Red Wing Shoe Company, Inc. v. wei zhang / Magdalena Jennifer / Mu Yan / Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA1911001873163
Complainant is Red Wing Shoe Company, Inc. (“Complainant”), represented by William Schultz of Merchant & Gould, Minnesota, USA. Respondents are wei zhang / Magdalena Jennifer / Mu Yan / Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <irishsetteroutlet.com> and <irishsetteroutlets.com>, registered with NameCheap, Inc.; <irishsetterxoutlets.com>, registered with Shinjiru Technology Sdn Bhd; <irishsetteroutlet.top>, registered with NameSilo, LLC; and <irishsetterstore.com> and <irishsettershop.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Charles A. Kuechenmeister, Panelist.
Complainant submitted a Complaint to the Forum electronically on November 26, 2019; the Forum received payment on November 26, 2019.
On November 27, 2019, Shinjiru Technology Sdn Bhd, NameSilo, LLC, confirmed by e-mail to the Forum that the <irishsetterxoutlets.com>, domain name is registered with it and that Respondent Magdalena Jennifer is the current registrant of that name. On November 27, 2019 GoDaddy.com, LLC confirmed by e-mail to the Forum that the <irishsetterstore.com>, and <irishsettershop.com> domain names are registered with it and that Respondent Carollina Rodrigues is the current registrant of those names. On November 27, 2019, NameSilo, LLC, confirmed by e-mail to the Forum that the <irishsetteroutlet.top>, domain name is registered with it and that Respondent Mu Yan is the current registrant of that name. On November 28, 2019, NameCheap, Inc. confirmed by e-mail to the Forum that the <irishsetteroutlet.com> and <irishsetteroutlets.com> domain names are registered with it and that Respondent wei zhang is the current registrant of those names. NameCheap, Inc., Shinjiru Technology Sdn Bhd, NameSilo, LLC, and GoDaddy.com, LLC have verified that Respondent is bound by the NameCheap, Inc., Shinjiru Technology Sdn Bhd, NameSilo, LLC, and GoDaddy.com, LLC registration agreements and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”). All six of the domain names at issue herein are referred to as the “Domain Names.”
On December 4, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of December 24, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@irishsetteroutlet.com, postmaster@irishsetteroutlets.com, postmaster@irishsetterxoutlets.com, postmaster@irishsetteroutlet.top, postmaster@irishsetterstore.com, and postmaster@irishsettershop.com. Also on December 4, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On December 30, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the Domain Names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: Multiple Domain Names and Respondents
Complainant alleges that all of the named Respondents are or are effectively controlled by the same person or entity, which operates and registered all of the Domain Names under aliases. Paragraph 3(c) of the Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant notes that all of the Domain Names use the IRISH SETTER mark as their dominant element. Complaint Exhibits 7A-7F are screenshots of the web sites resolving from each of the Domain Names, and Complaint Exhibit 2 is a screenshot of Complainant’s web site. All six of the Respondents’ web sites are virtually identical to one another. Under these circumstances it is utterly inconceivable that the Domain Names are not owned or controlled by the same person or entity and that the named Respondents are not, or are not in fact controlled by, a single entity. The Panel finds that all six Domain Names are registered to the same person or entity and will proceed as to all of them. Except where the context requires otherwise, references to “Respondent” in this Decision, even though in the singular, refer to all four named Respondents.
A. Complainant
Complainant owns the IRISH SETTER mark and uses it in connection with footwear, clothing, and a wide range of other products. Complainant has rights in the IRISH SETTER mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,723,938, registered October 13, 1992). Respondent’s Domain Names are confusingly similar to Complainant’s mark as they each incorporate that mark in its entirety, merely adding generic or descriptive terms such as outlet(s),” “store,” “shop,” the letter “x” in one case, and the generic top-level domains (“gTLD”) “.com” and “.top.”
Respondent has no rights or legitimate interests in the Domain Names. Respondent is not using the Domain Names in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use because the web sites resolving from them impersonate and pass off as Complainant, purportedly offering Complainant’s goods for sale, phish for sensitive, personal and private information from site visitors and defraud consumers. Complainant has not authorized, licensed, or otherwise permitted Respondent to use its mark, and Respondent is not commonly known by the Domain Names.
