WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LYMI, Inc. v. 张平平 (zhang ping ping)

Case No. DCN2021-0027

1. The Parties

The Complainant is LYMI, Inc., United States of America (the “US”), represented by Lane IP Limited, United Kingdom (the “UK”).

The Respondent is 张平平 (zhang ping ping), China.

2. The Domain Name and Registrar

The disputed domain name <reformationspecials.cn> is registered with 北京新网数码信息技术有限公司 (Xin Net Technology Corp.) (the “Registrar”).

3. Procedural History

The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 18, 2021. On August 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 31, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the China ccTLD Dispute Resolution Policy (the “Policy”), the China ccTLD Dispute Resolution Policy Rules (the “Rules”), and the WIPO Supplemental Rules for China ccTLD Dispute Resolution Policy and China ccTLD Dispute Resolution Policy Rules (the “WIPO Supplemental Rules”).

In accordance with the Rules, Articles 5 and 6, and Articles 14 to 16, and the WIPO Supplemental Rules, Paragraph 4(d), the Center formally notified the Respondent in Chinese and English of the Complaint, and the proceedings commenced on September 7, 2021. In accordance with the Rules, Article 17 and 49, the due date for Response was September 27, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 7, 2021.

The Center appointed Yijun Tian as the sole panelist in this matter on October 11, 2021. 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, Article 29.

4. Factual Background

A. Complainant

The Complainant, LYMI, Inc., is a company incorporated in the US. The Complainant began by selling vintage clothing from a small Los Angeles storefront in 2009, and is now in the business of designing, creating, developing, marketing, and selling clothing, footwear and other fashion accessories. It currently has 20 stores across the US, as well as in Toronto, Canada and London, UK. The Complainant’s official website at “www.thereformation.com”, which was launched in 2011, offers free worldwide shipping on all orders and ships to over 270 countries, including China.

The Complainant is the exclusive owner of numerous REFORMATION trademarks worldwide, including the US Trademark registered on March 13, 2012 (the US Trademark registration number 4111272), the Hong Kong, China (HK) Trademark registered on November 1, 2017 (the HK Trademark registration number 304065822), and the International Trademark registered on March 3, 2017 (the International Trademark registration number 1351244).

The Complainant also registered numerous domain names which contain the REFORMATION trademark, such as <thereformation.us> (created on April 19, 2011), <reformation.us> (created on September 15, 2015), and <reformation.online> (created on October 19, 2015).

B. Respondent

The Respondent is 张平平 (zhang ping ping), China. The disputed domain name <reformationspecials.cn> was registered on June 30, 2021. The disputed domain name used to resolve to a website providing products under the Complainant’s REFORMATION trademark, and it currently resolves to a website which is inactive.

5. Parties’ Contentions

A. Complainant

The disputed domain name is confusingly similar to the Complainant’s REFORMATION mark. It wholly incorporates the mark with the word “specials”.

The Respondent has no rights or legitimate interests in respect of the disputed domain name or a major part of the disputed domain name.

The disputed domain name was registered and is being used in bad faith.

The Complainant requests for the transfer of the disputed domain name to the Complainant.

B. Respondent

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

6. Discussion and Findings

6.1. Notice of the Proceeding

Having considered the records in the case file, the Panel is satisfied that the Center has discharged its responsibility under Article 5 of the Rules to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint and that the failure of the Respondent to furnish a Response is not due to any apparent omission or inadequate communication by the Center.

6.2. Language of the Proceeding

According to Article 6 of the Policy and Article 8 of the Rules, the language of the proceeding shall be Chinese unless otherwise agreed by the Parties or decided by the Panel in exceptional circumstances. The Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following main reasons:

1) The Complainant and its representative are established in the US and the UK respectively and are able to communicate in English, but have no knowledge of the Chinese language.

2) Translating all of the documents comprising the Complaint would unfairly disadvantage the Complainant as it would be extremely expensive and time consuming.

3) The disputed domain name is comprised exclusively of English words, such as “reformation” and “specials”, indicating that the Respondent understands and can communicate in English.

4) It is likely the Respondent understands and can communicate in English since the disputed domain name resolved very recently to a website which was entirely in the English language.

