WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Paul Frank Industries LLC v. Linjia Lu
Case No. D2011-0587
1. The Parties
The Complainant is Paul Frank Industries LLC of Los Angeles, California, United States of America, represented by Sideman & Bancroft LLP, United States of America.
The Respondent is Linjia Lu of Beijing, the People’s Republic of China.
2. The Domain Name and Registrar
The disputed domain name <cnpaulfrank.com> (the “Disputed Domain Name”) is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 1, 2011. On April 1, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Disputed Domain Name. On April 3, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 5, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 25, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 26, 2011.
The Respondent sent an email on April 27, 2011, informing the Center that she shut down the website at the Disputed Domain Name, and the Center forwarded the email to the Complainant with an instruction for a suspension request if the Complainant is interested in an amicable resolution. The Complainant in its reply of May 3, 2011 indicated that it did not wish to suspend the proceedings.
The Center appointed William P. Knight as the sole panelist in this matter on May 5, 2011. 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 owns a number of trademarks incorporating the words PAUL FRANK in the United States of America and in the People’s Republic of China, as well as the domain name <paulfrank.com>. The Complainant is a well-known manufacturer of clothing and other products bearing this trademark, associated with a popular children’s cartoon character, called “Julius the Monkey”, also the subject of registered trademarks of the Complainant. The Complainant has been in business using these marks since 1995 and acquired a worldwide reputation.
It would appear from the WhoIs search undertaken by the Complainant and included in the Complaint that the Respondent registered the Disputed Domain Name on September 17, 2010. The Disputed Domain Name presently is redirected to the Complainant’s website.
5. Parties’ Contentions
The Complainant submits that the Disputed Domain Name is confusingly similar to its trademark PAUL FRANK. The Complainant observes that the addition of the country code “cn” does nothing to distinguish the Disputed Domain Name from its mark, since it is a familiar abbreviation to the People’s Republic of China, and indeed aggravates the deception by reason of the false implication that the Respondent and the Respondent’s website are in some way connected, by affiliation or licence, with the Complainant.
The Complainant further asserts that the Respondent is not licensed by or affiliated to it. At the time of the Complaint, the Complainant alleges, the Respondent’s website at the Disputed Domain Name was a “Chinese language, nearly identical copy” of the Complainant’s website home page and submits that this, in conjunction with the fact that the establishment of the Complainant’s rights in its relevant trademarks and its substantial international reputation long predates the registration of the Disputed Domain Name, demonstrates that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
The Complainant alleges that the Respondent, on the website under the Disputed Domain Name as it was at the time of the filing of the Complaint, “[refers] to itself as ‘Paul Frank China’” and that the website “links to parts of Complainant’s site” and refers to a Paul Frank store in Beijing, where in fact no such store authorized by the Complainant exists. The Complainant makes no argument that the Disputed Domain Name was also registered in bad faith.
The Complainant requests that the Disputed Domain Name is transferred to it.
The Respondent did not reply to the Complainant’s contentions other than, as mentioned, an email acknowledging that the Respondent was responsible for the website under the Disputed Domain Name, had received the Complaint (but not being good at English, not understanding most of it – nonetheless acknowledging the gist of the Complaint) and adding “so, if I shut down websit[e] immediately, the problem will be solved? [Be]cause I do not use the websit[e] [to] make any profit and make any bad influence to your company.”
Indeed, it would appear that, at the date that the Center conducted its compliance check of the Complaint on April 5, 2011, when it went to check the Respondent’s website under the Disputed Domain Name in order to find the Respondent’s other contact information, the Respondent had already redirected the Disputed Domain Name to the Complainant’s website, presumably as a consequence of the Complainant’s service upon it of the Complaint, so that the Center found only the Complainant’s Costa Mesa, California address.
6. Discussion and Findings
The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the UDRP. According to paragraph 4(a) of the Policy, the Complainant must prove that:
(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 in bad faith and is being used in bad faith.
The mere fact that the Respondent fails to respond to the Complaint does not lead, however, to an automatic entitlement on the part of the Complainant to a decision in its favour. Paragraph 14 of the Rules provides in the event of default that the Panel “may draw such inferences therefrom as it considers appropriate.” Paragraph 15(a) of the Rules instructs the Panel that “[a] Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules or principles of law that it deems applicable.” In the absence of any response from the Respondent, the onus upon the Complainant will be satisfied if a conclusion which is capable of being drawn from the evidence provided by the Complainant is not contradicted by the Respondent. See, for example, M. Corentin Benoit Thiercelin v. CyberDeal, Inc., WIPO Case No. D2010-0941 among numerous other decisions.
