Shift Technologies, Inc. v. Redacted for Privacy
Claim Number: FA2007001903441
Complainant is Shift Technologies, Inc. (“Complainant”), represented by Atul Singh of Ellenoff, Grossman, and Schole LLP, United States. Respondent is Redacted for Privacy (“Respondent”) , (Place) Redacted for Privacy.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <shiftautobrokers.com>, registered with NameCheap, Inc..
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 8, 2020; the Forum received payment on July 8, 2020.
On July 9, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <shiftautobrokers.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 July 14, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 3, 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@shiftautobrokers.com. Also on July 14, 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 August 5, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions
Complainant operates an online automobile marketplace. Complainant has common law rights in the SHIFT mark. Respondent’s <shiftautobrokers.com> domain name is identical or confusingly similar to Complainant’s SHIFT mark because it incorporates the mark in its entirety and only adds the generic/descriptive words “auto brokers” and a “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <shiftautobrokers.com> domain name, as Respondent is not commonly known by this domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor does it engage in any legitimate noncommercial or fair uses with the mark. Instead, Respondent initially attempted to attract Internet users for commercial gain by passing off as Complainant and offering similar content and services on the disputed domain name’s resolving website. Respondent currently possesses no rights or legitimate interests in the disputed domain name in using the disputed domain name to redirect to Complainant’s website or an inactive website.
Respondent registered and uses the <shiftautobrokers.com> domain name in bad faith. Respondent initially used the disputed domain name to attract Internet users for commercial gain by passing off as Complainant and offered content or services similar to those offered by Complainant. Respondent also registered the disputed domain name with actual knowledge of Complainant’s rights, and use of, the SHIFT mark. Finally, Respondent’s current use of the disputed domain name to redirect to Complainant’s website demonstrates bad faith usage.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that operates an online automobile marketplace.
2. Complainant has established its common law trademark rights in the SHIFT mark from at least March 14, 2014 and thus prior to the date when the disputed domain name was registered , namely on December 17, 2019.
3. Respondent registered the <shiftautobrokers.com> domain name on December 17, 2019.
4. Respondent initially attempted to attract Internet users for commercial gain
by passing itself off as Complainant and offering similar content and
services on the resolving website of the disputed domain name but more
recently has used the domain name to redirect internet users to
Complainant’s website or an inactive website.
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”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has common law rights in the SHIFT mark. Where a complainant lacks a registered trademark, common law rights in a mark may satisfy Policy ¶ 4(a)(i). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark). Complainant argues that it its common law rights suffice in lieu of a trademark.
The next question that arises is whether Complainant has established by evidence that it has the common law rights for which it contends. Complainant argues that the SHIFT mark has secondary meaning, thereby establishing its common law rights in the mark. Secondary meaning may be established under Policy ¶ 4(a)(i) through factors such as longstanding use of the mark, holding an identical domain name, advertising, and widespread recognition. See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA 1625750 (Forum July 17, 2015) (holding, “Complainant has provided evidence of secondary meaning by providing evidence of length of use in the mark; evidence of holding an identical domain name; media recognition; and promotional material/advertising (including letterhead and business cards). Complainant has used its mark in the oil and gas industry since 1997. Complainant has used its mark in the real estate industry since 2004. Complainant’s rights were previously recognized in Klabzuba Oil & Gas, Inc. v. ross micheal, Claim Number: FA1505001619813.”). Complainant provides a copy of its pending USPTO application to argue its use of the mark dates back to March 14, 2014. See Compl. Ex. B. Complainant further provides Yelp reviews dating back to 2014 as well as various articles written about Complainant’s business and its SHIFT mark. See Compl. Exs. C and D. Finally, Complainant’s provides screenshots of its own website <shift.com>. See Compl. Ex. G. Complainant argues this evidence demonstrates its widespread media recognition of its mark as well as continuous use of the SHIFT mark. As the Panel agrees, it finds Complainant has established common law rights in the SHIFT mark under Policy ¶ 4(a)(i) and that they existed from at least March 14, 2014 and thus prior to the date when the disputed domain name was registered , namely on December 17, 2019.