Respondent registered and uses the at-issue domain names in bad faith for the following reasons: (1) Respondent is willing to sell the Domain Names at inflated prices, (2) Respondent engaged in a pattern of registering multiple domain names incorporating the IRISH SETTER mark in order to prevent Complainant from reflecting its mark in a corresponding domain name, (3) by passing off as Complainant, phishing, and defrauding consumers, Respondent is disrupting the business of Complainant, (4) Respondent is attempting for commercial gain to attract Internet users to is web sites by creating confusion as to the source, sponsorship, affiliation or endorsement of its web sites, and (5) Respondent had actual knowledge of Complainant’s rights in the IRISH SETTER mark when it registered the Domain Names.
B. Respondent
Respondent did not submit a Response in this proceeding.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements to obtain an order cancelling or transferring the Domain Names:
(1) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) the respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint. Nevertheless, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”), WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), at ¶ 4.3 (“In cases involving wholly unsupported and conclusory allegations advanced by the complainant, . . . panels may find that—despite a respondent’s default—a complainant has failed to prove its case.”).
The Panel finds as follows with respect to the matters at issue in this proceeding:
The IRISH SETTER mark was registered to Complainant with the USPTO (Reg. No. 1,723,938) on October 13, 1992 (Complaint Exhibit A). Complainant’s registration of its mark with the USPTO establishes its rights in that mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”).
Respondent’s Domain Names are confusingly similar to Complainant’s IRISH SETTER mark as they each incorporate that mark verbatim, merely adding terms such as outlet(s),” “store,” “shop,” the letter “x” in one case, and the gTLDs “.com” and “.top.” These changes are not sufficient to distinguish the Domain Names from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).), see also OpenTable, Inc. v. Above.com Domain Privacy, FA 1626187 (Forum Aug. 10, 2015 (“Respondent’s <oipentable.com> domain name is confusingly similar to the OPENTABLE mark under Policy ¶ 4(a)(i) because the disputed domain merely adds the letter ‘i’ . . . ”). The WIPO Overview 3.0 at ¶ 1.7, states that the test for confusing similarity “typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name.” Notwithstanding the changes described above, Complainant’s mark is clearly recognizable within the Domain Names.
For the reasons set forth above, the Panel finds that the Domain Names are identical or confusingly similar to the IRISH SETTER mark, in which Complainant has substantial and demonstrated rights.
Rights or Legitimate Interests
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to the respondent of the dispute, the respondent has used or has made 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) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is 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.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names for a number of reasons: (i) Respondent is not using the Domain Names in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use because the web sites resolving from them impersonate and pass off as Complainant, purportedly offering Complainant’s goods for sale, phish for sensitive personal and private information from site visitors and defraud consumers, (ii) Complainant has not authorized, licensed, or otherwise permitted Respondent to use its mark, and (iii) Respondent is not commonly known by the Domain Names. These allegations are addressed as follows:
Complaint Exhibits 7A through 7F are screenshots of the web sites resolving from the Domain Names. They each contain content which is identical with one another, display Complainant’s name and Irish Setter logo, and purport to sell Complainant’s products at deeply discounted prices (Complaint Exhibits 7A-7F). Passing off as a complainant and offering to sell Complainant’s goods does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or as a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii). See Netflix, Inc. v. Irpan Panjul / 3corp.inc, FA 1741976 (Forum Aug. 22, 2017) (“The usage of Complainant’s NETFLIX mark which has a significant reputation in relation to audio visual services for unauthorised audio visual material is not fair as the site does not make it clear that there is no commercial connection with Complainant and this amounts to passing off . . . As such the Panelist finds that Respondent does not have rights or a legitimate interest in the Domain Name.”),
Further, Respondent is using the Domain Names to perpetrate consumer fraud. It represents that it sells Complainant’s Irish Setter brand products, collects payment for them from consumers but then either does not deliver the product or delivers substitute products of nominal value that the customer did not order and does not want. Complainant submitted copies of online alerts pages informing customers that Respondent’s website is a scam (Complaint Exhibits 10, 12 and 13). Complainant also submitted pages from its social media accounts containing copies of complaints from consumers who were actually defrauded by Respondent (Complaint Exhibit 15). This patently fraudulent conduct does not qualify as a bona fide offering of goods or services for the purposes of Policy ¶ 4(c)(i) or as a legitimate noncommercial or fair use for the purposes of Policy ¶ 4(c)(iii). See Hewlett-Packard Development Company v. Alex Wu Wu / Wang Zhao Li / Wu Hua, FA 1768429 (Forum March 5, 2018) (“Respondent uses the domain names to provide counterfeit goods, failing to confer rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii).”).
