WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Paul Frank Industries LLC v. Liu Qing
Case No. DTV2011-0017
1. The Parties
1.1 The Complainant is Paul Frank Industries LLC of Los Angeles, California, United States of America, represented by Sideman & Bancroft LLP, United States of America.
1.2 The Respondent is Liu Qing of Beijing, China.
2. The Domain Name and Registrar
2.1 The disputed domain name <paulfrank.tv> (the “Domain Name”) is registered with 1API GmbH (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 11, 2011. In the Complaint the Respondent was identified as “Liu Yifei”, the name recorded in the publically available WhoIs details for the Domain Name on September 19, 2011.
3.2 A registrar verification request was sent to the Registrar from the Center on October 12, 2011. In its response of October 13, 2011, the Registrar first confirmed the registrant to be “Liu Yifei” but then provided contact details that suggested that the registrant was “tang quing”. On October 18, 2011 the Center sent an email to the Registrar pointing out this inconsistency and asking for clarification.
3.3 As at October 18, 2011 the Domain Name was registered in the name of “tang quing”. However, on October 21, 2011 the Registrar sent an email to the Center. That email claimed that the Domain Name was locked and that the registrant was a third person; i.e. “Liu qing”.
3.4 On October 21 2011, the Center sent a further email to the Registrar, inter alia, enclosing a copy of WhoIs detail for the Domain Name as at that date which showed that the registrant was now “Liu qing”, but expressing concern that the Registrar had allowed the WhoIs details for the Domain Name to change. In particular in that email the Center stated:
“The Center confirms for its part that it did not issue a suspension of the instant UDRP proceeding, and further that no decision has been issued by an administrative Panel. Therefore, the Center requests 1API GmbH to please explain the circumstances of the transfer of the domain name in apparent breach of paragraph 8 of the UDRP from tang qing to Liu qing and if possible restore such registrant details to those previously confirmed by you.”
3.5 On October 26, 2011, the Registrar sent an email to the Center in which it stated as follows:
“unfortunately I could not reach you by phone.
Therefore I am sending you this email. I made a mistake when answering your first email. We investigated, scanned all logfiles and found that the domain paulfrank.tv was never registered with a different contact than the current one, as it is currently in the whois.
After your first email has been received, the domain has been locked so that our client could not update the domain. Furthermore the domain will not expire and cannot be deleted.”
3.6 The Center sent an email to the Complainant on October 26, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed a first amended Complaint on October 27, 2011 and filed a second amended Complaint on November 1, 2011. The Center then 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”).
3.7 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 November 3, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 23, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 25, 2011.
3.8 The Center appointed Matthew S. Harris as the sole panelist in this matter on December 16, 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.
3.9 Subsequent to appointment the Panel noted that there appears to have been yet further changes in the publically available WhoIs details for the Domain Name. In particular it appeared that as at November 10, 2011, the Domain Name has been registered in the name of Paul Frank Industries LLC. By December 19, 2011, the registrant for the Domain Name had changed again and was registered in the name of “wangsan” with an address in Taiwan.
3.10 On December 19, 2011 the Panel issued the Administrative Panel Procedural Order No.1 directed to the Registrar. In that Procedural Order it recorded the various changes in WhoIs details for the Domain Name since the filing of the Complaint and commented as follows:
“(xi) As matters currently stand, the Panel is likely to make comments critical of the Registrar in its decision. In particular, it would appear that:
(a) the Registrar has since becoming aware of the Complaint allowed multiple changes to the registration details for the Domain Name contrary to its obligations under paragraph 8 of the UDRP;
(b) the Registrar has sought to mislead the Center in its email of October 26. 2011 in that it:
(1) falsely claimed in that email that the domain name ‘was never registered with a different contact than the current one’; and
(2) falsely claimed in that email that on receipt of the Center’s ‘first email’ the domain name had been ‘locked’.
(xii) The Panel is also likely to invite the Center to bring its decision to the attention of ICANN for such further investigation or action in relation to the Registrar’s activities and business practices as ICANN considers appropriate.”
3.11 Accordingly, the Procedural Order provided the Registrar with the opportunity to file a further submission in order to address these criticisms.
3.12 Although the Procedural Order did not invite the parties to file further submissions, on December 21, 2011 the Complainant filed a short further submission confirming that the change of registrant name to Paul Frank Industries LLC. had not been requested by the Complainant. It also enclosed email correspondence with the Registrar. This showed that on November 3, 2011 the Registrar has written to the Complainant lawyers and stated:
“Please be so kind and tell us the information of your client, we should enter in the whois database for this domain. As soon as this has been done, please provide us with an email-adress where we should send the authcode to.”