The next question that arises is whether the disputed domain name is identical or confusiongly similar to Complainant’s SHIFT mark. Complainant argues that Respondent’s <shiftautobrokers.com> domain name is identical or confusingly similar to Complainant’s SHIFT mark, as it incorporates the mark in its entirety and merely adds the words “auto brokers” and the “.com” gTLD to the end of the mark. The addition of generic or descriptive terms and a gTLD is generally insufficient to differentiate a domain name from a mark under Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”); see also Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).”). Complainant argues that the disputed domain name incorporates Complainant’s SHIFT mark entirely, and only adds the generic/descriptive term “auto brokers” and the “.com” gTLD to the end of the mark. Therefore, the Panel finds Respondent’s domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s SHIFT trademark and to use it in its domain name, adding the generic/descriptive term “auto brokers” which does not negate the confusing similarity between the domain name and the trademark;
(b) Respondent registered the <shiftautobrokers.com> domain name on December 17, 2019;
(c) Respondent initially attempted to attract Internet users for commercial gain by passing itself off as Complainant and offering similar content and services on the disputed domain name’s resolving website but more recently has used the domain name to redirect internet users to Complainant’s website or an inactive website;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant submits that Respondent has no rights or legitimate interests in the <shiftautobrokers.com> domain name, as Respondent is not commonly known by the disputed domain name. Under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS information, along with other evidence can support a finding that the respondent is not commonly known by a disputed domain name. See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response); see also Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS of record identifies the registrant of the disputed domain name as (Redacted for Privacy). Furthermore, Complainant argues that Respondent’s own Terms of Use identify it as “SE Motors Group” and “Group 1 Automotive”, as Respondent directly copied from another auto retailer. See Compl. Ex. I. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4 (c)(ii);
(f) Complainant argues that Respondent has not used the <shiftautobrokers.com> domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent used the disputed domain name’s resolving website to pass itself off as Complainant, and now uses the disputed domain name to redirect to Complainant’s <shift.com> website. Passing off as a complainant by using its mark and featuring similar services and content on the disputed domain name’s resolving website is not a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4 (c)(i) or (iii). See Bittrex, Inc. v. Caroline Alves Maia, FA 1796113 (Forum Aug. 6, 2018) (finding 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 “virtually identical, with the same color scheme, the same layout and the same substantive content.”). Complainant provides screenshots of Respondent’s original resolving website, which appears to offer a similar website layout as Complainant’s official website, services and business models identical to Complainant’s, other content copied from other similar competitor and Complainant’s official websites, and a link to Complainant’s advertising video to promote Respondent’s own goods and services. See Compl. Exs. F through J. Complainant argues this demonstrates Respondent was attempting to pass itself off as Complainant. As the Panel agrees, it finds Respondent was not using the disputed domain name for a bona fide offering of goods or services, or any legitimate noncommercial or fair use under Policy ¶¶ 4 (c)(i) and (iii);
(g) Complainant argues that Respondent does not possess any legitimate rights or interests in the <shiftautobrokers.com> domain name, because it currently uses the disputed domain name to redirect to Complainant’s official website or a blank page. Using a disputed domain name to resolve to Complainant’s own website or an inactive website is insufficient to establish legitimate rights or interests under Policy ¶ 4(a)(ii). See Direct Line Ins. plc v. Low-cost-domain, FA 1337658 (Forum Sept. 8, 2010) (“The Panel finds that using Complainant’s mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant’s actual site, is not consistent with the requirements of Policy ¶ 4(c)(i) or ¶ 4(c)(iii) . . .”); see also Nutri/System IPHC, Inc. v. Usama Ayub, FA1725806 (Forum June 5, 2017) (holding that “Respondent does not use the <nutrisystemturbo.us> domain for a bona fide offering of goods or services because the domain name resolves to a website that currently is designated as ‘under construction.’”). Complainant provides screenshots of the disputed domain name redirecting to Complainant’s website or a blank page, which it claims occurred after Complainant sent a cease and desist letter to Respondent. See Compl. Exs. K through N. As the Panel agrees, it finds Respondent possesses no legitimate rights or interests in the disputed domain name under Policy ¶ 4 (a)(ii).
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 has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent’s registration and use of the <shiftautobrokers.com> domain name is in bad faith because Respondent is attracting internet users for commercial gain by passing itself off as Complainant. Using an identical or confusingly similar domain name, along with similar or identical content on the disputed domain’s resolving website, to confuse internet users into believing a disputed domain name is affiliated with a complainant in order to sell competing products or services may be evidence of bad faith under Policy ¶¶ 4(b)(iii) and (iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also American Cheerleader Media, LLC. v. ilir shoshi / cheer, FA 1592319 (Forum, January 20, 2015) (“The Panel here finds that Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) as … Respondent utilizes a logo and stylized font identical to Complainant’s own, as well as Complainant’s copyrighted images and text in an attempt to pass itself off as Complainant.”). The Panel recalls Complainant’s screenshots of the disputed domain name’s former resolving website, which Complainant argues contains content and services similar or identical to that on Complainant’s own website. See Compl. Exs. F through J. As the Panel agrees, it finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Secondly, Complainant further argues that Respondent registered the <shiftautobrokers.com> domain name in bad faith because Respondent had actual knowledge of Complainant’s rights in the SHIFT mark. Using a well-known mark and similar content, as well as a complainant’s own content, such as a video, on a disputed domain name’s resolving website may establish actual notice and bad faith registration under Policy ¶ 4 (a)(iii). See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to and in competition with Complainant.”); see also Twentieth Century Fox Film Corporation and Fox International Channels (US), Inc. v. Daniel Pizlo / HS, FA1412001596020 (Forum Jan. 27, 2015) (finding that the respondent must have had actual knowledge of the complainant and its rights in the FOX LIFE mark, where the respondent was using the disputed domain name to feature one of the complainant’s videos on its website, indicating that the respondent had acted in bad faith under Policy ¶ 4(a)(iii)). The Panel recalls Complainant’s numerous exhibits which it argues demonstrate the SHIFT mark’s notoriety, as well as the screenshots of Respondent’s past resolving website, offering similar content and services, and Complainant’s own advertising video. See Exs. F through J. As the Panel finds this convincing, it holds that Respondent registered the disputed domain with actual notice, and therefore in bad faith, under Policy ¶ 4 (a)(iii).
Thirdly, Complainant argues Respondent registered and uses the <shiftautobrokers.com> in bad faith by currently redirecting the disputed domain name to Complainant’s own website. Previous Panels have found that redirecting a disputed domain name to Complainant’s website is a bad faith use under Policy ¶ 4(a)(iii). See Verizon Trademark Servs. LLC v. Boyiko, FA 1382148 (Forum May 12, 2011) (“The Panel finds that Respondent’s registration and use of the confusingly similar disputed domain name, even where it resolves to Complainant’s own site, is still registration and use in bad faith pursuant to Policy ¶ 4(a)(iii).”). The Panel recalls Complainant’s screenshots that purportedly show the disputed domain name currently resolving to Complainant’s website. See Compl. Ex. K. Therefore, the Panel finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant has thus made out the third of the three elements that it must establish.
REDACTION OF RESPONDENT’S IDENTITY
Before announcing its decision, the Panel wishes to raise another matter. In this proceeding, Respondent contended that it has been the victim of identity theft. In an email sent by the Respondent to the FORUM and dated August 6, 2020 Respondent said “I do not own any domains whatsoever, my debit card was used fraudulently and I have changed all my bank details, I have no idea what this is all about and this is not the only complain I have received under my name, but this is a case of stolen identity as millions of other from what IU was told by the ( Redacted for Privacy) Police where I have filled a complaint for more than a year now.”