The web sites resolving from the Domain Names solicit the name, mailing and email addresses and telephone numbers of persons who might want to purchase goods purportedly offered by Respondent. Complainant alleges that this amounts to phishing, which is a fraudulent attempt to obtain sensitive private information such as usernames, passwords and credit card details by disguising oneself as a trustworthy entity in an electronic communication. The web sites resolving from the Domain Names impersonate and pass off as Complainant, and they ask the visitor who desires to open an account to enter a password for this purpose. None of Respondent’s web sites solicits any information apart from name, addresses and telephone number—none asks for sensitive private information such as passcodes (independent of that associated with the visitor’s “account” with Respondent) or credit card or bank account numbers. Based upon the facial content of Respondent’s web sites, the Panel would be inclined to find that phishing is not proven. In this case, however, Respondent’s sites solicit orders for goods, and in order to pay for those goods the customer must furnish credit card details. These data constitute the sensitive personal, financial information necessary to make the case for phishing. Once this information is in the hands of the Respondent, the opportunities for mischief are obvious. Phishing does not qualify as a bona fide offering of goods or services for the purposes of Policy ¶ 4(c)(i) or as a legitimate noncommercial or fair use for the purposes of Policy ¶ 4(c)(iii). See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”).
Complainant states that it has never licensed or authorized Respondent to use its mark in any way, and that Respondent is not affiliated or associated with it. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name), see also Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”).
The WHOIS information provided to the Forum by the various registrars lists the registrants of the Domain Names as follows:
irishsetteroutlet.com and irishsetteroutlets.com: wei zhang
irishsetterxoutlets.com: Magdalena Jennifer
irishsetteroutlet.top: Mu Yan
irishsetterstore.com and isrishsettershop.com: Carolina Rodrigues
None of these names bears resemblance to any of the Domain Names. Evidence could, of course, in a given case demonstrate that the respondent is commonly known by a domain name different from the name in which it registered the domain name, e.g., the case of a domain name incorporating the brand name of a specific product offered by and associated with the respondent. In the absence of any such evidence, however, UDRP panels have consistently held that WHOIS evidence of a registrant name which does not correspond with the domain name is sufficient to prove that the respondent is not commonly known by the domain name. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same), see also Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The Panel is satisfied that Respondent has not been commonly known by the Domain Names for the purposes of Policy ¶ 4(c)(ii).
Complainant has made its prima facie case. On the evidence presented, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Names.
Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:
(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 which is the owner of the trademark or service mark or to a competitor of that 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 web site 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 web site or location or of a product of service on the respondent ‘s web site or location.
The evidence of Respondent’s conduct discussed above in the rights or legitimate interests analysis also supports a finding of bad faith registration and use, based upon the foregoing grounds articulated in the Policy and upon additional grounds adopted by UDRP panels over the years. Respondent is clearly using the confusingly similar Domain Names to attract, for commercial gain, Internet users to its web sites by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its web sites. It realizes commercial gain from its fraudulent sales scheme, and potentially from unauthorized use of its customers’ credit card details, all as described above. This fits squarely within the circumstances articulated by Policy ¶ 4(b)(iii) and is clear evidence of bad faith registration and use. See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”).
