WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Annco, Inc. v. Chenjia Xing

Case No. D2019-0538

1. The Parties

Complainant is Annco, Inc. of New York, New York, United States of America (“USA”), represented by Fross Zelnick Lehrman & Zissu, PC, USA.

Respondent is Chenjia Xing of Zhengzhou, Henan, China.

2. The Domain Name and Registrar

The disputed domain name <anntayloronlineoutlet.com> is registered with eName Technology Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on March 11, 2019. On March 12, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 13, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on March 14, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on the same day.

On March 14, 2019, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. Complainant confirmed its request that English be the language of the proceeding on the same day. Respondent did not comment on the language of the proceeding by the specified due date.

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 Respondent in English and Chinese of the Complaint, and the proceedings commenced on March 20, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 9, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 10, 2019.

The Center appointed Yijun Tian as the sole panelist in this matter on April 24, 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

A. Complainant

Complainant, Annco, Inc, is a company incorporated in New York, New York, USA. Complainant is a well‑known company providing footwear and accessories such as bags, wallets, hats and gloves for men, women and children. Complainant is a retail entity focused on women’s fashions and accessories. Complainant’s ANN TAYLOR brand originated in 1954, when founder Richard Liebeskind opened his first shop called “Ann Taylor” in New Haven, Connecticut. Complainant currently operates more than 300 Ann Taylor stores, including over 100 outlet stores operated under the name Ann Taylor Factory, located across the USA (See Exhibit E to the Amended Complaint). Complainant has a significant online presence and sales via Complainant’s websites “www.anntaylor.com” and “www.factory.anntaylor.com” (See Exhibit F to the Amended Complaint). During the most recent calendar, Complainant’s “www.anntaylor.com” website received over one million visits from around the world. Together, the ANN TAYLOR and LOFT brands had total sales in Financial Year 2018 of over USD 2.3 billion.

Complainant has exclusive rights in the ANN TAYLOR marks. Complainant is the exclusive owner of numerous ANN TAYLOR trademarks in more than 80 jurisdictions worldwide, including the USA trademark registered since June 23, 1987 (the USA trademark registration number 1444585) (see Exhibit G to the Amended Complaint), and the Chinese trademark registered since November 7, 2002 (the Chinese trademark registration number 1904409) (See Exhibit H to the Amended Complaint).

B. Respondent

Respondent is Chenjia Xing of Zhengzhou, Henan, China. The disputed domain name was registered with eName Technology Co., Ltd on October 7, 2018, which is long after the ANN TAYLOR marks were registered.

The disputed domain name <anntayloronlineoutlet.com> currently resolves to a website claiming to be the “Overstock Sale” for numerous articles of women’s clothing, nearly all of which are shown at the website using photos copied from Complainant’s official website “www.anntaylor.com” (see Exhibits M and N to the Amended Complaint).

5. Parties’ Contentions

A. Complainant

Complainant contends that the disputed domain name <anntayloronlineoutlet.com> is confusingly similar to Complainant’s ANN TAYLOR trademarks. The disputed domain name includes ANN TAYLOR mark in its entirety. The addition of the generic terms “online”, “outlet”, and the generic Top-Level Domain (“gTLD”) “.com” is not sufficient to distinguish the disputed domain name from Complainant’s trademark.

Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain name.

Complainant contends that the disputed domain name was registered and is being used in bad faith.

Complainant requests that the disputed domain name be transferred to it.

B. Respondent

Respondent did not formally reply to Complainant’s contentions.

6. Discussion and Findings

6.1. Language of the Proceeding

The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons:

(a) The disputed domain name itself <anntayloronlineoutlet.com> is in the English language;

(b) The website resolved by the disputed domain name is entirely in English;

(c) The prices at the website resolved by the disputed domain name are published in US Dollars, Australian Dollars, Canadian Dollars, British Pounds (all English speaking countries), and Euros.

Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.

