WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

I.I. IP, LLC v. 杨智超 (Zhichao Yang)

Case No. D2021-4187

1. The Parties

The Complainant is I.I. IP, LLC, United States of America (“United States”), represented by Adams and Reese LLP, United States.

The Respondent is 杨智超 (Zhichao Yang), China.

2. The Domain Names and Registrar

The disputed domain names <comidealimage.com>, <idaelimage.com>, <idalimage.com>, <iddealimage.com>, <ideaalimage.com>, <ideailmage.com>, <idealiage.com>, <idealiimage.com> <idealimaage.com>, <idealimae.com>, <idealimaeg.com>, <idealimag.com>, <idealimagee.com>, <idealimagge.com>, <idealimagr.com>, <idealimagw.com>, <idealimgae.com>, <idealimmage.com>, <ideallimage.com>, <idealmiage.com>, <ideealimage.com>, <idelaimage.com>, <idelimage.com>, <iealimage.com>, <iedalimage.com>, <iidealimage.com>, and <wwwidealimage.com> are registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2021. On December 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 16, 2021, 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 December 17, 2021 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 in English on December 17, 2021.

On December 17, 2021, the Center transmitted another email communication to the Parties in English and Chinese regarding the language of the proceeding. On December 17, 2021, the Complainant confirmed its request 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 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 in Chinese and English of the Complaint, and the proceedings commenced on January 11, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 31, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 1, 2022.

The Center appointed Jonathan Agmon as the sole panelist in this matter on February 8, 2022. 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, I.I. IP, LLC, is a wholly-owned subsidiary of Ideal Image Development, LLC. The Complainant and its predecessors have been using the IDEAL IMAGE mark since 2004. Ideal Image Development, LLC and its subsidiaries, including the Complainant, offer skin care services, skin treatment services, laser hair removal, skin care products and related goods and services under the IDEAL IMAGE mark. The Complainant advertises its goods and services through various websites, including “www.idealimage.com”, as well as through print media and other advertising and promotional campaigns. Ideal Image Development, LLC has performed over twenty million treatments across North America. The Complainant states that it has promoted the IDEAL IMAGE mark continuously and extensively since its first use and spends significant funds every year to promote the mark and the goods and services sold under the mark.

The Complainant is the owner of the following registered IDEAL IMAGE trademarks, including but not limited to:
- Australia Trademark Registration No. 1038062 (International Registration No. 839170), registered on August 24, 2004;
- Canada Trademark Registration No. TMA987514, registered on December 27, 2017;
- European Union Trademark Registration No. 012794301, registered on August 14, 2015;
- United Kingdom Trademark Registration No. UK00912794301, registered on August 14, 2015;
- United States Trademark Registration No. 2,829,610, registered on April 6, 2004;
- United States Trademark Registration No. 3,985,005, registered on June 28, 2011;
- United States Trademark Registration No. 4,504,309, registered on April 1, 2014;
- United States Trademark Registration No. 4,594,236, registered on August 26, 2014
- United States Trademark Registration No. 5,464,336, registered on May 8, 2018; and
- United States Trademark Registration No. 5,464,338, registered on May 8, 2018.

The disputed domain names were all registered on July 12, 2021 and resolved to commercial parking pages showing pay-per-click (“PPC”) links.

The Complainant and its affiliates own and operate the domain name <idealimage.com>.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain names are confusingly similar to its IDEAL IMAGE mark as the disputed domain names wholly incorporate the IDEAL IMAGE mark in its entirety (or a typo-variant thereof), and the dominant element of each disputed domain name is the Complainant’s IDEAL IMAGE mark (or a typo-variant thereof). Twenty-five out of the twenty-seven disputed domain names differ from the Complainant’s mark by only adding, omitting, or altering a single letter or inversing two letters, and the remaining two of the disputed domain names (i.e., <comidealimage.com> and <wwwidealimage.com>) differ by adding three letters before the mark. The slight misspellings or addition of other letters in the disputed domain names are insufficient to distinguish them from the Complainant’s mark. The disputed domain names are therefore identical or confusingly similar to the IDEAL IMAGE mark.

The Complainant also argues that the Respondent has no rights or legitimate interests in respect of the disputed domain names as it is not affiliated with or authorized the Respondent to use any of its trademarks or register the disputed domain names and that the Respondent is not commonly known by any of the disputed domain names. The Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services, or in a legitimate noncommercial or fair manner as the disputed domain names resolve to parking pages with PPC links purportedly offering services identical or related to those of the Complainant.