Exhibits 16 and 17 are screenshots of pages from the <sedo.com> web site which offer two of the Domain Names, <irishsettershop.com> and <irishsetterstore.com>, for sale for $899.00 and $500.00 respectively. These prices are well above the costs directly related to the registration and maintenance of domain names, and a respondent’s general offer to sell a domain name has been held to be evidence of bad faith for the purposes of Policy ¶ 4(b)(i). See Airbnb, Inc. v. Super Privacy Service LTD c/o Dynadot, FA 1821386 (Forum Jan. 10, 2019) (“Complainant argues that Respondent registered and uses the <airbnbb.com> domain name in bad faith by offering it for sale. The Panel agrees and finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(i).”). The evidence in this case does not demonstrate that Respondent Rodrigues registered these Domain Names primarily for the purpose of selling them as contemplated by Policy ¶ 4(b)(i) but Policy ¶ 4(b) recognizes that mischief can assume many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. See Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005), Bloomberg Finance L.P. v. Domain Admin - This Domain is For Sale on GoDaddy.com / Trnames Premium Name Services, FA 1714157 (Forum Mar. 8, 2017) (determining that Policy ¶ 4(b) provisions are merely illustrative of bad faith, and that the respondent’s bad faith may be demonstrated by other allegations of bad faith under the totality of the circumstances). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and where, as here, the Respondent makes a general offer to sell Domain Names which are confusingly similar to and specifically target a protected mark for a price in excess of the direct costs associated with registering and maintaining the names, that is evidence of bad faith, regardless of whether registering the names to sell them was the primary motivation of the Respondent.
Also, Respondent’s registration of the Domain Names prevents Complainant from reflecting its IRISH SETTER mark in those domain names, an indication of bad faith addressed in Policy ¶ 4(b)(ii). Respondent registered the six Domain Names involved in this proceeding, and that is more than sufficient to establish a pattern of such conduct for the purposes of Policy ¶ 4(b)(ii). See Rolls-Royce PLC v. Ragnar Kallaste, Case No. D2014-2218 (WIPO March 3,2015) (finding that the respondent’s registration of the two domain names involved in that case, plus a history of registering at least three other domain names which also incorporated the names of automobile manufacturers, constituted a pattern for the purposes of Policy ¶ 4(b)(ii)). The WIPO Overview 3.0 notes that establishing a pattern of bad faith conduct requires more than one, but as few as two instances of abusive domain name registration. A pattern of abuse has been found where the respondent registers, simultaneously or otherwise, multiple trademark-abusive domain names corresponding to the distinct marks of individual brand owners. WIPO Overview 3.0 at ¶ 3.1.2. Policy ¶ 4(b)(ii) contemplates that a respondent registered the domain name at issue in order to prevent the mark owner from reflecting its mark in a corresponding domain name. As with the offer to sell discussed above, the evidence is not clear whether the Respondent here registered the Domain Names to accomplish that specific objective, but again, given the nonexclusive nature of Policy ¶ 4(b), Respondent’s motivation is less significant than the effect of its actions. Its having registered the Domain Names, which incorporate Complainant’s mark verbatim, prevents Complainant from registering and using these names itself. Respondent clearly knew or should have known that its registration and continued use of the Domain Names would have this effect and that it was wrongful as against Complainant. This is manifest evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). Taken together with the offer of Respondent Rodrigues to sell two of the Domain Names at an inflated price, this action highlights the bad faith inherent in Respondent’s conduct.
Next, by registering and using a confusingly similar domain name to attract Internet traffic to Respondent’s own web site, where it purports to offer Complainant’s goods for sale and defrauds consumers of their money, Respondent is disrupting the business of Complainant. Complainant argues that this fits within the circumstances articulated by Policy ¶ 4(b)(iii). The Panel questions this for two reasons. Policy ¶ 4(b)(iii) reads as follows: “you [the respondent] have registered the domain name primarily for the purposes of disrupting the business of a competitor” (emphasis supplied). The evidence is clear that Respondent purports to sell the products of Complainant and on this basis Respondent and Complainant might logically be characterized as competitors. On the other hand, the evidence also establishes that Respondent is not really in business to sell footwear and other products but instead is in business to defraud unsuspecting consumers and phish for their credit card details. The concept of “competition” in the context of Policy ¶ 4(b)(iii) has been subject to various interpretations by UDRP panels. Some have interpreted that term broadly to mean someone who “acts in opposition to the complainant.” See Mission KwaSizabantu v. Benjamin Rost, Case No. 2000-0279 (WIPO June 7, 2000). Others have limited the term to parties who vie commercially with each other in the same industry, offering the same or similar goods or services. See Tribeca Film Center Inc. v. Lorenzo Brusasco-Mackenzie, Case No. 2000-1772 (WIPO April 10, 2000). This Panel favors the second view, concurring with the panel in Britannia Building Society v. Britannia Fraud Prevention, Case No. 2001-0505 (WIPO July 8, 2001) that to accept the interpretation first above described would “render so many parties ‘competitors’ as to dilute the Policy’s bad faith requirement beyond recognition.” Clearly, Respondent here is not vying with Complainant for customers or business in the outdoor footwear and clothing industry. In the absence of actual commercial competition between Complainant and Respondent, Respondent here cannot be considered a competitor for the purposes of Policy ¶ 4(b)(iii).
