The Complainant is Lululemon Athletica Canada Inc., Canada, represented by Sideman & Bancroft LLP, United States of America (“United States” or “U.S.”).
The Respondent is Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf, Iceland / Ma Chaw, United States.
2. The Domain Names and RegistrarThe disputed domain names
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2021. On October 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 1, 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 October 5, 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 amended Complaint on October 8, 2021.
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 October 13, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 2, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 3, 2021.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on November 10, 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 BackgroundThe Complainant is a leading designer and retailer of high-quality, yoga-inspired athletic apparel. Since its founding in 1998, it has developed, manufactured, and sold its premium apparel, including shirts, shorts, pants, and leggings, bearing what it describes as a “fanciful” but distinctive mark LULULEMON.
The Complainant owns a global portfolio of registrations for its marks including in Japan. A representative sample of registrations are exhibited in Annex 5 to the Complaint including the following U.S. registrations:
LULULEMON
No. 6166483
classes 18, 25, 27, 28, 35
registered October 6, 2020
LULULEMON
No. 3990179
class 35
registered June 5, 2011
LULULEMON
No. 4391115
class 25
registered August 27, 2013
LULULEMON ATHLETICA
No. 3985876
class 35
registered June 28, 2011
These trade mark registrations predate the dates of registration of the disputed domain names in August and September 2021.
As a result of extensive marketing and promotion, the mark LULULEMON has become well-known and a strong and distinctive indicator of the source of the Complainant’s products. The Complainant and its products are frequently and affectionately referred to by the term “lulu”. Examples of the use of the term Lulu referring to the Complainant including in well-known publications such as Seventeen, Fast Company, Barron’s, and New York Magazine are exhibited in Annex 6 to the Complaint.
The Complainant operates over 520 retail and outlet stores throughout the world including in Japan. It trades online at “www.shop.lululemom.com”, and in Japan at “www.lululemon.co.jp/ja-jp/home”. Screenshots of these websites are exhibited at Annex 7 to the Complaint. Its authentic products are sold exclusively through its retail and outlet stores, the above websites, and strategic partners such as premium yoga studios, gyms, and wellness centers. It does not sell its products through discount apparel stores or through wholesalers.
The disputed domain names resolve to websites purporting to sell LULULEMON products at discount price and claiming to be run by “Hakata Takumi Kogei”, a Japanese textile and kimono company.
In the absence of a Response, the Panel finds the above evidence to be true.
5. Parties’ Contentions A. ComplainantThe Complainant submits:
(i) Three of the disputed domain names begin with and wholly incorporate the Complainant’s mark LULULEMON together with descriptive terms and are therefore confusingly similar to the mark LULULEMON. The disputed domain name
(ii) On the evidence, the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) On the evidence adduced by the Complainant, the Respondent registered and is using the disputed domain names in bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings A. Identical or Confusingly SimilarThe Complainant points out that three of the disputed domain names incorporate the Complainant’s trade mark LULULEMON in its entirety. These are:
It is clear from WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7 that “where a domain name incorporates the entirety of a trade mark, […] the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”. That is the position in this case.
Each of those domain names incorporates a descriptive term: “online”, “store”, or “yoga.shop” respectively. In the Panel’s view, the incorporation of those terms does not prevent a finding of confusing similarity between the disputed domain names and the Complainant’s mark LULULEMON.
In the case of the disputed domain name
The Panel agrees with the Complainant’s submissions, and therefore finds that these four disputed domain names are all confusingly similar to the mark LULULEMON within paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsThe Complainant points out:
(i) The Respondent is known as “Ma Chaw”, an individual residing in New York and is not commonly known by the disputed domain names or by reference to the mark LULULEMON;
(ii) There is no legitimate reason for the Respondent to use the mark LULULEMON other than to refer to or impersonate the Complainant. This is evidenced by the Respondent’s use of the disputed domain names to imitate the Complainant’s websites as can be seen by the copies of the websites exhibited at Annexes 3a to 3d of the Complaint;
(iii) On the Complainant’s evidence the Respondent is not affiliated with the Complainant and is not an authorized reseller of LULULEMON products; and
(iv) The Complainant has not licensed the mark LULULEMON to the Respondent nor consented to its use of the mark.