3.13 The Complainant lawyers had written back confirming that this should await a final decision which led to the Registrar responding with a further email on November 8, 2011 that read as follows:
“I hereby confirm that the whois information of paulfrank.tv has been updated. The authcode is: [...]”
3.14 The Registrar provided a response to the Procedural Oder on December 22, 2011 in the form of an email which read as follows:
“Dear Madam, Dear Sir,
as requested, I am contacting you regarding the case: paulfrank.tv. According to a telephone conversation with WIPO case manager … . I hereby provide you will all information, which hopefully helps us all to understand what happened.
Fact is that myself did some mistakes while working on this specific case. I locked the domain for transfers and deletions but I forgot to lock it for whois updates. The domain, registered with our customer in China was therefore updated several times.
To be honest after 10 years in the domain-business and dealing with such issues it was my first fault and I am terribly sorry for all the confusion. Please let me know if you should need further explanation. Please note that it is our goal to get this issue solved as fast as and as exactly as possible.
So finally, in order to clarify the situation, please see below:
We, the registrar 1API GmbH hereby confirm that:
- The domain is locked;
- The domain-whois information has been restored to ‘Liu qing’;
- Whois-information cannot be updated as the domain is locked;
- The domain will not expire;
Please find below the current whois-information:
created-date: 2011-03-05 15: 28: 25
updated-date: 2011-12-22 10: 17: 36
registration-expiration-date: 2012-03-05 15: 28: 26
owner-organization: Liu qing
owner-name: Liu qing
owner-street: Nantan Lu 28 Hao
As the domain is currently locked, the domain will remain in our system, until
we receive further advice from the panel.
Again, we truly apologize for all the confusion. I wish you all a merry
Christmas and a successful year 2012.
4. Factual Background
4.1 The Complainant is a manufacturer of clothing and other items since 1995. Its products are sold in a number of different jurisdictions including Hong Kong, China where it products are sold in two dedicated stores and by twelve retailers.
4.2 The Complainant is the owner of various trade marks around the world that comprise or include the words “Paul Frank”. These marks include:
(i) United States registered trade mark No. 3726767 for the word mark PAUL FRANK in classes 9, 12, 14, 16, 18, 25, 28, 35, 41, filed on June 23, 2006;
(ii) Chinese registered trade mark No. 3627293 for the word mark PAUL FRANK in class 25 dated January 7, 2006; and
(iii) Hong Kong registered trade mark No. 300042993 for the word mark PAUL FRANK in classes, 9, 14, 18, 25 and 28 dated July 4, 2003.
4.3 The Complainant trades both under the PAUL FRANK mark and a monkey device (also known as “Julius the Monkey”) that is also registered as a trade mark in various jurisdictions and that takes the following form:
4.4 According to the information provided by the Registrar, the Domain Name was registered on March 5, 2011 and (as is described in greater detail in the Procedural History section of this decision) at the time the Complaint was filed in these proceedings was registered in what appears to be the name of an individual in China.
4.5 The Complainant first became aware of the Domain Name shortly after its Hong Kong lawyers had written a letter before action on March 4, 2011 to the registered owner of the domain name <paulfrank.hk>. Within 24 hours any attempt to access the website operating from that domain name would result in Internet users being re-directed to a website operating from the Domain Name.
4.6 The website operating from the <paulfrank.hk> domain name and the Domain Name were virtually identical in format, being a mixture of English and Chinese text, with Chinese text predominating. The websites also displayed in multiple locations the “Paul Frank” name and the Julius the monkey device and according to the Complainant are “nearly identically copying the Complainant’s website”. The bottom of each page of the website carried Chinese text that translates into English “© Copyright Information Mouth Monkey’s official website (Paul Frank). All Rights Reserved”.
4.7 As at the date of this decision no website operates from the Domain Name.
5. Parties’ Contentions
5.1 The Complainant contends that the Domain Name “wholly incorporates [the] Complainant’s registered ‘Paul Frank,’ trademark, into the domain name at issue” and the addition of “.tv” TLD “does not detract from the domain name’s confusing similarity”.
5.2 The Complainant further contends that the Respondent can have no rights or legitimate interests in the Domain Name given the fact that it is being used to “host a nearly identical copy of Complainant’s website translated into Chinese, with no permission or authorization from Complainant”.