Even if Complainant and Respondent were deemed competitors for the purposes of Policy ¶ 4(b)(iii), it does not appear that Respondent registered the Domain Names primarily for the purpose of disrupting Complainant’s business. On the contrary, the evidence is fairly clear that Respondent’s primary purpose in registering the Domain Names was not to disrupt the business of a commercial adversary but instead to attract internet traffic to its web sites by creating confusion as to the source, sponsorship, affiliation or endorsement of those sites, as discussed above in the context of Policy ¶ 4(b)(iv). Respondent’s conduct does not fall within the circumstances stated in Policy ¶ 4(b)(iii).
That said, using a confusingly similar domain name to attract Internet traffic to web sites designed to perpetrate fraud is still bad faith based upon its impact for a complainant. There is no question that Respondent’s use of the Domain Names seriously disrupts Complainant’s business. From early October 2019 to November 22, 2019, Complainant received approximately 1155 complaints from customers about Respondent’s site (Complaint Exhibit 14). Here again, Respondent’s primary intent in registering and continuing to use the Domain Names is less important than the effect of its conduct. Respondent knew or should have known the impact its conduct would have upon Complainant’s business. Respondent went forward with its plans in spite of that and this demonstrates bad faith independently of Policy ¶ 4(b)(iii).
Further, given the nonexclusive nature of Policy ¶ 4(b), Respondent’s use of the Domain Names to conduct a phishing scam as described above is, in and of itself, evidence of bad faith registration and use. See McKinsey & Company, Inc., and McKinsey Holdings, Inc. v. Privacy Protection, report abuse to / Registrar: DELTA-X Ltd., FA1409001580883 (Forum Oct. 25, 2014) (holding that the respondent had engaged in phishing, which is further evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii), when the respondent used the disputed domain name in an attempt to obtain Internet users’ personal information including their driver’s license number and name).
Moreover, Respondent’s fraudulent “sales” scheme is unlawful and subject to criminal prosecution in many jurisdictions. Given the non-exclusive nature of Policy ¶ 4(b), such unlawful, illegal conduct has also been held, in and of itself, to evidence bad faith registration and use. See Autodesk Inc. v. Telecom Tech Corp, WIPO Case No. D2011-1670 (January 30, 2011) (“A respondent’s use of a disputed domain name to pursue an illegal activity automatically qualifies that domain as having been registered and used in bad faith.”), see also Cameron Thomaz P/K/A Wiz Khalifa and Wize Khalifa Trademark, LLC v. Kyle Lynch, WIPO Case No. 2014-1525 (November 4, 2014) (finding bad faith registration and use where respondent’s webpages offered illegal downloads of complainant’s music.).
Finally, it is evident that Respondent had actual knowledge of Complainant and its mark when it registered the Domain Names.[i] Complainant’s IRISH SETTER mark has been used for more than fifty years and is known throughout the world. Respondent copied that mark verbatim into the Domain Names. It uses the mark as the dominant element of all six Domain Names and passes off as Complainant. Again, given the non-exclusive nature of Policy ¶ 4(b), registering a confusingly similar domain name with actual knowledge of a complainant’s rights in its mark has often been held to be evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Names in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <irishsetteroutlet.com>, <irishsetteroutlets.com>, <irishsetterxoutlets.com>, <irishsetteroutlet.top>, <irishsetterstore.com> and <irishsettershop.com> Domain Names be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
January 3, 2020
[i] According to the WHOIS reports submitted as Complaint Exhibit 5, the Domain Names were registered on the following dates: <irishsetteroutlet.com> and <irishsetteroutlets.com>: October 21, 2019, <irishsetterxoutlets.com>: October 28, 2019, <irishsetteroutlet.top>: October 9, 2019, <irishsetterstore.com>: October 8, 2019, <irishsettershop.com>: November 4, 2019.
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