WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sticker Face, LLC. v. Yunfeng Gao, ?????????????, and Yunfeng Gao, HarbinMaiyuan Electronic Commerce Co., Ltd.
Case No. D2019-2892
1. The Parties
The Complainant is Sticker Face, LLC., United States of America (“United States”), represented by Rothschild & Associates LLC, United States.
The Respondents are Yunfeng Gao, ?????????????, China, and Yunfeng Gao, HarbinMaiyuan Electronic Commerce Co.,Ltd., China.
2. The Domain Names and Registrar
The disputed domain names <customfacestickers.com> and <myfacestickers.com> (the “Disputed Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 25, 2019. On November 26, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On November 27, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 28, 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 an amended Complaint on December 5, 2019.
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 Respondents of the Complaint, and the proceedings commenced on December 6, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 26, 2019. The Center received two email communications from the Respondents on December 11 and 28, 2019.
The Center appointed John Swinson as the sole panelist in this matter on January 3, 2020. 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 Sticker Face, LLC., a company incorporated in Delaware, United States. The Complainant sells personalised stickers and other products using photographs uploaded by customers, and has been operating since 2008.
The Complainant owns United States registered trade mark numbers 5,569,162 for MY STICKER FACE and 5,574,770 for , registered on September 25, 2018, and October 2, 2018, respectively (“the Trade Mark”).
According to the Panel’s independent research, the Complainant owns the registered domain name <mystickerface.com>, which incorporates the Trade Mark.
The Respondents are Yunfeng Gao, ?????????????, and Yunfeng Gao, HarbinMaiyuan Electronic Commerce Co.,Ltd. Based on the available WhoIs data, the Respondent is the same for each Disputed Domain Name.
The Disputed Domain Names <customfacestickers.com> and <myfacestickers.com> were registered on July 24, 2019, and July 23, 2019, respectively. The Disputed Domain Name <customfacestickers.com> resolves to a website selling custom stickers and other products similar to the products sold by the Complainant. The Disputed Domain Name <myfacestickers.com> is currently directed to a form page provided by Shopify.
5. Parties’ Contentions
The Complainant makes the following submissions.
Identical or confusingly similar
The Disputed Domain Names are confusingly similar to the Trade Mark, because they convey the same meaning to a typical consumer. Further, the goods and services provided by the Respondent at <customfacestickers.com> entirely copy the Complainant’s goods and services, and infringe on various trade mark registrations and copyright.
The Complainant experiences actual consumer confusion on a daily basis. For example, it regularly receives complaints and inquiries regarding products actually purchased from the Respondent.
Rights and legitimate interests
The Respondent has no rights or legitimate interest in the Disputed Domain Names because the Respondent’s use of the Disputed Domain Names is a direct infringement of the Trade Mark and the Respondent has intentionally cloned the Complainant’s business in order to steal business and create consumer confusion.
Registered and used in bad faith
The Disputed Domain Names were registered in bad faith for several reasons, including:
- The Disputed Domain Names were registered primarily for disrupting the business of a competitor.
- By using the Disputed Domain Names, the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Trade Mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
- Cloning the Complainant’s website, business model, content, and products for the purpose of disrupting the Complainant’s business, and attracting commercial gain for the Respondent.
The Respondent did not submit a formal Response.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Names are identical or confusingly similar to a trade mark 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 Names; and
(iii) the Disputed Domain Names have been registered and are being used in bad faith.
The onus of proving these elements is on the Complainant even though the Respondent failed to submit a formal Response.
A. Procedural Issues
Multiple Domain Names
The Complaint is in relation to two Disputed Domain Names. Paragraph 3(c) of the Rules states that “the complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder”.
Paragraph 10(e) of the Rules gives the Panel discretion to decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and the Rules.
In this case, the Disputed Domain Names are both registered by Yunfeng Gao. The Panel is satisfied that the Disputed Domain Names are under common control and that it is procedurally efficient to consolidate to the proceedings.
Informal response by Respondent
On December 11 and 28, 2019, the Respondent sent an informal email communication to the Center.
In the communication on December 11, 2019, a person identifying herself as Sofya, a staff member of the customfacestickers store, stated “[r]egarding domain name disputes. https://customfacestickers.com/ This is our domain name. We applied for registration on GoDaddy.com in July 2019. At the time of registration, it was shown that this domain name was available, so I didn't understand why it was with https://www.mystickerface.com/ domain dispute. Could you please tell us how to apply for a domain name to avoid being complained”.