The Complainant further argues that the disputed domain names were registered and are being used in bad faith for commercial gain by creating a likelihood of confusion with the Complainant’s IDEAL IMAGE mark and the Respondent had actual knowledge of the Complainant’s mark at the time of registration.

B. Respondent

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

6. Discussion and Findings

6.1 Preliminary Issues

A. Consolidation of the Proceeding

The Complainant requested a consolidation of the proceeding in relation to the disputed domain names.

On this issue, the Panel finds guidance from the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0), section 4.11.2:

“Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.

Panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in or relevant aspects of (i) the registrants’ identity(ies) including pseudonyms, (ii) the registrants’ contact information including email address(es), postal address(es), or phone number(s), including any pattern of irregularities, (iii) relevant IP addresses, name servers, or webhost(s), (iv) the content or layout of websites corresponding to the disputed domain names, (v) the nature of the marks at issue (e.g., where a registrant targets a specific sector), (vi) any naming patterns in the disputed domain names (e.g., <mark-country> or <mark-goods>), (vii) the relevant language/scripts of the disputed domain names particularly where they are the same as the mark(s) at issue, (viii) any changes by the respondent relating to any of the above items following communications regarding the disputed domain name(s), (ix) any evidence of respondent affiliation with respect to the ability to control the disputed domain name(s), (x) any (prior) pattern of similar respondent behavior, or (xi) other arguments made by the complainant and/or disclosures by the respondent(s).”

The Complainant contends in its amended Complaint that all the disputed domain names are registered by 杨智超 (Zhichao Yang) and that the disputed domain names are all under common control. Considerations raised by the Complainant in support of its request include the following:

(a) the disputed domain names are linked to the same web host, ParkingCrew.net;
(b) the disputed domain names appear to utilize the same commercial parking page provider as the appearance of the parking pages are similar;
(c) all of the disputed domain names are registered with the same Registrar;
(d) all of the disputed domain names were registered on July 12, 2021; and
(e) the registrant of all of the disputed domain names is 杨智超 (Zhichao Yang), who is located in China.

In accordance with paragraph 3(c) of the UDRP Rules, complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder. In this case, the Registrar confirmed that the registrant of all the domain names is 杨智超 (Zhichao Yang). Accordingly, the Panel accepts this single complaint involving multiple domain names registered by the same Respondent.

In addition, the Panel finds that the incorporation of the IDEAL IMAGE mark in its entirety (or a typo-variant thereof) and the dominant element of each disputed domain name, and the other factors enumerated by the Complainant are indicators of common control, which has not been disputed by the Respondent.

B. Language of the Proceeding

Paragraph 11 of the Rules provides that: “(a) 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 language of the Registration Agreement for the disputed domain names is Chinese.

The Complainant requested that the language of the proceeding be English.

The Respondent did not comment on the language of the proceeding.

The Panel cites the following with approval:

“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (See Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004).

The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceeding:

(i) the disputed domain names are in Latin characters, rather than Chinese script;
(ii) the disputed domain names incorporate English words, “ideal” and “image”, or common misspellings thereof;
(iii) the disputed domain names direct to commercial parking pages showing PPC links in English;
(iv) the Complainant may be unduly disadvantaged by having to conduct the proceeding in the Chinese language; and
(v) the Respondent did not object to the Complainant’s request that English be the language of the proceeding.
Upon considering the above, the Panel determines that English be the language of the proceeding.

6.2 Substantive Issues

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires a complainant to show that a domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belongs to its respective owner. The Complainant has provided evidence that it owns the IDEAL IMAGE trademark.

The disputed domain names wholly incorporate the IDEAL IMAGE mark in its entirety (or a typo-variant thereof), and the dominant element of each disputed domain name is the Complainant’s IDEAL IMAGE mark (or a typo-variant thereof). Twenty-five out of the twenty-seven disputed domain names differ from the Complainant’s mark by only adding, omitting, or altering a single letter or inversing two letters, and the remaining two of the disputed domain names (i.e., <comidealimage.com> and <wwwidealimage.com>) differ by adding three letters before the Complainant’s mark.

It is established that “a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element” (see WIPO Overview 3.0, section 1.9).

It is also established that the applicable generic Top Level Domain (“gTLD”) in a domain name 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). The addition of a gTLD to a disputed domain name does not avoid a finding of confusing similarity as the use of a gTLD is technically required to operate a domain name.