On the basis of this evidence, and in the absence of a Response and evidence to the contrary, the Respondent has no rights or legitimate interests in respect of the LULULEMON mark nor the disputed domain names.
Furthermore, the Complainant’s evidence shows that the Respondent is using the disputed domain names with the intent to divert and mislead Internet users for its commercial gain. As can be seen at Annexes 3a to 3d, the Respondent is impersonating the Complainant and holding himself out to be an authorized reseller of the Complainant. The Respondent’s websites prominently display the LULULEMON mark as well as its trading logo. It is also using the Complainant’s product photos on its websites. The Complainant points out that it owns the copyright in these photographs.
The Complainant’s evidence of the Respondent’s websites at Annexes 3a to 3d shows that the Respondent is purporting to sell “new” LULULEMON products at discounts of 30% to 50% off the retail price. The Complainant does not sell its products via discount stores which, in the Complainant’s submission, points to them being counterfeit.
In the absence of a Response and contrary evidence, the Panel finds that the Respondent is using the disputed domain names for illegitimate purposes. This supports a finding that the Respondent has no rights or legitimate interests in the disputed domain names.
The Panel finds that the Complainant has no rights or legitimate interests in the disputed domain names within paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithThe Complainant submits that on the evidence (and as the Panel has found) the Respondent registered the disputed domain names even though it has no rights or legitimate interest in the mark LULULEMON and is unaffiliated with the Complainant. There is no credible explanation for the choice of the disputed domain names other than to capitalize on the mark LULULEMON and mislead Internet users. This creates a presumption of bad faith within WIPO Overview 3.0, section 3.1.4.
In addition, the evidence shows an absence of rights or legitimate interest coupled with no credible explanation for the Respondent’s choice of the disputed domain names within WIPO Overview 3.0, section 3.2.1.
The Panel therefore finds that the disputed domain names were registered in bad faith.
The Complainant points out that it received inquiries from customers in Japan indicating actual confusion. The Panel agrees that this is further evidence of use in bad faith.
At Annexes 8a to 8d to the Complaint, the Complainant exhibits copies of cease and desist correspondence with the Respondent to which there was no response from the Respondent. It submits, rightly, that the Respondent’s failure to respond whilst continuing to maintain the websites accessed by the disputed domain names is further evidence of the Respondent’s use of the disputed domain names in bad faith.
The Complainant draws attention to the evidence that the Respondent in addition to using a privacy/proxy service (in this case “Privacy service provided by Witheld for Privacy ehf”) to conceal its identity also provides false information on the websites accessed by the disputed domain names that can potentially mislead the Internet users about its true identity. Though the Respondent, Ma Chaw, is located in the U.S., all four websites claim to be run by “Hakata Takumi Kogei”, a Japanese textile and kimono company. Based on the Complainant’s research there is no evidence that the Respondent is associated with that company. The Complainant points out that the company is not affiliated with it in any way nor has it consented to any use by it of the LULULEMON mark.
In summary, the Complainant submits that the Respondent’s attempt to impersonate the Complainant and Hakata Takumi Kogei is indicative of bad faith. The websites accessed by the disputed domain names are visually the same, and all four websites display the Complainant’s logo and the mark LULULEMON. The Panel agrees with the Complainant that this is evidence of an attempt by the Respondent to impersonate, or pass off itself as, or associated with, contrary to the fact, the Complainant, and which evidences bad faith use.
The Complainant points out that it attempted to make a “test purchase” from the website at the disputed domain name
In the absence of a Response, the Panel agrees with the Complainant’s submissions and finds based on the totality of evidence that the Respondent registered and is using the disputed domain names in bad faith within paragraph 4(a)(iii) 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,
Clive Duncan Thorne
Sole Panelist
Date: November 22, 2021