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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

New Moosejaw, LLC v. ChenJia Xing

Case No. D2019-2807

1. The Parties

The Complainant is New Moosejaw, LLC, United States of America (“United States”), represented by Drinker Biddle & Reath, LLP, United States.

The Respondent is ChenJia Xing, China.

2. The Domain Name and Registrar

The disputed domain name <mountainstealsoutlet.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 November 15, 2019. On November 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 19, 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 the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 20, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed the amended Complaints in Chinese on November 22, and 25, 2019.

On November 20, 2019, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. On November 22 and 25, 2019, the Complainant submitted the translated Complaints in Chinese and requested that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.

The Center verified that the Complaint together with the amended Complaints 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 in English and Chinese of the Complaint, and the proceedings commenced on November 28, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 18, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 19, 2019.

The Center appointed Matthew Kennedy as the sole panelist in this matter on December 27, 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 a retailer that offers clothing and related products both online and offline. It is the registered proprietor of United States trademark registration number 5125855 for MOUNTAIN STEALS, registered on January 17, 2017, with a claim of first use in commerce on September 1, 2016, specifying online retail store services featuring camping and sporting equipment and clothing. That trademark registration remains current. The Complainant has also registered the domain name <mountainsteals.com> that it uses in connection with an online store.

The Respondent is an individual resident in China.

The disputed domain name was registered on August 29, 2018. It resolves to an online store in English titled “Mountain Steals – The best outdoor brands for less”. The site offers for sale clothing, as well as shoes and handbags. At least some of the brands offered are the same as those offered at the Complainant’s online store. Prices are quoted in USD.

5. Parties’ Contentions

A. Complainant

The disputed domain name is confusingly similar to the Complainant’s MOUNTAIN STEALS trademark. The disputed domain name wholly incorporates that trademark and merely adds the word “outlet”.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has not granted the Respondent a license or any other authorization to use or register the Complainant’s MOUNTAIN STEALS mark or its <mountainsteals.com> domain name. The Respondent is not commonly known by the disputed domain name or the MOUNTAIN STEALS trademark.

The disputed domain name was registered and is being used in bad faith. The Respondent’s registration of the disputed domain name with knowledge, both constructive and actual, of the Complainant’s rights in the MOUNTAIN STEALS mark evidences bad faith. The Respondent has appropriated and uses the Complainant’s MOUNTAIN STEALS mark and the associated <mountainsteals.com> domain name to confuse, capture and then redirect users to commercial offerings of products and services that are the same as or nearly identical to the Complainant’s offerings.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1 Language of the Proceeding

Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.” The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.

The Complainant requests that English be the language of the proceeding. Its main arguments are that the Respondent is sufficiently conversant in English to use an English language domain name, including the word “outlet”, and to populate the site to which the disputed domain name resolves with language content that mimics the Complainant’s site and product offerings.

Paragraphs 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the Parties. See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293.

The Panel observes that the Complaint was filed in English and that the amended Complaint is a translation of the Complaint, but with the Respondent’s name and contact information updated. The website to which the disputed domain name resolves is in English, from which the Panel infers that the Respondent is able to communicate in that language. Further, despite having received the notification of the Complaint and the Written Notice of the Complaint and an email regarding the language of the proceeding in both Chinese and English, the Respondent has not expressed any interest in filing a Response or otherwise participating in this proceeding.

Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English.

6.2 Substantive Issues

Paragraph 4(a) of the Policy provides that the complainant must prove each of the following elements in respect of each disputed domain name:

(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 and is being used in bad faith.

A. Identical or Confusingly Similar

Based on the evidence submitted, the Panel finds that the Complainant has rights in the MOUNTAIN STEALS mark.

The disputed domain name wholly incorporates the MOUNTAIN STEALS mark as its initial element, but for the space between the words, as spaces do not form part of domain name for technical reasons.

The disputed domain name also includes the dictionary word “outlet”. However, as a mere dictionary word, this element is not capable of dispelling confusing similarity between a domain name and a trademark for the purposes of the first element of the Policy. See Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110.

The only other element in the disputed domain name is a generic Top-Level Domain (“gTLD”) suffix, i.e. “.com”, which is a technical requirement of registration. A gTLD suffix is disregarded in the comparison between a trademark and a domain name for the purposes of the first element of the Policy unless it has some impact beyond its technical function, which is not the case here.

Therefore, the Panel finds that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the respondent has rights or legitimate interests in a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The disputed domain name, which is confusingly similar to the Complainant’s MOUNTAIN STEALS trademark, is used in connection with a website that is titled “Mountain Steals – The best outdoor brands for less” and that offers the same types of goods as the Complainant’s own website. All of this gives the impression that the Respondent’s website is operated by, or affiliated with, the Complainant. However, the Complainant submits that it has not granted the Respondent a license or any other authorization to use or register a domain name incorporating the Complainant’s MOUNTAIN STEALS mark or its <mountainsteals.com> domain name. Accordingly, the Panel finds that the Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services within the terms of paragraph 4(c)(i) of the Policy.

According to the Registrar’s WhoIs database, the Respondent’s name is “ChenJia Xing”. There is no evidence on the record that the Respondent has been commonly known as “mountainstealsoutlet” within the terms of paragraph 4(c)(ii) of the Policy.

The disputed domain name resolves to an online store. That is not a legitimate noncommercial or fair use within the terms of paragraph 4(c)(iii) of the Policy.

Further, the Panel notes that the nature of the disputed domain name carries a risk of implied affiliation with the Complainant. See section 2.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

In view of the above circumstances, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent failed to rebut that prima facie case because he did not respond to the Complainant’s contentions.

Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:

(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.

As regards registration, the registration of the disputed domain name postdated the registration of the Complainant’s MOUNTAIN STEALS trademark. The disputed domain name incorporates that trademark and resolves to an online store that offers for sale the same types of goods as the Complainant’s own online store. The Panel infers from these circumstances that the Respondent knew of the Complainant and its trademark at the time that he registered the disputed domain name in 2018. Accordingly, the Panel finds that the Respondent registered the disputed domain name in bad faith.

As regards use, the disputed domain name combines the Complainant’s MOUNTAIN STEALS trademark with the word “outlet” and resolves to an online store that is presented in such a way that it gives the false impression that it is operated by, or affiliated with, the Complainant. The Panel finds that the disputed domain name is used to attract Internet users by creating a likelihood of confusion with the Complainant’s MOUNTAIN STEALS trademark as to the source, sponsorship, affiliation, or endorsement of the website to which the disputed domain name resolves. This use is intentional and for commercial gain within the terms described in paragraph 4(b)(iv) of the Policy.

Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.

7. Decision

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 <mountainstealsoutlet.com> be transferred to the Complainant.

Matthew Kennedy
Sole Panelist
Date: January 4, 2020

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