Paragraph 11(a) allows the panel to determine the language of the proceeding having regard to all the circumstances. In particular, 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 other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). The language finally decided by the panel for the proceeding should not be prejudicial to either one of the parties in its abilities to articulate the arguments for the case (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) further states:

“Noting the aim of conducting the proceedings with due expedition, paragraph 10 of the UDRP Rules vests a panel with authority to conduct the proceedings in a manner it considers appropriate while also ensuring both that the parties are treated with equality, and that each party is given a fair opportunity to present its case.

Against this background, panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark, (iii) any content on the webpage under the disputed domain name, (iv) prior cases involving the respondent in a particular language, (v) prior correspondence between the parties, (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint, (vii) evidence of other respondent-controlled domain names registered, used, or corresponding to a particular language, (viii) in cases involving multiple domain names, the use of a particular language agreement for some (but not all) of the disputed domain names, (ix) currencies accepted on the webpage under the disputed domain name, or (x) other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement.”

(WIPO Overview 3.0, section 4.5.1; see also L’Oreal S.A. v. MUNHYUNJA, WIPO Case No. D2003-0585).

The Panel has taken into consideration the facts that Complainant is a company from the USA, and Complainant will be spared the burden of working in Chinese as the language of the proceeding. The Panel has also taken into consideration the fact that the disputed domain name include Latin characters, and particularly English words (“ann”, “taylor”, “online”, and “outlet”) and are registered in the gTLD space comprising of the Latin characters “.com” (Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047).

On the record, Respondent appears to be a Chinese individual and is thus presumably not native English speaker, but the Panel finds persuasive evidence in the present proceeding to suggest that Respondent may have sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) the disputed domain name <anntayloronlineoutlet.com> includes Latin characters, and particularly English words “ann”, “taylor”, “online”, and “outlet, rather than Chinese script; (b) the gTLD of the disputed domain name is “.com” is in Latin characters; (c) the disputed domain name currently resolves to a website which is in English-language; (d) the prices at the website resolved by the disputed domain name are published in US Dollars, Australian Dollars, Canadian Dollars, British Pounds (currencies of all English speaking countries), and Euros; (e) the Center has notified Respondent of the proceeding in both Chinese and English; (f) the Center informed Respondent that it would accept a Response in either English or Chinese.

Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both Parties and is not prejudicial to either one of the Parties in his or her ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English.

6.2. Substantial Issues

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:

(i) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

On the basis of the evidence introduced by Complainant and in particular with regards to the content of the relevant provisions of the Policy (paragraphs 4(a) - (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel finds that Complainant has rights in the ANN TAYLOR marks acquired through registration. The ANN TAYLOR marks have been registered in the USA since 1987 and in China since 2002. The disputed domain name <anntayloronlineoutlet.com> comprises the ANN TAYLOR mark in its entirety. The disputed domain name only differs from Complainant’s trademarks by the suffixes “online” and “outlet”, and the gTLD suffix “.com” to the ANN TAYLOR marks. This does not eliminate the identity or at least the confusing similarity between Complainant’s registered trademarks and the disputed domain name. In relation to the gTLD suffix, WIPO Overview 3.0 further states:

“The applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.” (WIPO Overview 3.0, section 1.11).

Thus, the Panel finds that disregarding the suffixes “online”, and “outlet”, as well as the gTLD suffix “.com”, disputed domain name is identical to the ANN TAYLOR marks.

The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name:

(i) use of, or preparations to use, the disputed domain name in connection with a bona fide offering of goods or services;

(ii) the fact that Respondent has commonly been known by the disputed domain name; or

(iii) legitimate noncommercial or fair use of the disputed domain name.

The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to respondent to rebut complainant’s contentions. If respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; WIPO Overview 3.0, section 2.1 and cases cited therein).

