The Complainant is LovePop, Inc., United States of America (“United States”), represented by Polsinelli PC Law firm, United States.
The Respondent is Wei Feng Zhang, China.
The disputed domain names <lovepopup.com>, <loverpopcard.com>, <loverpopcards.com>, <popcardstore.com> (“Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 19, 2021. On February 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On February 23, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 25, 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 on March 2, 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 March 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 23, 2021. The Respondent sent two emails to the Center on February 26, 2021 but filed no formal Response by the due date. Accordingly, the Center notified the Parties regarding the Panel Appointment on March 31, 2021.
The Center appointed Nicholas Smith as the sole panelist in this matter on April 20, 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.
Founded in 2014, the Complainant is a company based in the United States that offers laser-cut 3D pop up greeting cards. It offers these products under the trade mark LOVEPOP (the “LOVEPOP Mark”) and a device mark consisting of a stylised image of an open greeting card with a love heart in the centre (the “Device Mark”). The Complainant sells its products through third party retailers, its own specialist stores and through the Complainant’s website at “www.lovepopcards.com”.
The Complainant is the holder of a trade mark registration for the LOVEPOP Mark in the United States (registration number 4730483 for paper goods in class 16) with a registration date of May 5, 2015.
The Domain Names were registered between January 25, 2021 and February 2, 2021. The Domain Names are currently inactive but prior to the commencement of proceedings the Domain Name <loverpopcard.com> redirected to a website at <popcardstore.com> (the “Respondent’s Website”). The Respondent’s Website offered for sale (under the name popcardstore) products identical to that offered by the Complainant, including products bearing the Device Mark. The Respondent’s Website also reproduced the Complainant’s copyrighted photographs and text without the Complainant’s permission only changing the name “Lovepop” in the text descriptions to “popcardstore”.
The Complainant makes the following contentions:
(i) that the Domain Names are identical or confusingly similar to the Complainant’s LOVEPOP Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Names; and
(iii) that the Domain Names have been registered and are being used in bad faith.
The Complainant is the owner of the LOVEPOP Mark, having registered the LOVEPOP Mark in the United States. The Domain Names <lovepopup.com>, <loverpopcard.com>, <loverpopcards.com>, each reproduce the LOVEPOP Mark, in some cases the letter “r” along with an additional generic word which does not distinguish the Domain Names from the LOVEPOP Mark. The Domain Name <popcardstore.com> reproduces the “POP” element and given the use of the Domain Name, is clearly intended to confuse with the LOVEPOP Mark.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Names. The Respondent is not commonly known as the Domain Names nor does the Respondent have any authorization from the Complainant to register the Domain Names. The Respondent is not making a legitimate noncommercial or fair use of the Domain Names. Rather, the Respondent is using the Domain Names to create websites that mimic Complainant’s website to confuse visitors into thinking that the Respondent sells the Complainant’s products, such use not being bona fide.
The Domain Names were registered and are being used in bad faith. By using the Domain Names for websites that purport to sell the Complainant’s products, the Respondent is clearly aware of the LOVEPOP Mark and are using it to pass itself off as the Complainant. Such conduct amounts to registration and use of the Domain Names in bad faith.
The Respondent did not formally reply to the Complainant’s contentions. On February 26, 2021 the Respondent sent two emails to the Center stating “i got it ,so sorry about” and shortly afterwards “I have modified the content that violated intellectual property rights, please check if there are other places to modify”.
To prove this element the Complainant must have trade or service mark rights and each Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the LOVEPOP Mark, having registrations for LOVEPOP as a trademark in the United States.
The Domain Names <lovepopup.com>, <loverpopcard.com>, <loverpopcards.com> wholly incorporate the LOVEPOP Mark with the addition of the terms “up” or “card(s)”, in some cases the letter “r”, and a generic Top-Level Domain, being a necessary requirement of a domain name. The addition of such terms to a complainant’s wholly incorporated mark does not prevent a finding of confusing similarity, see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) and Wal-Mart Stores, Inc. v. Henry Chan, WIPO Case No. D2004‑0056.
