WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gift Wrap My Face, LLC v. Yunfeng Gao, HarbinMaiyuan Electronic Commerce Co., Ltd.
Case No. D2019-1614
1. The Parties
The Complainant is Gift Wrap My Face, LLC, United States of America (“USA”), represented by The Law Offices of Bradley S. Rothschild, LLC, USA.
The Respondent is Yunfeng Gao, HarbinMaiyuan Electronic Commerce Co., Ltd., China.
2. The Domain Name and Registrar
The disputed domain name <myfacegiftwrap.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2019, naming the Registrar as the Respondent. The Center sent its request for registrar verification to the Registrar on July 10, 2019. The Registrar replied on July 11, 2019, confirming that it had received a copy of the Complaint, that the Domain Name was registered with it, that the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applied, that the Domain Name would expire on February 19, 2021, and would remain locked during this proceeding, and that the language of the registration agreement is English. The Registrar stated that it was not the registrant of the Domain Name and provided the full contact details for the Domain Name held on its WhoIs database.
The Center forwarded the details of the registrant as provided by the Registrar to the Complainant on July 11, 2019, and invited the Complainant to file an amended Complaint. The Complainant filed an amended Complaint on July 16, 2019, naming Yunfeng Gao, HarbinMaiyuan Electronic Commerce Co., Ltd., as the Respondent in line with the contact details provided by the Registrar.
The Center verified that the Complaint and the amended Complaint satisfied the formal requirements of the 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 paragraphs 2 and 4 of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 17, 2019. On July 19, 2019, the Center received an email from a recipient of the notification asking which domain it referred to, stating that they had not received a copy of the Complaint, and asking what they were required to do. The Center replied by email on July 19, 2019, stating that the Complaint was filed against the Respondent Yunfeng Gao, HarbinMaiyuan Electronic Commerce Co., Ltd in relation to the Domain Name <myfacegiftwrap.com>, and asking the correspondent to identify herself and clarify her relationship with the Respondent.
The correspondent sent a further email on July 23, 2019, stating that she was from <myfacegiftwrap.com> and asking how they should respond. The Center replied on July 24, 2019, drawing her attention to the Response filing guidelines available on the Center’s website and reminding her that the due date for the Response was August 6, 2019. The correspondent wrote back on July 24, 2019, requesting an extension of 10 calendar days. Pursuant to paragraph 5(e) of the Rules, the Center invited the Complainant to submit any comments on this request by July 26, 2019. The Complainant resisted the request, contending that it was not supported by good cause. The Center granted an extension to August 10, 2019, pursuant to paragraph 5(b) of the Rules. No further communication was received by the Center from the correspondent or any other person claiming to represent the Respondent.
On August 12, 2019, the Complainant asked the Center whether it could amend the Complaint to include additional domain names. The Center replied that it would be for the Panel to determine whether to accept any additional domain name and order any further procedural steps, and referred the Complainant to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 4.12.2 and 4.11.
The Center appointed Jonathan Turner as the sole panelist in this matter on September 4, 2019. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. Having reviewed the file, the Panel is satisfied that the amended Complaint complied with applicable formal requirements, was duly notified to the Respondent, and has been submitted to a properly constituted Panel in accordance with the UDRP, the Rules and the Supplemental Rules.
By its Procedural Order No. 1 of September 20, 2019, the Panel required the Complainant to inform the Center by September 30, 2019, whether or not it wished to seek to amend the Complaint to include additional domain names. The Complainant confirmed by email of September 20, 2019, that it did not wish to amend the Complaint.
4. Factual Background
The Complainant sells gift wrapping paper, banners and party decorations, incorporating photographs supplied by the customer, for example of the person whose birthday is marked by the gift or party. The Complainant operates this business via a website located by its domain name <giftwrapmyface.com>.
The Complainant registered GIFT WRAP MY FACE as a trademark in the Principal Register of the United States Patent and Trademark Office claiming first use in commerce on November 20, 2014, and disclaiming exclusive right to “gift wrap” apart from the full mark. The application for this trademark was filed on August 11, 2016, and granted on May 23, 2017.
The disputed Domain Name was created on February 19, 2019. At the time of the Complaint, the Domain Name resolved to a website which promoted a similar business to the Complainant’s. The Domain Name is currently directed to a form page provided by Shopify.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to its registered trademark GIFT WRAP MY FACE. The Complainant states that the Respondent’s goods and services entirely copy its goods and services, and that it experiences actual customer confusion on a daily basis.
The Complainant submits that the Respondent has no rights or legitimate interests in the Domain Name since the Respondent has intentionally cloned the Complainant’s business in order to create customer confusion and steal business.
The Complainant alleges that the Domain Name was registered and is being used in bad faith, in that it was registered primarily for the purpose of disrupting a competitor and that by using the Domain Name, the Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or the products and services offered on it.
The Complainant requests a decision that the Domain Name be transferred to it.
The Respondent did not submit any substantive response.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, to succeed in this Complaint, the Complainant must prove: (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith. It is convenient to consider each of these requirements in turn.
In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences as it considers appropriate from the Respondent’s failure to file a substantive Response. This includes the acceptance of plausible evidence of the Complainant which has not been disputed.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has a registered right in the trademark GIFT WRAP MY FACE.
The Panel further finds that the Domain Name is confusingly similar to this mark. The Domain Name contains the same elements as the Complainant’s mark, albeit in a different order, and is likely to be confused with the Complainant’s mark, e.g. as a result of imperfect recollection. This assessment is corroborated by the undisputed evidence of regular customer confusion.
The first requirement of the UDRP is satisfied.
B. Rights or Legitimate Interests
By operating an identical business using a confusingly similar domain name, the Respondent has not made a bona fide offering of goods or services, but rather has sought to divert customers attracted by the reputation of the Complainant’s business by confusion with the Complainant’s mark.
Furthermore, prior to commencing this improper business, it seems clear that the Respondent was not commonly known by the Domain Name or a corresponding name.
The Respondent has not made legitimate noncommercial or fair use of the Domain Name. On the contrary, its use has been with intent for commercial gain to misleadingly divert consumers.
The Panel is satisfied on the basis of the undisputed evidence that the Respondent does not have rights or legitimate interests in the Domain Name. The second requirement of the UDRP is satisfied.
C. Registered and Used in Bad Faith
The Panel finds on the undisputed evidence and from viewing a page of the Respondent’s former website stored in the Internet Archive, that by using the Domain Name the Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s mark as to the source of the Respondent’s website and of the products and services offered on it.
In accordance with paragraph 4(b)(iv) of the UDRP, this finding constitutes evidence of registration and use of the Domain Name in bad faith. There is no evidence that displaces this presumption. The Panel therefore concludes that the Domain Name was registered and is being used in bad faith.
All three requirements of the UDRP are satisfied and it is appropriate to direct that the Domain Name be transferred to the Complainant.
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 <myfacegiftwrap.com> be transferred to the Complainant.
Date: September 23, 2019