1661, Inc., dba GOAT v. Douglas Demas
Claim Number: FA2001001878445
Complainant is 1661, Inc., dba GOAT (“Complainant”), represented by Michael Adams of Rutan & Tucker LLP, United States. Respondent is Douglas Demas (“Respondent”), United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <goatswear.com>, registered with Godaddy.Com, Llc; 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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 10, 2020; the Forum received payment on January 10, 2020.
On January 13, 2020, Godaddy.Com, Llc; GoDaddy.com, LLC confirmed by e-mail to the Forum that the <goatswear.com> domain name is registered with Godaddy.Com, Llc; GoDaddy.com, LLC and that Respondent is the current
registrant of the name. Godaddy.Com, Llc; GoDaddy.com, LLC has verified that Respondent is bound by the Godaddy.Com, Llc; GoDaddy.com, LLC registration agreement 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”).
On January 20, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 10, 2020 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@goatswear.com. Also on January 20, 2020, 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 February 13, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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 name be transferred from Respondent to Complainant.
A. Complainant
i) Complainant, 1661, Inc., operates an online sneaker marketplace. Complainant has rights in the GOAT mark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,908,318, registered Mar. 1, 2016). The disputed domain name is confusingly similar to Complainant’s mark because it incorporates Complainant’s GOAT mark in its entirety, simply adding the non-distinctive term “wear,” the letter “s” and the “.com” generic top-level domain (“gTLD”) to create the disputed domain name.
ii) Respondent does not have rights or legitimate interests in the disputed domain name. Respondent is not licensed or authorized to use Complainant’s GOAT mark and is not commonly known by the disputed domain name. Additionally, Respondent doesn’t use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to pass off as Complainant in order to sell competing goods.
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent disrupts Complainant’s business and attempts to attract Internet users to its competing website for commercial gain. Additionally, Respondent had actual knowledge of Complainant’s rights in the GOAT mark prior to the registration of the disputed domain name.
B. Respondent
Respondent did not submit a response.
1. The disputed domain name was registered on November 4, 2019.
2. Complainant has established rights in the GOAT mark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,908,318, registered Mar. 1, 2016).
3. The disputed domain name's resolving webpage shows that it tries to pass itself off as that of Complainant, prominently featuring the GOAT mark, using the same color scheme (a white background with black text), using similar photographs of sneakers, and purporting to sell the same sneaker types/brands as Complainant (including Adidas, Nike, and more).
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 that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules 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; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also 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”).
Complainant claims rights in the GOAT mark based upon the registration with the USPTO. Registration of a mark with the USPTO is generally sufficient to establish rights in the mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Complainant provides evidence of registration of the GOAT mark with the USPTO (e.g., Reg. No. 4,908,318, registered Mar. 1, 2016). Therefore, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that the disputed domain name is confusingly similar to Complainant’s mark because it incorporates Complainant’s GOAT mark in its entirety, simply adding a non-distinctive, an extra letter and a gTLD to create the disputed domain name. Additions of generic/descriptive terms, letters and a gTLD may not remove confusing similarity between a domain name and a mark per 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 T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)). Complainant contends that the disputed domain name appropriates Complainant’s entire mark and only adds the non-distinctive term “wear,” the letter “s” and the “.com” gTLD. Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant's GOAT mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also 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”).
Complainant argues that Respondent does not have rights or legitimate interests in the disputed domain name because Respondent is not licensed or authorized to use Complainant’s GOAT mark and is not commonly known by the disputed domain name. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”). Additionally, lack of authorization to use a mark constitutes further showing that a respondent lacks rights in a mark. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record lists “Douglas Demas” as the registrant and no information suggests that Respondent is commonly known by the disputed domain name nor has Complainant authorized Respondent to use the GOAT mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent doesn’t use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use and instead uses the disputed domain name to pass off as Complainant in order to sell competing goods. Use of a confusingly similar domain name to pass off as a complainant for the sale of competing goods 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 Kmart of Mich., Inc. v. Cone, FA 655014 (Forum Apr. 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website). Complainant provides a screenshot of the resolving webpage and notes that Respondent’s website tries to pass itself off as that of Complainant, prominently featuring the GOAT mark, using the same color scheme (a white background with black text), using similar photographs of sneakers, and purporting to sell the same sneaker types/brands as Complainant (including Adidas, Nike, and more). Therefore, the Panel agrees with Complainant and finds that Respondent is not using the disputed domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant argues that Respondent registered and uses the disputed domain name in bad faith because Respondent is disrupting Complainant’s business and attempting to attract Internet users to its competing website for commercial gain. Use of a disputed domain name to pass off as a complainant and offer competing goods or services can be evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See ZIH Corp. v. ou yang lin q, FA1761403 (Forum December 29, 2017) (Finding bad faith where Respondent used the infringing domain name to disrupt Complainant’s business by diverting Internet users from Complainant’s website to Respondent’s website where it offered competing printer products); see also OneWest Bank N.A. v. Matthew Foglia, FA1503001611449 (Forum Apr. 26, 2015) (holding that the respondent’s use of the disputed domain name to direct Internet users to a website which competed with the complainant was evidence of bad faith pursuant to Policy ¶ 4(b)(iv)). As previously mentioned, Complainant provides screenshots of Respondent’s website and notes that Respondent uses identical versions of Complainant’s photographs, name, and logo in order to commercially gain via selling competing products. Therefore, the Panel finds bad faith registration and use under Policy ¶¶ 4(b)(iii) and/or (iv).
Additionally, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the GOAT mark as shown through Respondent’s attempt to pass off as Complainant. Actual knowledge of a complainant’s rights in a mark can be shown through a respondent’s use of that mark and a complainant’s information in connection with the domain name. See Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”). Complainant argues that Respondent’s mimicking behavior is evidence that Respondent had actual knowledge of Complainant’s rights in the mark. Complainant provides screenshots from both its own webpage and Respondent’s webpage to support this allegation. The Panel infers, due to the manner of use of the disputed domain name that Respondent had actual knowledge of Complainant’s rights in the mark which constitutes bad faith registration and use under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <goatswear.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: February 17, 2020
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