WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lululemon Athletica Canada Inc. v. Long Chen
Case No. D2020-3519
1. The Parties
The Complainant is Lululemon Athletica Canada Inc., Canada, represented by Sideman & Bancroft LLP, United States of America (“United States”).
The Respondent is Long Chen, China.
2. The Domain Names and Registrar
The disputed domain names <lululemonshops.club> and <lulustore.club> 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 December 23, 2020. On December 24, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 28, 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 28, 2020, 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 January 6, 2021.
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 of the Complaint, and the proceedings commenced on January 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 28, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 4, 2021.
The Center appointed Ian Lowe as the sole panelist in this matter on February 9, 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, paragraph 7.
4. Factual Background
The Complainant is a Canada based designer and retailer of yoga-inspired athletic apparel. Since it was founded in 1998, it has developed, manufactured and sold apparel including shirts, shorts, pants and leggings under its LULULEMON mark. The Complainant operates over 450 retail and outlet stores throughout the world and maintains an online web store at “www.shop.lululemon.com”. Authentic LULULEMON products are sold exclusively through the Complainant’s retail and outlet stores and website and through strategic partners such as premium yoga studios, gyms and wellness centers. The Complainant does not sell its products through discount apparel stores or through wholesalers.
The Complainant and its products are commonly referred to using the shortened form “lulu”, particularly, for example, in online magazine articles featuring its apparel.
The Complainant is the proprietor of number of trademark registrations incorporating the LULULEMON mark (the “Mark”) including United States trademark number 3990179 LULULEMON registered on July 5, 2011. It is also the proprietor of United States trademark number 2,460,180 for the device below, registered on June 12, 2001 (the “Device Mark”):
The disputed domain names were registered on October 12, 2020 (<lululemonshops.club>) and October 30, 2020 (<lulustore.club>). Neither of them currently resolves to an active website, but at the time of preparation of the Complaint they both pointed to websites (the “Respondent’s Websites”) purporting to offer the Complainant’s LULULEMON products for sale at heavily discounted prices. The home pages incorporated the Complainant’s Device Mark and the websites included copies of numerous images apparently taken from the Complainant’s website of models wearing the Complainant’s clothing.
The Respondent did not reply to a cease and desist letter sent by the Complainant’s representative on November 13, 2020.
5. Parties’ Contentions
The Complainant contends that the Domain Names are confusingly similar to the Mark, that the Respondent has no rights or legitimate interests in respect of the Domain Names and that the Respondent registered and is using the Domain Names in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
For this Complaint to succeed in relation to the Domain Names the Complainant must prove that:
(i) the Domain Names are 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 Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has uncontested rights in the Mark, both by virtue of its trademark registrations and as a result of the goodwill and reputation acquired through its use of the Mark over many years. Ignoring the generic Top-Level Domain (“gTLD”) “.club”, the disputed domain name <lululemonshops> comprises the entirety of the Mark, together with the word “shops”. In the view of the Panel, the addition of this term does not detract from the confusing similarity of the disputed domain name to the Mark. Again ignoring the gTLD “.club”, the disputed domain name <lulustore.club> comprises a distinctive part of the Mark, “lulu”, together with the term “shop”. The Panel considers that the distinctive and dominant nature of “lulu” in the Mark is such as to give rise to confusing similarity to the Mark and that the addition of the term “shop” does not detract from the confusing similarity. The broader case context in this proceeding, including in particular the fact that the Respondent registered both a disputed domain name wholly incorporating the Mark, and a disputed domain name with the dominant element of the Mark, further supports a finding of confusing similarity.
Accordingly, the Panel finds that both the disputed domain names are confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has made out a strong prima facie case that the Respondent could have no rights or legitimate interests in respect of the disputed domain names. The Respondent has used the disputed domain names not in connection with a bona fide offering of goods or services, but for a website offering what the Complainant claims to be counterfeit products of the Complainant. The Panel notes that the websites were offering products for sale at what purport to be very substantially discounted prices, which is consistent with the products in question being counterfeit. There is no suggestion that the Respondent has ever been known by the disputed domain names (section 2.3 of the WIPO Overview 3.0). The Respondent has chosen not to respond to the Complainant or to take any steps to counter the prima facie case established by the Complainant.
In the circumstances, the Panel finds that the Respondent does not have any rights or legitimate interests in respect of the disputed domain names.
C. Registered and Used in Bad Faith
Since the Respondent has used the disputed domain names for websites selling what purport to be the Complainant’s goods, the Panel is in no doubt that the Respondent had the Complainant and its rights in the Mark in mind when it registered the disputed domain names. The home pages of the Respondent’s Websites incorporated the Complainant’s Device Mark and numerous photographs taken from the Complainant’s website. In the absence of any response by the Respondent, the Panel has no reason to doubt that the Respondent was offering counterfeit goods of the Complainant on its websites, particularly given the very substantially discounted prices at which the websites were purporting to sell the goods. In the Panel’s view, the use of domain names for such activity, clearly with a view to commercial gain, amounts to paradigm bad faith registration and use for the purposes of the Policy. The fact that since the Complaint was filed the disputed domain names have become inactive does not obviate a finding of bad faith use.
Accordingly, the Panel finds that the disputed domain names have been registered and are being used in bad faith.
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, <lululemonshops.club> and <lulustore.club> be transferred to the Complainant
Date: February 19, 2020