According to the Complaint, Complainant is a retail entity focused on women’s fashion and accessories. Complainant’s Ann Taylor brand originated in 1954. Complainant currently operates more than 300 Ann Taylor stores, including over 100 outlet stores operated under the name Ann Taylor Factory, located across the USA. Complainant has a significant online presence and sales via Complainant’s websites “www.anntaylor.com” and “www.factory.anntaylor.com”. Complainant has rights in the ANN TAYLOR marks since 1987 in the USA and 2002 in China, which precede Respondent’s registration of the disputed domain name (2018).

Moreover, Respondent is not an authorized dealer of ANN TAYLOR-branded products or services but is rather offering competing products for sale on the website, and claiming to be the “Overstock Sale” for numerous articles of women’s clothing, nearly all of which are shown at the website using photos copied from Complainant’s official website “www.anntaylor.com”. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifts the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:

(a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the terms “ann taylor” in the disputed domain name and in Respondent’s business operation. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the ANN TAYLOR marks or to apply for or use any domain name incorporating the ANN TAYLOR mark and Respondent has, through the use of a confusingly similar domain name and webpage contents (particularly using the photos copied from Complainant’s official website “www.anntaylor.com”), created a likelihood of confusion with the ANN TAYLOR marks. Potential partners and end users are led to believe that the website at the disputed domain name is either Complainant’s site or the site of an official authorized partner of Complainant, which it is not;

(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. Respondent registered the disputed domain name in 2018, long after the ANN TAYLOR marks became internationally known. The disputed domain name is identical or confusingly similar to Complainant’s ANN TAYLOR marks.

(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. By contrast, according to the information provided by Complainant, Respondent was in actuality advertising, offering and selling purported Ann Taylor and other products at the website resolved by disputed domain name by using photos copied from Complainant’s official website.

The Panel finds that Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:

(i) circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding disputed domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and used the disputed domain name in bad faith.

(a) Registered in Bad Faith

The Panel finds that Complainant has a widespread reputation in the ANN TAYLOR marks with regard to its products and services. Complainant is a retail entity focused on women’s fashion and accessories. Complainant’s ANN TAYLOR brand originated in 1954, and Complainant currently operates more than 300 Ann Taylor stores. Complainant’s “www.anntaylor.com” website received over one million visits from around the world during the most recent calendar. Together, the ANN TAYLOR and LOFT brands had total sales in Financial Year 2018 of over USD 2.3 billion. Complainant has registered rights in the ANN TAYLOR marks since 1987 in the USA and 2002 in China. It is not conceivable that Respondent would not have been aware of Complainant’s trademark rights at the time of the registration of the disputed domain name (in 2018) particularly given that Respondent’s website has used many photos copied from Complainant’s official website.

Thus, the Panel concludes that the disputed domain name was registered in bad faith.

(b) Used in Bad Faith

Complainant also has adduced evidence to show that by using the confusingly similar disputed domain name, Respondent has “intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites or other online location”. To establish an “intention for commercial gain” for the purpose of this Policy, evidence is required to indicate that it is “more likely than not” that such intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).

Given the widespread reputation of the ANN TAYLOR marks, the confusingly similar domain name <anntayloronlineoutlet.com>, as well as the use of photos copied from Complainant’s official website, the Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with Complainant, contrary to fact. There is a strong likelihood of confusion as to the source, sponsorship, affiliation or endorsement of Respondent’s website. In the other words, Respondent has, through the use of a confusingly similar domain name and webpage contents, created a likelihood of confusion with the ANN TAYLOR marks. Potential partners and end users are led to believe that the website at the disputed domain name is either Complainant’s site of official authorized partner(s) of Complainant, which it is not. The Panel therefore concludes that the disputed domain name is being used by Respondent in bad faith.

In summary, Respondent, by choosing to register and use domain name which is confusingly similar to Complainant’s trademark, intended to ride on the goodwill of Complainant’s trademark in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent as far as the website to which the disputed domain name resolves is indicative of registration and use of the disputed domain name in bad faith.

The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy.

7. Decision

For all 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 <anntayloronlineoutlet.com> be transferred to Complainant.

Yijun Tian
Sole Panelist
Dated: May 8, 2019