5.3 It further maintains that there is bad faith registration and use given that the “Respondent leads the public into the mistaken belief that the Respondent’s website is an official website of the Complainant”. It also alleges that there are two false addresses on this website for purported “Paul Frank” stores in Hong Kong that do not exist. Lastly, it claims that it is clear that there is some relationship behind the registrants of the <paulfrank.hk> domain name and the Domain Name. It refers to the fact that proceedings were brought before the HKIAC against Xianggangshengshitouzi Co Ltd in relation to the <paulfrank.hk> domain name and that the panel in that case held in favour of the Complainant.
5.4 The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of any person to lodge a Response.
6.2 Notwithstanding this default, it remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.3 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.
6.4 Before addressing each of these requirements, the Panel will address the question of the Registrar’s conduct in this case.
A. Registrar Conduct
6.5 As is explained in the Procedural History section of this decision there were serious questions about the Registrar’s conduct that arise in this case. First, it appeared that the Registrar had contrary to its obligations under paragraph 8 of the UDRP allowed multiple changes to the registration details for the Domain Name contrary to its obligations under paragraph 8 of the UDRP. Second, it appeared that the Registrar has sought to mislead the Center in correspondence with the Center in relation to this case.
6.6 In its submission filed pursuant to the Procedural Order, the Registrar has apologised for what has happened in this case. Its explanation, provided by an individual at the Registrar with which the Center has corresponded, is that “[he] locked the domain for transfers and deletions but [he] forgot to lock it for whois updates. The domain, registered with our customer in China was therefore updated several times.”
6.7 If true, this does not reflect well on the Registrar. The response also raises as many questions as it answers. Perhaps the most obvious is if the Domain Name was initially locked as the Registrar contends, how is it that the name now provided by the Registrar as the registrant does not appear to be the name of the entity whose names appeared on the WhoIs register at the time the Complaint was filed? However, had the Registrar’s submission been the only material before the Panel it would have been minded simply to record the Registrar’s explanation and apology and not to have pursue this matter further.
6.8 But the Complainant has also filed an additional submission in this case. It is clear from this additional material that the “explanation” provided the following day by the Registrar is to say the least disingenuous. The Registrar has claimed that the details for the Domain Name were updated because the relevant person “forgot to lock it for whois updates”. However, the emails provided by the Complainant make it clear that this was not just a case of an oversight by the Registrar that allowed a third party to make changes, but that the Registrar was directly involved in and responsible for at least one of those changes.
6.9 The integrity of the UDRP relies upon the co-operation and honesty of registrars in its dealings with UDRP providers and panels appointed by those panels. It is difficult not to reach the conclusion in this case that the Registrar has sought deliberately to mislead the Center and the Panel as to what happened in this case. In the circumstances, the Panel invites the Center to bring the Registrar’s conduct to the attention of ICANN for it to take such further investigation and action as it considers appropriate.
B. Identical or Confusingly Similar
6.10 The Panel in this case accepts the Complainant’s contention that the Domain Name comprises the entirety of the Complainant’s PAUL FRANK mark together with the “.tv” TLD. As such the Domain Name and the relevant mark are virtually identical and the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests and Registered and Used in Bad Faith
6.11 This is a case where it is convenient to consider together the separate requirements under the Policy of no rights or legitimate interests and registration and use in bad faith.
6.12 The reason is that at its heart the Complainant’s case is a very simple one. It is that the Respondent has engaged in conduct that involves impersonation of the Complainant. In particular, it is claimed that the Respondent has at all relevant times operated a website from the Domain Name that copies the content of the Complainant’s own genuine website and purports to be a genuine website of the Complainant when it is not.
6.13 On the evidence that is before the Panel, the Panel concludes that this allegation is made out. Accordingly the legal analysis is very simple. The registration and use of a Domain Name for this purpose can never provide a right or legitimate interest and such registration and use is clearly in bad faith. So far as bad faith is concerned, this conduct technically falls within the scope of paragraph 4(b)(iv)of the Policy, but it is somewhat artificial for a panel to rely upon this in a case where impersonation of this sort has taken place. The bad faith in such a case is far more fundamental than a mere reliance upon 4(b)(iv) of the Policy would suggest.
6.14 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(ii) and 4(a)(iii) of the Policy.
7.1 For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <paulfrank.tv> be transferred to the Complainant.
Matthew S. Harris
Dated: December 28, 2011