Disregarding the gTLD “.com” in each disputed domain name, twenty-five out of the twenty-seven disputed domain names consist of misspelled variants of the Complainant’s IDEAL IMAGE mark and the additional three letters in the case of the remaining two disputed domain names<comidealimage.com> and <wwwidealimage.com> do not prevent a finding of confusing similarity when the dominant element of each disputed domain name being the Complainant’s IDEAL IMAGE mark is clearly recognizable in each disputed domain name WIPO Overview 3.0, section 1.8).

Therefore, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s IDEAL IMAGE mark and the element under paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires the complainant to show that the respondent has no rights or legitimate interests in respect of the domain name. Once the complainant establishes a prima facie case that the respondent lacks rights or legitimate interests in the domain name, the burden of production shifts to the respondent to show that it has rights or legitimate interests in respect to the domain name (see WIPO Overview 3.0, section 2.1).

In the present case, the Complainant has demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain names and the Respondent has failed to assert any such rights or legitimate interests.

The Complainant submitted evidence that it did not authorize or license the Respondent to use the IDEAL IMAGE mark (see OSRAM GmbH. v. Mohammed Rafi/Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org, WIPO Case No. D2015-1149; Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).

The Complainant also submitted that the Respondent has been using the disputed domain names to resolve to parking pages with PPC links identical with or related to the Complainant’s business. It is well established that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering of goods or services where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users (see WIPO Overview 3.0, section 2.9). In this case, the Panel finds that the Respondent is not making a bona fide offering of goods or services as the PPC links on the websites at the disputed domain names appear to be competitive with the Complainant and would also mislead unsuspecting Internet users seeking the Complainant.

In addition, the evidence submitted by the Complainant shows that the Respondent is not commonly known by the disputed domain names.

The Respondent did not submit a Response in the present case and did not provide any explanation or evidence to show rights or legitimate interests in the disputed domain names which is sufficient to rebut the Complainant’s prima facie case.

The Panel is therefore of the view that the Respondent has no rights or legitimate interests in respect of the disputed domain names and accordingly, paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

The complainant must show that the respondent registered and is using the disputed domain name in bad faith (paragraph 4(a)(iii) of the Policy). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.

The Complainant has submitted evidence that the disputed domain names resolved to parked pages containing PPC links on the websites at the disputed domain names that appear to be competitive with the Complainant and would likely mislead unsuspecting Internet users seeking the Complainant. It is up to the Respondent to control the content appearing on the websites under the disputed domain names. PPC links that provide links to competitors of the Complainant represent a clear indication of bad faith registration and use of the disputed domain names.

The Complainant states the fact that its trademark registrations and first use of the mark long pre-date the registration of the disputed domain names, it is reasonable to infer that the Respondent was clearly aware of the Complainant and its IDEAL IMAGE marks at the time of registration of the disputed domain names.

The Complainant further states that it sent a cease-and-desist letter to the Respondent prior to the proceedings on October 13, 2021, and the Respondent never responded.

In addition, the Respondent did not submit a Response in this proceeding which is a further indication of the Respondent’s bad faith, which has been considered by the Panel. The Panel has also taken into consideration that fact that the Respondent appears to be engaging in a pattern of cybersquatting, as demonstrated by his registrations of the twenty-seven disputed domain names and history as a named respondent in other UDRP proceedings.

Based on the totality of evidence presented to the Panel, including the confusing similarity between the disputed domain names and the Complainant’s mark, the fact that the disputed domain names are being used for PPC links to competitive products or services, the fact that no Response was submitted by the Respondent to the Complaint and the Respondent’s pattern of cybersquatting, the Panel draws the inference that the disputed domain names were registered and are being used in bad faith, and accordingly, paragraph 4(a)(iii) of the Policy is satisfied.

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 names, <comidealimage.com>, <idaelimage.com>, <idalimage.com>, <iddealimage.com>, <ideaalimage.com>, <ideailmage.com>, <idealiage.com>, <idealiimage.com> <idealimaage.com>, <idealimae.com>, <idealimaeg.com>, <idealimag.com>, <idealimagee.com>, <idealimagge.com>, <idealimagr.com>, <idealimagw.com>, <idealimgae.com>, <idealimmage.com>, <ideallimage.com>, <idealmiage.com>, <ideealimage.com>, <idelaimage.com>, <idelimage.com>, <iealimage.com>, <iedalimage.com>, <iidealimage.com>, and <wwwidealimage.com>, be transferred to the Complainant.

Jonathan Agmon
Sole Panelist
Date: February 18, 2022