WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Tradesy Inc. v. Eartha Dickerson

Case No. D2014-2271

1. The Parties

The Complainant is Tradesy Inc. of Santa Monica, California, United States of America (“United States”), represented by Crosby & Higgins, LLP, United States.

The Respondent is Eartha Dickerson of Hong Kong, China.

2. The Domain Name and Registrar

The disputed domain name <tradesye.com> is registered with 35 Technology Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 24, 2014. On December 29, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 30, 2014, 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.

On January 5, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On January 7, 2015, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.

The Center verified that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint in both Chinese and English, and the proceeding commenced on January 15, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 4, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 6, 2015.

The Center appointed Susanna H.S. Leong as the sole panelist in this matter on February 17, 2015. 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 an online marketplace at “www.tradesy.com”, for the sale and purchase of gently used and new clothes, bags, shoes, accessories, and related women’s fashion items. It was founded in 2012 and has at all times offered these services under the TRADESY trademark.

The Complainant is the registered holder of the United States Federal Trademark registration for TRADESY (No. 4,409,729) with a registration date of October 1, 2013. The TRADESY mark is registered as being used for “operating on-line marketplaces featuring direct peer-to-peer buying, selling and trading of durable goods, namely, apparel, fashion accessories, and home goods; advertising services, namely, providing video entertainment content for promoting reseller of women’s fashion”, in class 35.

The Respondent registered the disputed domain name <tradesye.com> on October 28, 2014. The Complainant has submitted evidence showing that the disputed domain name is used to sell purportedly authentic Louis Vuitton products.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights on the following grounds:

(1) The Complainant is the registered holder of the United States Federal Trademark registration for TRADESY (No. 4,409,729).

(2) Since it was founded in 2012, the Complainant has provided a unique and highly valuable online marketplace at “www.tradesy.com”, for the sale and purchase of gently used and new clothes, bags, shoes, accessories, and related women’s fashion items.

(3) The use of the term “Tradesye” in the disputed domain name <tradesye.com> is intended to, and in fact has caused, significant confusion in the marketplace by misappropriating customers looking to purchase products from the Complainant at “www.tradesy.com”.

(4) There is evidence to show that the Complainant has been contacted by a customer requesting a refund in connection with a product purchased from the website to which the disputed domain name <tradesye.com> resolves, which the confused customer thought was purchased from the Complainant.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name on the following grounds:

(1) There is no evidence that the Respondent uses, or demonstrated preparations to use, the disputed domain name <tradesye.com> in connection with a bona fide offering of goods or services.

(2) There is no evidence that Respondent is commonly known by the disputed domain name.

(3) There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. Instead, the Respondent’s use of <tradesye.com> is seemingly for the sole purpose of commercial gain by misleading and diverting customers away from the Complainant’s online marketplace Tradesy and “www.tradesy.com”.

The Complainant contends that the disputed domain name was registered and is being used in bad faith on the following grounds:

(1) The disputed domain name <tradesye.com> was registered by the Respondent primarily for the purpose of disrupting the business of the Complainant and thus a clear case of bad faith.

(2) By using the disputed domain name <tradesye.com>, the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent’s website.

(3) In fact, the Respondent did attract Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, and endorsement of the Respondent’s website and products on the Respondent’s website. A copy of a “www.tradesye.com” invoice from a confused customer has been adduced as evidence.

(4) Thus, the Complainant submits that the use of the term “Tradesye” in the disputed domain name <tradesye.com> is intended to, and in fact has caused, significant confusion in the marketplace by misappropriating customers looking to purchase products available at the Complainant’s website, “www.tradesy.com”.

B. Respondent

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

6. Discussion and Findings

6.1. Language of the Proceeding

Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement. From the evidence presented in the case file, no agreement appears to have been entered into between the Complainant and the Respondent to the effect that the proceeding should be in English. The Complainant has submitted a request that the proceeding should be in English, to which the Respondent has not objected.

After considering the circumstances of the present case and the submission of the Complainant’s request, the Panel is of the opinion that the language of the present proceeding shall be English and the decision will be rendered in English. The Panel based its decision on the following reasons:

(i) The Panel’s discretion under the Policy

Paragraph 11(a) of the Rules provides:

“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.”

Thus, the parties may agree on the language of the administrative proceeding. In the absence of an 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 ability to articulate the arguments for the case.

(ii) The circumstances of this proceeding

One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties.

In particular, the Panel notes that the material facts of this proceeding are generated in the English language. The Panel finds that persuasive evidence has been adduced by the Complainant to suggest in the interests of fairness, the language of the proceeding ought to be English. In particular, the Panel notes that (a) the disputed domain name is made up of letters in ASCII-Script and could be pronounced phonetically in English; (b) the website to which the disputed domain name pointed was in English which suggests that the Respondent understands English; (c) the Center has notified the Respondent of the proceeding in both Chinese and English. The Respondent had a choice to respond to the Complaint in either Chinese or English as the Panel who has been appointed by the Center is conversant in both languages. The Panel is of the view that if the Respondent had experienced difficulty with the English language, it could have communicated this to the Center and the Panel would have ruled accordingly. However, the Respondent has chosen not to respond to the Complainant’s allegations. Considering these circumstances, 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 his or her ability to articulate the arguments for this case.

In considering the circumstances of the present case, the Panel decides that the language of the proceeding shall be English and the decision will be rendered in English.

6.2. Substantive Elements of the Policy

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must establish that each of the three following elements is satisfied:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

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

(iii) the disputed domain name has been registered and is being used in bad faith.

Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.

Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules or any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.

On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Complainant has adduced evidence to demonstrate that it has registered trademark rights and continues to have such rights in the TRADESY mark in connection with an “on-line marketplaces featuring direct peer-to-peer buying, selling and trading of durable goods, namely, apparel, fashion accessories, and home goods; advertising services, namely, providing video entertainment content for promoting reseller of women’s fashion”.

In assessing the degree of similarity between the Complainant’s trademark and the disputed domain name, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between the Complainant’s trademark and the disputed domain name is to be considered from the perspective of the average consumer of the goods or services concerned in this case, and the average consumer is the Internet user seeking to purchase or download information about the Complainant’s products.

Comparing the disputed domain name <tradesye.com> and the Complainant’s TRADESY mark, the Panel concludes that the disputed domain name is comprised of (a) a misspelling of the word “tradesy” to “tradesye” and (b) the generic Top-Level Domain (“gTLD”) “.com”. The misspelling of a mark in general does not serve to distinguish the disputed domain name from the Complainant’s mark and will render the disputed domain name confusingly similar to the Complainant’s mark. It is also clear that the addition of a gTLD such as “.com” is typically insufficient as a distinguishing factor.

The Panel finds for the Complainant on the first element of the Policy.

B. Rights or Legitimate Interests

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

(1) there is no evidence of a legitimate use by the Respondent of the disputed domain name or reasons to justify the choice of the term “tradesye” in its business operations;

(2) there is no evidence to show that the Complainant has licensed or otherwise permitted the Respondent to use its trademark or to apply for or use any domain name incorporating the TRADESY mark;

(3) there is no indication whatsoever that the Respondent is commonly known by the disputed domain name and/or is using the disputed domain name in connection with a bona fide offering of goods or services¹;

(4) the Complainant and its TRADESY mark enjoys goodwill in connection with its online markeplace and TRADESY is a registered trademark in the United States. Consequently, in the Panel’s view, in the absence of contrary evidence from the Respondent, the TRADESY mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant.

The Panel notes the overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP 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 WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1. Based on the above reasons, the Panel finds that 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 shifts the burden to the Respondent to produce evidence to rebut this presumption.

According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:

“(i) before any notice to you [respondent] 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 [respondent] (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 [respondent] 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 Panel notes that the Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or evidence of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. The Panel further notes that the Respondent has failed to submit a Response to the Complaint filed against it. In particular, the Respondent has failed to make submissions to demonstrate that it has rights or legitimate interests in the disputed domain name.

In accordance with the Rules, paragraph 14, the Panel thus draws such inferences as it considers appropriate, which are that the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent appears to be unable to adduce evidence of any rights or legitimate interests in the disputed domain name.

The Panel finds for the Complainant on the second element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:

(i) circumstances indicating that the respondent has registered or 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 trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent’s 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 trademark 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 the respondent’s website or other on-line 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 of the respondent’s website or location.

The above circumstances are indicative of registration and use of a domain name in bad faith but they are by no means exhaustive. Evidence of other circumstances adduced before a panel can also constitute registration and use of a domain name in bad faith by a respondent in appropriate cases.

One important consideration in the Panel’s assessment of whether the Respondent has registered and is using the disputed domain name in bad faith is prior knowledge on the part of the Respondent of the Complainant’s rights in the trademark concerned. In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks transcends national borders. The Panel finds that it is highly unlikely that the Respondent would not have had actual notice of the Complainant’s trademark rights at the time of the registration of the disputed domain name. Furthermore, it has been established that the Complainant enjoys goodwill on the Internet via its offering of its products on its official website “www.tradesy.com”. A simple search on the Internet would reveal the presence of the Complainant’s trademark and domain name. Therefore, the Panel finds that it is not conceivable that the Respondent would not have had actual notice of the Complainant’s trademark rights at the time of the registration of the disputed domain name. Consequently, it would have been pertinent for the Respondent to provide an explanation of its choice in registering the disputed domain name, failing which the Panel draws the conclusion that the disputed domain name was registered in bad faith with intent to create an impression of association with the Complainant and its products.

Where the Respondent has chosen to register a domain name that is identical or confusingly similar to the Complainant’s trademark and where the Complainant enjoys goodwill in the trademark in question through use, a reasonable conclusion is that the domain name is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant. Further, there is no evidence that the Respondent has used or intends to use the disputed domain name for purposes of a bona fide offering of goods or services over the Internet. On the contrary, there is evidence which shows that the Respondent is using the disputed domain name to intentionally attempt to attract for commercial gain, Internet users to the Respondent’s website – it was shown that the Complainant has been contacted by a customer requesting a refund in connection with a product purchased from the website upon which the disputed domain name <tradesye.com> resolves, which the confused customer thought was purchased from the Complainant. The Panel finds that the Complainant has adduced evidence and proved that by using a confusingly similar disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the disputed domain name under paragraph 4(b)(iv) of the Policy.

Thus, the Panel finds for the Complainant on the third element of the Policy.

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 name <tradesye.com> be cancelled.

Susanna H.S. Leong
Sole Panelist
Date: March 3, 2015

¹ The Panel agrees with the Complainant that the use made of the disputed domain name cannot amount to a bona fide offering of goods. The Respondent operates a business similar to that of the Complainant (e.g., the online sale of accessories) and for this similar business it has chosen a confusingly similar domain name (which has caused actual consumer confusion). Further, there is no disclaimer on the website at the disputed domain name clarifying the Respondent’s (lack of) relationship with the Complainant and Louis Vuitton. In these circumstances, the Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods.