CoolGear International LLC v. yu Li
Claim Number: FA2012001925001
Complainant is CoolGear International LLC (“Complainant”), represented by John Berryhill, Pennsylvania, USA. Respondent is yu Li (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <coolgearbru.com> (“Domain Name”), registered with Fujian Domains, 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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 14, 2020; the Forum received payment on December 14, 2020.
On January 19, 2021, Fujian Domains, Inc. confirmed by e-mail to the Forum that the <coolgearbru.com> domain name is registered with Fujian Domains, Inc. and that Respondent is the current registrant of the name. Fujian Domains, Inc. has verified that Respondent is bound by the Fujian Domains, 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 January 20, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 9, 2021 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@coolgearbru.com. Also on January 20, 2021, 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 11, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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, CoolGear International LLC, is a manufacturer of insulated containers and personal hydration products. Complainant has rights in the COOL GEAR BRU mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,046,490, registered Sep. 20, 2016). Respondent’s <coolgearbru.com> domain name is identical to Complainant’s COOL GEAR BRU mark because it entirely incorporates the mark and simply adds a generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <coolgearbru.com> domain name. Respondent is not licensed or authorized to use Complainant’s COOL GEAR BRU mark. Additionally, Respondent does not use the Domain Name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the Domain Name to display pornography and gambling advertising.
Respondent registered and uses the <coolgearbru.com> domain name in bad faith. Respondent uses the Domain Name to divert Internet traffic away from Complainant to display pornographic content and advertisements. Additionally, Respondent registered the Domain Name after Complainant inadvertently allowed its registration to lapse.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the COOL GEAR BRU mark. The Domain Name is identical to Complainant’s COOL GEAR BRU mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the Domain Name and that Respondent registered and has used the Domain Name in bad faith.
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 has rights in the COOL GEAR BRU mark under Policy ¶ 4(a)(i) through its registration of the mark with the USPTO (e.g., Reg. No. 5,046,490, registered Sep. 20, 2016). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
The Panel finds that the <coolgearbru.com> Domain Name is identical to the COOL GEAR BRU mark as it fully incorporates the COOL GEAR BRU mark, merely removing the spaces between the words and adding a gTLD (being the “.com” gTLD), both of which are required by the domain name system. The addition of a gTLD to a wholly incorporated trade mark does not distinguish a disputed domain name from a mark. See Roche Therapeutics Inc. v. Williams Shorell, FA 1684961 (Forum Aug. 30, 2016) (“Complainant asserts Respondent’s <boniva.top> domain name is identical to the BONIVA mark. The addition of a generic top level domain to a mark does not differentiate the domain from said mark under Policy ¶ 4(a)(i).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the COOL GEAR BRU mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “yu Li” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).
The Domain Name is resolves to a website which contains adult content and advertises pornography and gambling. In the absence of an explanation for why the Domain Name is used in this manner, the use of the Domain Name to display adult oriented content and unrelated advertising is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii). See Altria Group, Inc. and Altria Group Distribution Company v. xiazihong, FA1732665 (Forum July 7, 2017) (holding that “[u]se of a domain name to display adult-oriented images is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy.”); see also Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent’s use of the disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services); see also Snap Inc. v. Michael Smith, FA 1894441 (Forum May 27, 2020) (finding respondent’s use of <baesnaps.com> to resolve to an adult oriented website cannot constitute a bona fide use of the disputed domain name).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds on the balance of probabilities that, at the date of registration of the Domain Name, October 1, 2020, Respondent had actual knowledge of Complainant’s COOL GEAR BRU since Respondent registered the Domain Name immediately after Complainant inadvertently allowed its registration to lapse. In the absence of rights or legitimate interests of its own registration with knowledge of Complainant’s mark demonstrates registration in bad faith under Policy ¶ 4(a)(iii). Given that the COOL GEAR BRU mark is a coined mark and in the absence of an alternative explanation, Respondent’s conduct strongly suggests registration in bad faith per Policy ¶ 4(a)(iii). See RH-Interactive Jobfinance v. Mooburi Servs., FA 137041 (Forum Jan. 16, 2003) (finding that the respondent’s registration of the <jobfinance.com> domain name “immediately after Complainant failed to timely renew the domain name registration” was evidence of bad faith).
The Panel finds that Respondent registered and uses the Domain Name in bad faith to create confusion with Complainant’s COOL GEAR BRU Mark for commercial gain by using the confusingly similar Domain Name to divert internet traffic away from Complainant to display pornographic content and advertisements. Use of a disputed domain name to attract users to a website hosting adult oriented content may be evidence of bad faith per Policy ¶ 4(a)(iii). See H-D U.S.A., LLC v. Nobuyoshi Tanaka / Personal, FA1312001534740 (Forum Jan. 31, 2014) (“Therefore, the Panel concludes that Respondent is acting in bad faith because Respondent is using the <harley-davidsonsales.com> domain name to tarnish Complainant’s HARLEY-DAVIDSON mark, as the Panel also finds that the content displayed on the resolving website constitutes adult-oriented content.”); see also Andrey Ternovskiy dba Chatroulette v. Abdelbasset Selmi, FA 1638963 (Forum Oct. 28, 2015) (finding the respondent’s use of the at-issue domain name to resolve to pornographic content indicated the respondent registered and used the <chatroulette.us> domain name in bad faith per Policy ¶ 4(b)(iv)).
The Panel finds Complainant has satisfied 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 <coolgearbru.com> domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: February 12, 2021
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