According to Article 31 of the Rules, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case. The Panel shall also ensure that the proceedings take place with due expedition. Therefore, when exercising its discretion to use a language other than Chinese, the Panel has to exercise such discretion judicially in the spirit of equality, fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ abilities to understand and use the proposed language, time and costs. See Skydance Productions, LLC v. 重庆珈亨科技有限公司 (Chong Qing Jia Heng Ke Ji You Xian Gong Si), WIPO Case No. DCN2021-0001; Osram GmbH v. 尚弦 (xian shang), WIPO Case No. DCN2020-0025.

On record, the Respondent appears to be a Chinese resident and is thus presumably not a native English speaker. However, considering the following, the Panel has decided that English should be the language of the proceeding:

1) the disputed domain name includes Latin characters and particularly English words (“reformation” and “specials”), rather than Chinese script;

2) the disputed domain name used to resolve to a website which was entirely in the English language;

3) the Center has notified the Respondent in Chinese and English of the proceeding, and the Respondent has not filed any Response.

Accordingly, 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 its ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under Article 6 of the Policy and Article 8 of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English.

6.3. Substantive Issues

Article 8 of the Policy provides that a complaint against a registered domain name shall be supported if the following conditions are fulfilled:

(i) The disputed domain name is identical with or confusingly similar to the Complainant’s name or mark in which the Complainant has civil rights or interests;

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

(iii) The Respondent has registered or has been using the disputed domain name in bad faith.

A. Identical or Confusingly Similar to the Complainant’s Name or Mark in which the Complainant has Civil Rights or Interests

Based on the evidence submitted, the Panel finds that the Complainant has rights in the REFORMATION marks. The disputed domain name <reformationspecials.cn> comprises the REFORMATION mark in its entirety. The disputed domain name only differs from the Complainant’s REFORMATION marks by adding the suffix “specials” to the REFORMATION marks. This does not compromise the recognizability of the Complainant’s marks within the disputed domain name, nor prevent a finding of confusing similarity between the Complainant’s registered trademarks and the disputed domain name. See Bollore v. 崔隆, WIPO Case No. DCN2020-0001.

The disputed domain name also includes a country code Top-Level Domain (“ccTLD”) “.cn”, which is a technical requirement of domain name registration. The previous panels have disregarded the TLD part of the domain names, when assessing whether a domain name is identical or confusingly similar to the mark in issue. See Bollore v 崔隆, supra; Osram GmbH v. 尚弦 (xian shang), supra.

The Panel therefore holds that the disputed domain name is confusingly similar to the Complainant’s REFORMATION marks, and the Complaint fulfils the first condition of Article 8 of the Policy.

B. Rights or Legitimate Interests

Article 10 of the Policy sets out the following circumstances which, without limitation, if found by the panel, may be evidence of the respondent’s rights to, or legitimate interests in, a disputed domain name, for the purposes of Article 8 of the Policy:

(a) the Respondent uses of the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services;

(b) the Respondent has been commonly known by the [disputed] domain name, even if he has acquired no trademark or service mark rights;

(c) the Respondent is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent of or commercial gain to misleadingly divert consumers.

Article 7 of the Policy provides that the Complainant and the Respondent shall bear the burden of proof for their own claims. Further, it is well established by previous panel 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 the respondent to rebut the complainant’s contentions. See 塞维斯马斯特有限责任公司 (The Servicemaster Company, LLC) and 特敏尼克斯国际合股有限公司 (The Terminix International Company Limited Partnership) v. 孙启峰, WIPO Case No. DCN2019-0005; Osram GmbH v. 尚弦 (xian shang), supra.

According to the Complaint, the Complainant is a leading company in the business of designing, creating, developing, marketing, and selling clothing, footwear and other fashion accessories. It now has 20 stores across the US, Canada and the UK. The Complainant’s official website offers free worldwide shipping on all orders and ships to over 270 countries, including China. It has asserted registration and use of the registered trademark REFORMATION long before the Respondent’s registration of the disputed domain name <reformationspecials.cn> on June 30, 2021.

Moreover, the Respondent is not an authorized dealer of the REFORMATION branded products or services. The Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption.