In the communication on December 28, 2019, Sofya queried “What information do we need to provide if we want to continue using this domain name?”.
These communications do not fully address the elements of the Policy or contain the required certification (see paragraph 5(viii) of the Policy). Despite this, the Panel has taken these communications into account in making its decision.
The Respondent’s failure to file a formal Response does not automatically result in a decision in favor of the Complainant (see Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyProtect.org, WIPO Case No. D2013-2059).
B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Names are identical or confusingly similar to the Trade Mark (here, MY STICKER FACE, and MY STICKER FACE & Design).
The Disputed Domain Name <customfacestickers.com> incorporates the words “face” and “sticker” from the Trade Mark – albeit in reverse order, with the addition of the word “custom” and the letter “s” to form the plural “stickers”.
The Disputed Domain Name <myfacestickers.com> incorporates the entirety of the Trade Mark, albeit again in a different order, also with the addition of the letter “s” to form the plural “stickers”.
The first element of the Policy functions primarily as a standing requirement. Where a domain name incorporates the entirety of a trade mark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark (see section 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0")).
The Complainant’s Trade Mark registration disclaims any exclusive right to “sticker face”. Where the operative elements of a disputed domain name are made up exclusively or primarily of terms that are disclaimed in a complainant’s corresponding trade mark, trade mark rights under the Policy may not be found unless the complainant can show sufficient secondary meaning in the disclaimed terms (see section 1.2.3 of WIPO Overview 3.0 and Medical Marijuana, Inc. v. Domains By Proxy, LLC / Michael Wigton, WIPO Case No. D2018-1865). The similar elements of <customfacestickers.com> are made up entirely of disclaimed terms, and the Complainant has not presented any evidence of secondary meaning or distinctiveness of STICKER FACE (see Major Wire Industries Limited v. DigitalOne AG, WIPO Case No. D2015-0284). Furthermore, where names consist of descriptive elements, small differences (here, the word “custom”) may suffice to distinguish (Meat and Livestock Commission v. David Pearce aka OTC / The Recipe for BSE, WIPO Case No. D2003-0645).
Generally, the content of the website associated with a disputed domain name is disregarded when assessing confusing similarity (see section 1.15 of WIPO Overview 3.0) and the Panel adopts this position here; the Panel notes moreover that the content on the Disputed Domain Name <customfacestickers.com> displays sticker ordering services as one may expect, but also that there is nothing in particular that gives the appearance the Respondent has copied content or even the look and feel of the Complainant’s website.
Albeit in a rearranged juxtaposition, the Disputed Domain Name <myfacestickers.com> ultimately incorporates the entirety of the Trade Mark, and the Panel considers that the domain is confusingly similar to the Trade Mark. The Complainant succeeds on the first element of the Policy as to <myfacestickers.com>.
The Disputed Domain Name <customfacestickers.com> presents a closer call; the Panel notes the following in regard to this element:
- the webpage content is both what one may reasonably expect at such a descriptive domain name,
- contrary to the Complainant’s sweeping assertion, the webpage content does not appear to “clone” or even borrow elements of the Complainant’s page,
- the Disputed Domain Name introduces the term “custom” which on the one hand distinguishes it from the Trade Mark, and on the other hand could be seen as a variation of the term “my” in the Trade Mark such that this factor could arguably weigh in either party’s favor – even more so however on the other two UDRP elements, and
- the Disputed Domain Names are under common control and were registered within a day of each other.
Simply put, there are factors in both parties’ favor on this point; in any event however, it is not necessary to make a determination on this element given the Panel’s findings below.
C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
As to the Disputed Domain Name <customfacestickers.com>, the Panel considers that the Complainant has ultimately failed to make out a prima facie case against the Respondent insofar as the Respondent appears to be using <customfacestickers.com> descriptively in connection with the offering of custom stickers. The Panel also notes that in conducting some limited independent research to ascertain the potential crowdedness of this almost necessarily descriptive field (e.g., by searching online for “face stickers”), the domain name <customphotogiftwrap.com> appears below the Complainant’s domain name, and it moreover appears to be operated by the Respondent (the content, including “testimonials”, being the same between the two pages). The Panel finally notes that in its reply to the contentions raised against it, the Respondent questions why the “custom” domain name is bundled in the Complaint with the “my” version, which to the Panel indicates that the Respondent likely knew that the “my” version improperly targeted the Complainant but that it had also (even if later found e.g., by a court to be mistaken as to likely or actual confusion) sought to avoid running afoul of the Complainant’s rights through its registration of the “custom” version.