The Domain Name <popcardstore.com> reproduces the “POP” element from the LOVEPOP Mark along with descriptive terms that directly describe the Complainant’s offering (“card” and “store”). WIPO Overview 3.0, in response to the question “Is the content of the website associated with a domain name relevant in determining identity or confusing similarity?” states:
The content of the website associated with the domain name is usually disregarded by panels when assessing confusing similarity under the first element.
In some instances, panels have however taken note of the content of the website associated with a domain name to confirm confusing similarity whereby it appears prima facie that the respondent seeks to target a trademark through the disputed domain name.
In the present case, while the <popcardstore.com> does not wholly incorporate the LOVEPOP Mark, the use of <popcardstore.com> for the Respondent’s Website which seeks to target the Complainant’s LOVEPOP Mark through the offering of identical goods and the reproduction of copyrighted material makes it apparent that the Respondent sought to target the LOVEPOP Mark through the Domain Name. As such the evidence of use supports the conclusion that the <popcardstore.com> Domain Name is confusingly similar to the LOVEPOP Mark.
The Panel finds that each of the Domain Names is confusingly similar to the Complainant’s LOVEPOP Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain names. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain names.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Names or to seek the registration of any domain name incorporating the LOVEPOP Mark or a mark similar to the LOVEPOP Mark. There is no evidence that the Respondent is commonly known by any of the Domain Names or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Names in connection with a legitimate noncommercial use.
While it is unclear whether the Respondent has used the <lovepopup.com> and <loverpopcards.com> Domain Names, the Complaint contains evidence that the Respondent has used the <loverpopcard.com> and <popcardstore.com> Domain Names to offer greeting card products that purport to be identical to Complainant’s products in direct competition with the Complainant’s products. As part of that process the Respondent has without permission used the Complainant’s copyright photos and text. The use of a series of Domain Names confusingly similar to the Complainant’s mark for the sale of competing goods does not by itself show a bona fide offering of goods or services.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names. The Respondent has had the opportunity to put forth evidence of its rights or legitimate interests, including submissions as to why its conduct amounts to a right or legitimate interest in the Domain Names under the Policy. In the absence of such a response or evidence the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names under paragraph 4(a)(ii) of the Policy.
For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s 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 (Policy, paragraph 4(b)).
The Panel finds that the Respondent was aware of the Complainant and its reputation in the LOVEPOP Mark at the time the Domain Names were registered. The Respondent’s Website contains numerous references to the Complainant, including reproducing the Device Mark and copying the Complainant’s copyrighted photos and description of its products. The registration of the Domain Names in awareness of the LOVEPOP Mark and in the absence of rights or legitimate interests amounts under these circumstances to registration in bad faith.
The Respondent registered the Domain Names for the purposes of operating websites specifically to sell products that compete with the Complainant’s greeting cards, including selling greeting card products that display the Complainant’s Device Mark. Consequently, the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant and the Complainant’s LOVEPOP Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website.
The fact that it is unclear whether the <lovepopup.com> and <loverpopcards.com> were in active use does not change the Panel’s conclusion with respect to those Domain Names. The Panel is prepared to infer based on the conduct of the Respondent with respect to the active Domain Names that the inactive Domain Names are being held pending use for the same purposes as the <loverpopcard.com> and <popcardstore.com> Domain Names. As such, the Panel finds that the passive holding of the <lovepopup.com> and <loverpopcards.com> Domain Names does not prevent a finding of use in bad faith.
Accordingly, the Panel finds that the Respondent has registered and used the Domain Names in bad faith under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <lovepopup.com>, <loverpopcard.com>, <loverpopcards.com>, and <popcardstore.com> be transferred to the Complainant.
Nicholas Smith
Sole Panelist
Date: April 26, 2021