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

1) There has been no evidence adduced to show that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. The Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the term “reformation” in the disputed domain name and in his business operation. There has been no evidence to show that the Complainant has licensed or otherwise permitted the Respondent to use the REFORMATION marks or to apply for or use any domain name incorporating the REFORMATION marks.

2) There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that the Respondent has any registered trademark rights with respect to the disputed domain name. The Respondent registered the disputed domain name in 2021, long after the REFORMATION marks became internationally known. The disputed domain name is confusingly similar to the REFORMATION marks.

3) There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. By contrast, the disputed domain name used to resolve to a website providing products under the Complainant’s REFORMATION trademark, and it currently resolves to a website which is inactive.

Accordingly, the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel therefore holds that the Complaint fulfils the second condition of Article 8 of the Policy.

C. Registered or Used in Bad Faith

Article 9 of the Policy sets out four circumstances which shall be evidence of the registration or use of the disputed domain name in bad faith, namely:

(a) The purpose of registering or acquiring the [disputed] domain name is to sell, rent or otherwise transfer the disputed domain name registration to the complainant who is the owner of the name or mark or to a competitor of that complainant, and to obtain unjustified benefits;

(b) The disputed domain name holder registers domain names in order to prevent owners of the names or marks from reflecting the names or the marks in corresponding domain names;

(c) The disputed domain name holder has registered or acquired the disputed domain name for the purpose of damaging the Complainant’s reputation, disrupting the Complainant’s normal business or creating confusion with the Complainant’s name or mark so as to mislead the public;

(d) Other circumstances which may prove the bad faith.

The Panel finds that the circumstances referred to in Article 9(c) 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 the Respondent has registered and used the disputed domain name in bad faith.

The Panel finds that the Complainant has a widespread reputation in the REFORMATION marks with regard to its products and services. As mentioned above, the REFORMATION marks have been registered since 2012. The Complainant is a leading company in the business of designing, creating, developing, marketing, and selling clothing, footwear and other fashion accessories. Its website offers free worldwide shipping on all orders and ships to over 270 countries, including China. The disputed domain name used to resolve to a website providing products under the Complainant’s REFORMATION trademark, and the website contained the texts and images taken from the Complainant’s official website.

It is not conceivable that the Respondent would not have had actual notice of the REFORMATION marks at the time of the registration of the disputed domain name. Thus, the Panel concludes that the disputed domain name was registered in bad faith.

As mentioned above, the Respondent has used the website resolved by the disputed domain name to provide products under the Complainant’s REFORMATION trademark, and the website used to contain the texts and images taken from the Complainant’s official website. Thus, the Panel concludes that the Respondent has used the confusingly similar disputed domain name with the intention to attract, for commercial gain, Internet users to the Respondent’s website.

Given the reputation of the REFORMATION marks, the Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with the Complainant, contrary to the fact. There is a strong likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the website to which the disputed domain name resolved. In other words, the Respondent has, through the use of the confusingly similar disputed domain name, created a likelihood of confusion with the REFORMATION marks so as to mislead the public.

The Panel therefore concludes that the disputed domain name was registered and is being used by the Respondent in bad faith. Such use of the disputed domain name is also disruptive in relation to the interests of the Complainant.

In summary, the Respondent, by choosing to register and use the disputed domain name, which is confusingly similar to the REFORMATION marks, intended to ride on the goodwill of these trademarks in an attempt to exploit, for commercial gain, Internet users destined for the Complainant. In the absence of evidence to the contrary and rebuttal from the Respondent, the choice of the disputed domain name and the conduct of the Respondent as far as the website to which the disputed domain name resolved is indicative of registration and use of the disputed domain name in bad faith. The current non-use of the disputed domain name does not prevent a finding of bad faith in this case.

The Panel therefore holds that the Complaint fulfils the third condition of Article 8 of the Policy in respect of the disputed domain name.

7. Decision

For the foregoing reasons, in accordance with Articles 14 of the Policy and 40 of the Rules, the Panel orders that the disputed domain name <reformationspecials.cn> be transferred to the Complainant.

Yijun Tian
Sole Panelist
Date: October 29, 2021