WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hangzhou Chic Intelligent Technology Co., Ltd. v. Whois Agent, Domain Protection Services, Inc. / Liqun Fan
Case No. D2018-2835
1. The Parties
The Complainant is Hangzhou Chic Intelligent Technology Co., Ltd. of Hangzhou, Zhejiang, China, represented by Munck Wilson Mandala LLP, United States of America (“United States”).
The Respondent is Whois Agent, Domain Protection Services, Inc. of Denver, Colorado, United States / Liqun Fan of Shenzhen, Guangdong, China.
2. The Domain Name and Registrar
The disputed domain name <chic-robots.com> is registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 11, 2018. On December 12, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 12, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 14, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Center requested the Complainant to amend the Complaint regarding the mutual jurisdiction. The Complainant filed an amended Complaint on December 14, 2018.
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 December 20, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 9, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 9, 2019.
The Center appointed C. K. Kwong as the sole panelist in this matter on January 22, 2019. 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 is the owner of numerous trademarks consisting of or comprising the word mark CHIC. These registrations include: (1) United States Trademark Registration No. 5399423 for the mark CHIC registered on February 13, 2018 in respect of certain goods and services including electrically motorized skateboards; motorized, electric-powered, self-propelled, self-balancing, wheeled personal mobility, transportation device; self-balancing unicycles; self-propelled electric vehicle; stands for scooters; claiming first use in commerce in 2013; and (2) United States Trademark Registration No. 5198523 for the mark IOCHIC registered on May 9, 2017 in respect of certain goods and services including mopeds; motorized mobility scooters; electrically-powered motor scooters; self-propelled electric vehicle; claiming first use in commerce in 2013.
The evidence produced by the Complainant shows that the registration of its aforesaid CHIC mark occurred before the registration of the disputed domain name <chic-robots.com> on September 10, 2018.
The disputed domain name resolves to a website using the Complainant’s trademark CHIC in relation to the sale of products therein offered.
Other than the particulars shown in the printout of the database searches conducted by the Complainant of the WhoIs database (as provided in Annex 1 to the Amended Complaint) and the website to which the disputed domain name resolves as provided in Annex 8 to the Amended Complaint, there is no evidence produced or contained in the case file concerning the background of the Respondents and their businesses.
5. Parties’ Contentions
The Complainant has made the following contentions:
The Complainant is a limited company of China. The registrant of the disputed domain name is Liqun Fan, and as proxy, Whois Agent, Domain Protection Services Inc.
The Complainant is the owner of the trademark registration as set out in Section 4 above. The Complainant operates its website using the domain name <chic-robot.com> which incorporates its registered trademark CHIC and advertises products corresponding to the goods and services bearing the trademark CHIC.
The disputed domain name <chic-robots.com> was registered on September 10, 2018 after registration of the Complainant’s trademarks. The disputed domain name is confusingly similar to the Complainant’s <chic-robot.com> domain name, differing only in the addition of an “s” and has incorporated the Complainant’s registered trademark CHIC without authorization from the Complainant.
There is no evidence that the Respondents have made use of, or made any demonstrable preparations to use, the disputed domain name <chic-robots.com> in connection with a bona fide offering of goods and services. The website under the disputed domain name <chic-robots.com> was used to impersonate the Complainant to initiate take down notices at the Amazon.de platform against the Complainant’s customers by sending emails from the “[…]@chic-robots.com” email address. That was done to remove the products listed and sold by the Complainant’s authorized resellers from the Amazon.de website.
The contents of the website to which the disputed domain name resolves are identical in all material respects to those of the Complainant’s website “www.chic-robot.com”. All of the links on the Respondents’ website are directed to corresponding legitimate pages and images on the Complainant’s “www.chic-robot.com” website.
The Respondents are not commonly known by the disputed domain name <chic-robots.com> and have acquired no trademark or service mark rights related thereto. The website operated by the Respondents is not a legitimate noncommercial or fair use but rather it is with intention to mislead and divert the Complainant’s customers or to tarnish the Complainant’s CHIC mark for commercial gain.
The Complainant has prior rights in the CHIC trademark and has not authorized, licensed, or otherwise permitted the Respondent to register or use the disputed domain name or the CHIC trademark that it incorporates.
The Complainant has not and does not authorize the said take down notices purportedly sent in its name.
Using the disputed domain name in a fraudulent manner by misrepresenting as the Complainant and contacting Amazon.de purporting to report sellers offering counterfeit goods of the Complainant, resulting in the listing of the Complainant’s genuine authorized sellers being taken down is evidence of registration and use in bad faith. The use of proxy service as a privacy shield by the holder further supports a finding of bad faith in registration and use.
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. The naming of party and notice of proceedings
The contact particulars of the Registrant of the disputed domain name as of December 10, 2018 as set out in the WhoIs search results provided in Annex 1 to the amended Complaint showed Whois Agent, Domain Protection Services, Inc., (“the second named Respondent”) as the Registrant.
The answers provided by the Registrar to the Center on December 12, 2018 in response to the Center’s request for Registrar Verification disclosed the Registrant of the disputed domain name as Liqun Fan being the first named Respondent.
The Complainant filed an amended Complaint to identify and add the first named Respondent as a party on December 14, 2018 following the said verification particulars provided by the Registrar.
