the WIPO Overview 3.0.
The disputed domain names all previously resolved to webpages displaying the Complainant’s REFORMATION mark and offering apparel for sale. The webpages used images and wordings from the Complainant’s official website including “Oh hi, we’re Reformation”. Such use does not constitute a bona fide of offering of goods or service nor a legitimate noncommercial or fair use of the disputed domain names. The Respondent has not provided any reasons to justify the choice of the term “Reformation” in the disputed domain names, and has failed to rebut the Complainant’s prima facie case. Further, there is no indication to show that the Respondent is commonly known by any of the disputed domain names or otherwise has rights or legitimate interests in them. In addition, the Complainant has not granted the Respondent any license or authorization to use the Complainant’s REFORMATION mark or register the disputed domain names. None of the circumstances in paragraph 4(c) of the Policy is present in this case.
Each of the disputed domain names contains the Complainant’s REFORMATION mark in its entirety with the additional elements closely related to the Complainant’s fashion business, and in the circumstances, creates a risk of implied affiliation with the Complainant that prior UDRP panels have consistently found cannot constitute fair use as it effectively impersonates or suggests sponsorship or endorsement by the trade mark owner, i.e., the Complainant. See section 2.5.1 of the WIPO Overview 3.0.
For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names.
Accordingly, the Complainant has satisfied the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad FaithThe Complainant’s REFORMATION mark had been registered well before the registration of the disputed domain names. Through use and advertising, the Complainant’s REFORMATION mark has acquired a reputation around the world for fashion products. Search results using the key word “reformation” on the Internet search engines direct Internet users to the Complainant and its products, which indicates that an exclusive connection between the REFORMATION mark and the Complainant has been established. As such, and considering the nature of the disputed domain names and the Respondent’s use of the REFORMATION mark on the websites at the disputed domain names, the Respondent either knew or should have known of the Complainant’s REFORMATION mark when registering the disputed domain names.
Section 3.1.4 of the WIPO Overview 3.0 states that the “mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith”. In this case, the disputed domain names that were registered by an unaffiliated individual incorporate the Complainant’s widely-known REFORMATION mark plus the descriptive elements “discount”, “onlineshop”, “salesshop”, or “specials” that are closely related to the Complainant’s fashion business, thus, creating a presumption of bad faith.
The Panel notes that each of the disputed domain names previously resolved to a website displaying the Complainant’s REFORMATION mark and offering apparel for sale. The websites also used images and wordings from the Complainant’s official website including “Oh hi, we’re Reformation”. The Panel is of the view that the Respondent intentionally created a likelihood of confusion with the Complainant’s REFORMATION mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites. This demonstrates bad faith registration and use of the disputed domain names, as provided in paragraph 4(b)(iv) of the Policy.
In addition, the Panel finds that the current inactive use of the disputed domain names in this case would not prevent a finding of bad faith under the doctrine of passive holding. See section 3.3 of the WIPO Overview 3.0.
The Respondent has kept silent in the face of the Complainant’s allegations of bad faith. Taking into account these circumstances, the Panel finds that the Respondent must have known of the Complainant before registering the disputed domain names and considering the Respondent’s lack of rights or legitimate interests, and by registering and using the disputed domain names as discussed above, the Panel is led to conclude that the disputed domain names were registered and are being used in bad faith.
Accordingly, the Panel finds that the Complainant has satisfied the third element under paragraph 4(a) of the Policy.
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
Rachel Tan
Sole Panelist
Date: November 15, 2021