The Panel is mindful of the Respondent’s claim of a lack of proficiency in English, but the language of the GoDaddy.com Domain Name Registration Agreement, exhibited by the Complainant in the Complaint, is English and therefore the Respondent must be prepared to deal with the Complaint in English in this case. See paragraphs 2(d) and 11 of the Rules, discussed in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition at paragraph 4.3.
A. Identical or Confusingly Similar
The Complainant’s trademark rights are beyond question. It is also likely that the Respondent was aware of those trademark rights.
The Disputed Domain Name incorporates the Complainant’s PAUL FRANK trademark fully. The only reason for pause in coming to a conclusion of confusing similarity is the placement of the letters “cn” as a prefix to that trademark. The use of a country code as a suffix, in a subordinate position to the relevant trademark, has often been found to fail to distinguish a disputed domain name from a complainant’s trademark. However, is there the same likelihood of deception or confusion where the country code letters appear in front of the trademark?
The Complainant refers the Panel to the decision in Amazon.com, Inc. v A.R. Information & Publication Co., Ltd, WIPO Case No. D2001-1392 in which a very distinguished three-member panel was satisfied that the prefix “thai” in <thaiamazon.com> did not distinguish a domain name containing a famous mark. The present circumstances are comparable to those considered in that decision, at least in this regard. The Respondent was plainly aware of the Complainant’s trademarks and sought by its website at the Disputed Domain Name to gain some advantage from them and the Respondent has adopted the Complainant’s PAULFRANK trademark in the Disputed Domain Name in such a manner that it is clearly recognizable as a distinct element. The Panel is therefore satisfied that the Disputed Domain Name is confusingly similar to the Complainant’s PAUL FRANK trademark.
B. Rights or Legitimate Interests
The nature of the former and present use of the Disputed Domain Name indicates that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The website does not appear to have been any sort of criticism or homage site, although no translation of the Chinese language script was provided, and the Respondent has not sought to contradict the Complainant’s assertions in this regard.
The Complainant alleges that the Respondent’s website at the Disputed Domain Name was a “Chinese language, nearly identical copy” of the Complainant’s website home page and supports this assertion with grainy images of what it alleges are the pages of the Respondent’s website at the Disputed Domain Name. This is no longer possible to verify, as the Disputed Domain Name now points to the Complainant’s website, but the Respondent has not denied this claim and so it is reasonable to accept that it is true. Certainly, the current use being made by the Respondent of the Disputed Domain Name evinces no rights or legitimate interests in it on the part of the Respondent. The Panel accordingly so finds.
C. Registered and Used in Bad Faith
The Complainant alleges that the website under the Disputed Domain Name referred to itself as Paul Frank China and linked to parts of the Complainant’s site and referred to a Paul Frank store in Beijing, where in fact no such store authorized by the Complainant exists. Such misinformation may indeed be evidence of bad faith use but it is not possible from the grainy images and lack of translation of the Respondent’s website to see that these allegations are supported. It is just possible from the Complainant’s evidence, and an observation of the Complainant’s website (not put in evidence), that a number of images from the Complainant’s website and the “Julius the Monkey” and PAUL FRANK trademarks have been copied on the Respondent’s website as it was.
Even on the limited evidence provided by the Complainant, the Respondent’s former use of the Disputed Domain Name does not appear to have been good faith use. The Respondent’s website at the Disputed Domain Name was at least making unauthorised use of a copy some part or parts of the Complainant’s website, including its trademarks to derive some sort of advantage, and may well have contained the misinformation alleged by the Complainant. Those allegations have not been denied by the Respondent, who seems to have understood the Complaint at least sufficiently to redirect the Disputed Domain Name to the Complainant’s website immediately on receipt of the Complaint and to make the email proposal referred to above.
The current use of the Disputed Domain Name is little better. Even if this were not the case, the present passive redirection of the Disputed Domain Name does not preclude the return of the Respondent to the former use the subject of the Complaint.
Whilst the Complainant makes no specific argument in respect of registration of the Disputed Domain Name in bad faith, the recentness of the registration of the Disputed Domain Name and the established reputation and trademarks of the Complainant, in the People’s Republic of China as well as elsewhere, enable a conclusion that the Disputed Domain Name was also registered and used in bad faith.
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 <cnpaulfrank.com> be transferred to the Complainant.
William P. Knight
Dated: May 12, 2011