This evidence has made it clear in the opinion of the Panel that a fraud was perpetrated, that Respondent was the victim to the extent that its debit card was used fraudulently and that further frauds might be committed by the same means in the future by whoever was responsible. Thus, although the named Respondent is the domain name holder and the proper Respondent in this proceeding, the real name and contact details of the person who wrongly effected the registration of the domain name is unknown.
This gives rise to the question whether there should be a redaction from the decision to protect the privacy of the named Respondent. Neither party has requested itself any redaction. However, the Panel has formed the view that it may well be unfair to the named Respondent to continue to have its name associated with this proceeding, especially as it is the Respondent and where the impression may be given to internet users that it has some responsibility for some of the events described in the decision, whereas in fact it does not, being an innocent party.
The Panel has therefore decided to consider on its own initiative whether it should exercise the power to determine whether there should be a redaction from the decision to protect Respondent’s privacy. In considering the issue, the Panel will take the following rules and decisions into account.
Under Policy ¶ 4(j) the Panel has power to determine that portions of its decision may be redacted. The practical result of the exercise of this power is that the provider, in this case the Forum, will not publish on the internet the full decision, but will redact the portion determined by the Panel to be redacted. It is clear that the language of the Policy in that regard is wide enough to redact from a decision the case caption and any other reference to the named Respondent.
According to Policy ¶ 4(j), “[a]ll decisions under this Policy will be published in full over the Internet, except when an Administrative Panel determines in an exceptional case to redact portions of its decision.” In Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellzfargo.com>, FA 362108 (Forum Dec. 30, 2004) and Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellsfargossl>, FA 453727 (Forum May 19, 2005), the panels omitted the respondents’ personal information from the decisions, pursuant to Policy ¶ 4(j), to protect the respondents who claimed to be victims of identity theft from becoming aligned with acts the actual registrants appeared to have sought to impute to the respondents.
The Panel notes here that the power given to it by Policy ¶ 4(j) is a discretionary one that must be exercised judicially. In that regard the Panel would have to be satisfied that the case was an “exceptional” one and that it was appropriate to be made in all the circumstances.
ICANN Rule 16(b) also makes practical provision for the publication of the full decision except if the Panel determines otherwise under Policy ¶ 4(j).
It is true that Forum Supplemental Rule 15(b) provides “All requests pursuant to Policy paragraph 4(j) and Rule 16(b) to have a portion of the decision redacted, must be made in the Complaint, the Response, or an Additional Submission that is submitted before the Panel’s decision is published.” But in those cases where there is no request, such as the present case, the Panel has a discretion although, as has just been noted, the discretion must be exercised judicially.
The Panel notes that previous decisions have held that the registrar-confirmed registrant of a disputed domain name (per the WHOIS at commencement of the proceeding) is the proper respondent, notwithstanding the possibility that said respondent’s identity was stolen. See, e.g., Banco Bradesco S/A v. Gisele Moura Leite, D2014-0414 (WIPO Apr. 30, 2014). Despite this, the power to redact a portion of a decision is expressly conferred by Policy ¶ 4(j) and may be implemented by ICANN Rule 16 (b).Thus, in the present case the named registrant is the proper Respondent
The role of the Panel is then to determine whether the circumstances of the present case including the theft of Respondent’s identity and the fraud warrant the redaction of Respondent’s name and any other identifying information from the Panel’s decision.
The Panel has considered this matter carefully. It is clear that whoever was responsible for registering the domain name in the name of Respondent has stolen its identity and been responsible for the fraud. Thus, in the opinion of the Panel, the identity of the Respondent should be protected by redaction.
The Panel has therefore decided that in all the circumstances this is an exceptional case and that it is appropriate to redact Respondent’s name and information from the Panel’s decision. The Panel therefore determines for the purposes of Policy ¶ 4(j) and ICANN Rule 16(b) that this will be done.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <shiftautobrokers.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: August 6, 2020
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