WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

TYME LLC v. Ming Li and Elis Kias, Weibaijia

Case No. D2017-2223

1. The Parties

The Complainant is TYME LLC of Bellevue, Iowa, United States of America ("United States"), represented by Neugeboren O'Dowd PC, United States.

The Respondents are Ming Li of Beijing, China ("First Respondent") and Elis Kias, Weibaijia of Guangzhou, China ("Second Respondent") (collectively "Respondents").

2. The Domain Names and Registrars

The disputed domain names <tymeironbuy.com> and <tymeironus.com> are registered with Hosting Concepts B.V. d/b/a Openprovider. The disputed domain names <tyme-iron.com> and <tymeironsale.com> are registered with GoDaddy.com, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 8, 2017. On November 10, 2017, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On October 10 and 15, 2017, the Registrars transmitted by email to the Center their verification responses disclosing registrant and contact information for the disputed domain names which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainant on November 28, 2017 providing the registrant and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 1, 2017.

The Center verified that the Complaint together with the amended Complaint (hereafter 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 and 4, the Center formally notified the Respondents of the Complaint, and the proceedings commenced on December 5, 2017. In accordance with the Rules, paragraph 5, the due date for the Response was December 25, 2017. Neither of the Respondents submitted any response. Accordingly, the Center notified the Respondents' default on December 26, 2017.

The Center appointed Nicholas Smith as the sole panelist in this matter on January 12, 2018. 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 United States company involved in the provision of hair care styling products, including heat tools which I will describe as curling irons (though such tools can also be used for straightening hair) and styling products such as shampoo and conditioner. It operates a website at "www.tymestyle.com" ("Complainant's Website") at which the Complainant's products are displayed along with a stylized

fleur-de-lis mark ("Fleur Mark").

The Complainant is the owner of a United States trade mark registration for the word "tyme" (the "TYME Mark"), from December 16, 2014 (registration number 4,657,434) for "hair styling devices in the nature of electric irons for styling hair, namely electric irons for curling and straightening hair, in class 8". The TYME Mark is said to have been first used in commerce on July 22, 2014.

The disputed domain names <tymeironbuy.com> and <tymeironus.com> were registered on August 21, 2017 by the Second Respondent using the privacy service Whois Privacy Protection Foundation. The disputed domain names <tyme-iron.com> and <tymeironsale.com> were registered on July 19, 2017 and July 31, 2017 respectively by the First Respondent, using the privacy service Domains By Proxy LLC. For the purposes of this decision I will refer to the disputed domain names collectively as the Domain Names.

The Domain Name <tymeironus.com> is presently suspended but prior to the commencement of proceeding resolved to a website identical to that of the other three Domain Names. The remaining three Domain Names resolve to an Internet site ("the Respondents' Website") which contains the Complainant's TYME Mark and a close variant of the Fleur Mark and is similar in design to the Complainant's Website. The Respondents' Website offers for sale curling iron products that are either the Complainant's products or counterfeit products.

5. Parties' Contentions

A. Complainant

The Complainant makes the following contentions:

(i) that the Domain Names are identical or confusingly similar to the Complainant's TYME Mark;

(ii) that the Respondents have 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 TYME Mark, having registered the TYME Mark in the United States and the TYME Mark having been accepted for protection in the European Union. The Domain Names each consist of the TYME Mark along with additional words which refer to the Complainant's curling iron products and are likely to confuse consumers searching the Internet for authentic TYME curling irons.

There are no rights or legitimate interests held by the Respondents in respect of the Domain Names. The Respondents are not commonly known as the Domain Names nor do the Respondents have any authorization from the Complainant to register the Domain Names. The Respondents are not making a legitimate noncommercial fair use of the Domain Names. Rather the Respondents are using the Domain Names to operate the Respondents' Website where the Respondents offer for sale products that are either counterfeit or are unauthorised dealings of the Complainant's products.

The Domain Names were registered and are being used in bad faith. By using the Domain Names for a website that is strikingly similar to the Complainant's Website selling products under the Complainant's TYME Mark, the Respondents are preventing the Complainant from using the Domain Names, are disrupting the business of the Complainant and are intentionally attempting to attract for commercial gain, Internet users to the Respondents' Website, by creating a likelihood of confusion with the Complainant's TYME Mark as to the source, sponsorship, affiliation, or endorsement of the Respondents' Website.

B. Respondents

The Respondents did not reply to the Complainant's contentions.

6. Discussion and Findings

6.1. Multiple Respondents

The named registrant of the Domain Names <tyme-iron.com> and <tymeironsale.com> is the First Respondent. The named registrant of the Domain Names <tymeironbuy.com> and <tymeironus.com> is the Second Respondent.

UDRP Proceedings are normally brought against a single Respondent. However paragraph 10(e) of the Rules states that in certain circumstances a panel may consolidate multiple domain name disputes. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), paragraph 4.11.2, states:

"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)."