The Panel considers the Complainant has however made out a prima facie case in respect of <myfacestickers.com> based on the following:
- Unlike <customfacestickers.com>, the Disputed Domain Name <myfacestickers.com> more closely resembles the Trade Mark, i.e., has been found to be confusingly similar thereto.
- The Respondent is not using (and, perhaps somewhat surprisingly, there is no evidence that the Respondent has demonstrable preparations to use) this Disputed Domain Name in connection with a bona fide offering of goods or services. The Disputed Domain Name does not resolve to an active website.
- The Complainant has not authorised the Respondent to use the Trade Mark in the Disputed Domain Name.
- There is no evidence that the Respondent has been commonly known by the Disputed Domain Name or has registered or common law trade mark rights in relation to this name.
- The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain. There is no active website associated with the Disputed Domain Name.
The Panel acknowledges that holding domain names consisting of dictionary words or common phrases can be bona fide under the Policy. The Panel is mindful that “myfacestickers” comprises a combination of common dictionary words. However, the Respondent cannot rely solely on the fact the Disputed Domain Name is composed of dictionary words to ground the Respondent’s claim to rights or legitimate interests in it (see section 2.10 of WIPO Overview 3.0), in particular where these also correspond to the Trade Mark; the Panel also notes that the Complainant’s webpage provides inter alia the following representative “as seen on” references to marketing going back to 2014: “BuzzFeed”, “the Hallmark Channel”, “HGTV”, “LIVE with Kelly and Ryan”, and “USA Today”.
In order to find rights or legitimate interests in a domain name based on its dictionary meaning, the domain name should be genuinely used, or at least demonstrably intended for such use, in connection with the relied-upon dictionary meaning and not to trade off third-party trade mark rights (see Gibson, LLC v. Jeanette Valencia, WIPO Case No. D2010-0490). The Respondent did not submit a formal Response to explain how its use or potential use (noting the lack of current content) would not trade on the Trade Mark.
The Complainant has succeeded on the second element in relation to the <myfacestickers.com> Disputed Domain Name.
D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Names in bad faith.
As the Complainant has failed to establish the prior elements of the Policy in respect of <customfacestickers.com>, the Panel address the third element of the Policy in respect of <myfacestickers.com>.
The Complainant registered the Trade Mark in 2018. According to the United States Patent and Trademark Office and the Panel’s limited independent research, the Complainant has been using the Trade Mark in some form since 2008. The Complainant’s registration of the Trade Mark predates the registration of the Disputed Domain Names by just over 6 months.
According to the Panel’s limited independent research, the Complainant has also operated a primary domain name incorporating the Trade Mark, <mystickerface.com>, since 2008. The Complainant’s registration of this domain name predates the registration of the Disputed Domain Names by more than 10 years. The Disputed Domain Name <myfacestickers.com> incorporates the Trade Mark in its entirety, albeit in a slightly different, if obvious (i.e., there are only so many ways it could be rearranged), order. While each of the words making up the Disputed Domain Name <myfacestickers.com> is independently generic, the combination and order of the words is not obvious. Given also the years of use of the Complainant’s domain name and related marketing, the Panel infers that the Respondent knew, or should have known, that its registration would be confusingly similar to the Trade Mark.
The fact that the Disputed Domain Name <myfacestickers.com> is not being used does not preclude a finding of bad faith (see section 3.3 of WIPO Overview 3.0 and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good-faith use to which the domain name may be put.
The particular circumstances of this case which lead to a conclusion in the Complainant’s favor are:
- The Trade Mark has been in use since 2008, and the Complainant has operated its website through <mystickerface.com> since that time.
- As discussed above, although some of the words making up the Disputed Domain Name <myfacestickers.com> are generic, the combination and order of the words is not obvious.
- The Respondent has not submitted a formal Response or provided any evidence of actual or contemplated good-faith use. The Respondent is a competitor of the Complainant.
In light of the above, the Panel finds that the Complainant has succeeded on the third element of the Policy in respect of <myfacestickers.com>.
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 <myfacestickers.com> be transferred to the Complainant.
For the foregoing reasons, the Complaint in respect of <customfacestickers.com> is denied.
Date: January 30, 2020