On December 20, 2018, the Center forwarded the Notification of Complaint and Commencement of Administrative Proceedings to both (a) the first named Respondent (being the Registrant of the disputed domain name as identified by the Registrar) and (b) the second named Respondent (being the Registrant of the disputed domain name as shown in the aforesaid earlier online search particulars obtained by the Complainant). The said notification was sent by post/courier, facsimile and email as per the contact particulars so provided with copies to the Registrar.
In the circumstances, the Panel finds that the proper Parties to these proceedings have been named and notified. As long as the Complainant or the Center as the case may be communicated with the Respondents using the contact information which the Respondents have chosen to provide to the Registrar as reflected in the above contact details, their respective notice obligations will be discharged and the Respondents are bound accordingly. Indeed, the DHL track reports dated December 24, 2018 and December 29, 2018 as shown in the case file indicated that the written notice was signed for receipt by the recipients at the postal addresses provided.
The Panel is satisfied that the Center has discharged its responsibility under paragraph 2(a) of the Rules to employ reasonably available means calculated to achieve actual notice to the Respondents of the Complaint and that the failure of the Respondent to furnish a reply is not due to any omission or inadequate communication by the Center.
B. The Three Elements
In rendering its decision, the Panel must adjudicate the dispute in accordance with paragraph 15(a) of the Rules which provides that, “the Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 14(b) of the Rules further provides that, “[i]f a Party, in the absence of exceptional circumstances, does not comply with any provisions of, or requirement under, these Rules or any requests from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate”. Paragraph 5(e) of the Rules further provides that, “if a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”.
The failure of the Respondent to respond does not automatically result in a favourable decision for the Complainant, which is specifically required under paragraph 4(a) of the Policy to establish each of the three elements as provided therein. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064 and Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465.
The said three elements are considered below.
1. Identical or Confusingly Similar
On the evidence available, the Panel has no hesitation in finding that the Complainant has rights in the trademark CHIC by reason of its trademark registrations as recited in Section 4 above.
Furthermore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark CHIC.
The disputed domain name <chic-robots.com> differs from the Complainant’s mark merely by adding the word “robots” followed by the generic Top-Level Domain (gTLD) “.com”. The word “chic” remains the dominant or principal component of the disputed domain name. The addition of the word “robots” by itself does not serve to distinguish the disputed domain name from the Complainant’s trademark CHIC.
It is well-established practice to disregard the gTLD part of a domain name, such as “.com”, when assessing whether a domain name is identical or confusingly similar to the mark in issue. Société Anonyme des Eaux Minerales d’Evian and Societe des Eaux de Volvic v. Beroca Holdings B.V.I. Limited, WIPO Case No. D2008-0416.
Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy is established.
2. Rights or Legitimate Interests
The Complainant needs to establish a prima facie case showing that the Respondent has no rights or legitimate interests in respect of the disputed domain name. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. Once such prima facie case is made, the burden will shift to the Respondent to prove that it has rights or legitimate interests in the disputed domain name.
In the present case, the Complainant has asserted registration and use of the registered trademark CHIC well before the Respondent’s registration of the disputed domain name <chic-robots.com>.
The Complainant has confirmed that it has not authorized, licensed or permitted the Respondents to use its mark CHIC.
There is no explanation on the record as to why it was necessary for the Respondents to adopt the word “chic” in the disputed domain name.
There is no evidence before the Panel to suggest that the Respondents are commonly known as <chic-robots.com>.
There is also no evidence available to demonstrate any legitimate noncommercial or fair use of the disputed domain name by the Respondents.
Accordingly, the Panel is satisfied that the Respondents have no rights or legitimate interests in the disputed domain name.
3. Registered and Used in Bad Faith
Given the Complainant’s supported claim of registration of its said CHIC trademark and the apparent use of that mark for many years, i.e., since at least 2013 as claimed in its Unites States trademark registrations before the registration of the disputed domain name as well as the serious allegations made, there is a strong case for the named Respondents to come forward to defend the case. Notwithstanding that, the first named Respondent has not come forward with any defence on its choice of embodying entirely the word “chic” as part of the disputed domain name and adopting the hyphenated word “chic-robots” which is substantially identical to the hyphenated word “chic-robot” composed by the Complainant and used in its official website under its domain name <chic-robot.com>. Merely the letter “s” is added to the word “robot” in the disputed domain name.
The incorporation of the word “chic” as part of the disputed domain name without any explanation under the above circumstances and the prior registration and substantial use of the Complainant’s mark lead to the conclusion that the Respondent must have been aware of the existence of the Complainant and its trademark CHIC at the time of the registration of the disputed domain name.
The disputed domain name resolves to a website copying the official website of the Complainant. The contents of the website to which the disputed domain names resolves or redirects as shown in Annex 8 to the amended Complaint are telling. Other than demonstrating a skillful way of referring to the mark CHIC and obviously directed to the customers of the Complainant, they also show a clear acknowledgement of actual knowledge of the Complainant and its trademarks CHIC and IOCHIC. The take down notices initiated by the party using the email address “[…]@chic-robots.com” against the three authorized resellers of the Complainant as shown in Annex 9 were clearly directed to the Complainant’s customers.
The Panel finds that the circumstances under paragraph 4(b)(iii) and (iv) of the Policy have been established.
Accordingly, the Panel finds that the disputed domain name has been registered and used in bad faith under paragraph 4(a)(iii) of the Policy.
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 <chic-robots.com> be transferred to the Complainant.
C. K. Kwong
Date: February 4, 2019