Design Ideas, Ltd. v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2103001936979
Complainant is Design Ideas, Ltd. (“Complainant”), represented by Garfield Goodrum of GARFIELD GOODRUM, PLLC, New Hampshire, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <shopdesignideas.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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 17, 2021; the Forum received payment on March 17, 2021.
On March 18, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <shopdesignideas.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the 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 March 23, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 12, 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@shopdesignideas.com. Also on March 23, 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 April 19, 202, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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
The Complainant offers a full range of functional, fashion-forward, and moderately priced home and office accessories. Complainant has rights in the DESIGN IDEAS trademark through its registration of the trademark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,212,237, registered Dec. 22, 1998). Respondent’s <shopdesignideas.com> domain name is confusingly similar to Complainant’s DESIGN IDEAS trademark. Respondent incorporates the trademark in its entirety and adds the generic term “shop” along with the “.com” generic-top level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <shopdesignideas.com> domain name as Respondent is not commonly known the disputed domain name nor did Complainant authorize Respondent to use the DESIGN IDEAS trademarks in any way. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s domain name resolves to a parked webpage that attempts to download software onto internet users’ devices.
Respondent registered and used the <shopdesignideas.com> domain name in bad faith as Respondent’s domain name resolves to a parked webpage. Respondent also had actual knowledge of Complainant’s DESIGN IDEAS trademark due to the long standing use of the trademark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registrations:
No. 2,212,237 DESIGN IDEAS (word), registered December 22, 1998 for goods and services in classes 4, 6, 9, 11, 16, 18, 20, 21, 22, 34 and 35;
No. 2,503,603 DESIGN IDEAS (word), registered November 6, 2001 for goods and services in classes 6, 16, 21 and 35;
No. 5,900,398 DESIGN IDEAS (logo), registered November 5, 2019 for goods in class 18;
No. 2,902,718 DESIGN IDEAS (logo), registered November 16, 2004 for services in class 35;
No. 3,144,261 DESIGN IDEAS (word), registered September 19, 2006 for goods and services in classes 6, 16, 20, 21, 24 and 35;
No. 3,546,901 DESIGN IDEAS (logo), registered December 16, 2008 for goods in class 11;
No. 3,591,306 DESIGN IDEAS (logo), registered March 17, 2009 for goods in class 16;
No. 3,492,762 DESIGN IDEAS (logo), registered August 26, 2008 for goods in class 18;
No. 3,598,562 DESIGN IDEAS (logo), registered March 31, 2009 for goods in class 20; and
No. 3,594,968 DESIGN IDEAS (logo), registered March 24, 2009 for goods in class 24.
Further, the complainant generally refers to a number of trademark registrations for DESIGN IDEAS (logo) in countries outside the USA.
The disputed domain name <shopdesignideas.com> was registered on September 21, 2020.
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 Complainant claims to have rights in the DESIGN IDEAS trademark due to its registration of the mark with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in a mark per Policy ¶ 4(a)(i). 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.”). Here, Complainant has provided the Panel with a copy of its USPTO registration for the mark (e.g. Reg. No. 2,212,237, registered Dec. 22, 1998). See Compl. Ex. 8. Therefore, the Panel may find that Complainant has rights in the mark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <shopdesignideas.com> domain name is confusingly similar to Complainant’s DESIGN IDEAS trademark. Registration of a domain name that contains a trademark in its entirety and adds a generic term and a gTLD does not distinguish the domain name from the trademark 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)). Here, Complainant argues that Respondent incorporates the trademark in its entirety and adds the generic term “shop” along with the “.com” gTLD. The Panel notes that the added initial word “shop” is not distinctive, but rather can be seen as a message to the public to shop/buy goods trademarked as DESIGN IDEAS. Therefore, the Panel indeed and clearly finds that Respondent’s domain name is confusingly similar to Complainant’s trademark per Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See 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.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
The Complainant argues that Respondent lacks rights or legitimate interest in the <shopdesignideas.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been given license or consent to use the DESIGN IDEAS trademark or register domain names using Complainant’s trademark. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s trademark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “Carolina Rodrigues/Fundacion Comercio Electronico” and there is no other evidence to suggest that Respondent was authorized to use the DESIGN IDEAS trademark or was commonly known by the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
The Complainant argues that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s domain name resolves to a parked webpage that attempts to download software onto internet users’ devices. Use of a disputed domain name to resolve to a parked webpage that attempts to download malware onto use’s devices is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii). See Nutri/System IPHC, Inc. v. Usama Ayub, FA1725806 (Forum June 5, 2017) (“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.’”), see also Snap Inc. v. Domain Admin / Whois Privacy Corp., FA 1735300 (Forum July 14, 2017) (“Use of a disputed domain name to offer malicious software does not constitute a bona fide offering or a legitimate use per Policy ¶ 4(c)(i) & (iii).”). Here, Complainant has provided the Panel with a screenshot of Respondent’s <shopdesignideas.com> domain name’s resolving webpage that shows an under construction webpage that attempts to download software. Therefore, the Panel find that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii).
The Panel note that Complainant does not make any arguments that would fall under Policy ¶ 4(b). However, the these arguments are merely illustrative rather than exclusive to support a finding of bad faith. See 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 mere 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). As such, the Panel finds that Complainant’s Policy ¶ 4(a)(iii) arguments are sufficient to support a finding of bad faith.
Complainant argues that Respondent registered and used the <shopdesignideas.com> domain name in bad faith as Respondent’s domain name resolves to a parked webpage. Use of a disputed domain name to resolve to a parked webpage may be evidence of bad faith per Policy ¶ 4(a)(iii). See Lyft, Inc. v. Stylianos Kandias, FA 1795070 (Forum Aug. 5, 2018) (“While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”), see also eNom, Incorporated v. Muhammad Enoms General delivery / Enoms.com has been registered just few days after Enom.com, therefore could not have been regstere, FA1505001621663 (Forum July 2, 2015) (“In addition, Respondent has used the disputed domain name to install malware on Internet users’ devices. The Panel finds that this is bad faith under Policy ¶ 4(a)(iii).”). Here, as noted above, the Complainant has provided the Panel with a screenshot of Respondent’s <shopdesignideas.com> domain name’s resolving webpage that shows an under construction webpage that attempts to download software. Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Complainant argues that Respondent had knowledge of Complainant’s rights in the DESIGN IDEAS trademark at the time of registering the <shopdesignideas.com> domain name. The Panel disregards arguments of bad faith based on constructive notice as UDRP case precedent declines to find bad faith as a result of constructive knowledge. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). The Panel ins read choose to determine whether Respondent had actual knowledge of Complainant's rights in the trademark prior to registering the disputed domain name as actual knowledge can adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). To support this assertion, Complainant points to its trademark registrations along with the fact that Respondent impersonates Complainant to further a fraudulent scam. As such, the Panel find that Respondent did have actual knowledge of Complainant’s right in its trademark, and thereby the Panel find bad faith 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 <shopdesignideas.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: April 29, 2021
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