Based on the information before it, the Panel is prepared to allow the consolidation of the proceedings against both the named registrants on the basis that the Domain Names are under common control. The Domain Names were registered within six weeks of each other and have similar naming patterns, consisting of the TYME Mark, the word "iron" that describes a subset of products offered by the Complainant and (in some cases) a third descriptive word. Each of the Domain Names redirects or has redirected to an identical website clearly under the control of a single entity. Finally, the Panel notes that neither Respondent has denied any association with the other or objected to the consolidation of the proceedings requested by the Complainant. The Panel finds that, on the balance of probabilities, the Domain Names are subject to common control and that the consolidation would be fair and equitable to all the Parties. As such, for the purposes of the decision going forward, the Panel will refer to the named registrants of the Domain Names as a single Respondent.

6.2. Substantive Issues

A. Identical or Confusingly Similar

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 TYME Mark, having registrations for "tyme" as a trade mark in the United States.

Each of the Domain Names incorporate the TYME Mark in its entirety with the addition one or more generic terms, one of which is the word "iron" which describes products sold by the Complainant and from the Respondent's Website. The addition of a generic term to a complainant's mark is insufficient to dispel the impression of confusing similarity, see Wal-Mart Stores, Inc. v. Henry Chan, WIPO Case No. D2004-0056.

An individual viewing any of the Domain Names may be confused into thinking that each of the Domain Names would refer to a site in some way connected to the Complainant. The Panel finds that each of the Domain Names is confusingly similar to the Complainant's TYME Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

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 name. 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 name.

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 TYME Mark or a mark similar to the TYME Mark. There is no evidence that the Respondent is commonly known by 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.

The Respondent has used the Domain Names to operate a website that is strikingly similar to the Complainant's Website and hence uses the TYME Mark to sell curling irons that purport to be legitimate TYME products. Given the lack of any connection between the Complainant and the Respondent, the manner in which the Respondent's Website impersonates the Complainant's Website and the fact that the Complainant does not authorise sales of its products through outlets other than those controlled by the Complainant, it is highly likely that the curling irons sold by the Respondent are not genuine Complainant products. If this is the case the Respondent's use of the Domain Name does not grant it rights or legitimate interests since it is using the Complainant's TYME Mark for a site selling counterfeit products.

Even if the Respondent is offering genuine "Tyme" products from the Respondent's Website, such use does not automatically grant it rights and legitimate interests. The principles that govern whether a reseller of genuine goods has rights or legitimate interests have been set out in a variety of UDRP decisions, starting with the case of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.

The WIPO Overview 3.0, section 2.8 summarizes the consensus views of UDRP panels in assessing claims of nominative (fair) use by resellers or distributors in the following manner:

"… Panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant's trademark to undertake sales or repairs related to the complainant's goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the 'Oki Data test', the following cumulative requirements will be applied in the specific conditions of a UDRP case:

(i) the respondent must actually be offering the goods or services at issue;

(ii) the respondent must use the site to sell only the trademarked goods or services;

(iii) the site must accurately and prominently disclose the registrant's relationship with the trademark holder; and

(iv) the respondent must not try to 'corner the market' in domain names that reflect the trademark.

The Oki Data test does not apply where any prior agreement, express or otherwise, between the parties expressly prohibits (or allows) the registration or use of domain names incorporating the complainant's trademark."

In this case, the Respondent's Website does not accurately or prominently disclose the Respondent's relationship with the Complainant, in particular that it is not an authorized dealer or has any particular connection with the Complainant. Rather the Respondent is actively impersonating the Complainant online. Even in the event that the Respondent is reselling genuine "Tyme" products, its use of the Domain Names for the Respondent's Website does not grant it rights or legitimate interests in the Domain Names.

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 on 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 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.

C. Registered and Used in Bad Faith

For the purposes of paragraph 4(a)(iii), 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 it is likely that the Respondent was aware of the Complainant and its reputation in the TYME Marks at the time the Domain Names were registered. The Domain Names resolve to a website that purports to be the website of the Complainant, including by reproducing the Complainant's Fleur Mark and general design of the Complainant's Website, indicating that the Respondent was aware of the Complainant at the time of registration.

In the circumstances, the Respondent's conduct in registering the Domain Names when it was aware of the Complainant's rights and lacked rights or legitimate interests of its own amounts to registration in bad faith.

The Respondent registered the Domain Names for the purpose of operating a website specifically to sell either the Complainant's curling iron products or counterfeit curling irons that compete with the Complainant's products. The Respondent is using (or in the case of the Domain Name <tymeironus.com> , has used) the Domain Names that are confusingly similar to the TYME Mark to sell products, be they legitimate or otherwise, in competition with the Complainant and without the Complainant's approval. Consequently the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant and the Complainant's TYME Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's Website.

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.

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 Domain Names <tymeironbuy.com>, <tyme-iron.com>, <tymeironsale.com> and <tymeironus.com> be transferred to the Complainant.

Nicholas Smith
Sole Panelist
Date: January 15, 2018