Ruggable, LLC v. Zhichao Yang
Claim Number: FA2106001950397
Complainant is Ruggable, LLC (“Complainant”), represented by Hannah Cannom of Walker Stevens Cannom LLP, California, USA. Respondent is Zhichao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <rugagble.com> and <ruggabie.com>, registered with Alibaba Cloud Computing (Beijing) Co., Ltd.
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.
Jeffrey J. Neuman as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 9, 2021; the Forum received payment on June 9, 2021. The Complaint was received in both Chinese and English.
On June 11, 2021, Alibaba Cloud Computing (Beijing) Co., Ltd. confirmed by e-mail to the Forum that the <rugagble.com> and <ruggabie.com> domain names are registered with Alibaba Cloud Computing (Beijing) Co., Ltd. and that Respondent is the current registrant of the names. Alibaba Cloud Computing (Beijing) Co., Ltd. has verified that Respondent is bound by the Alibaba Cloud Computing (Beijing) Co., Ltd. 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 June 16, 2021, the Forum served the Chinese Complaint and all Annexes, including a Chinese Written Notice of the Complaint, setting a deadline of July 6, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondents registration as technical, administrative, and billing contacts, and to postmaster@rugagble.com, postmaster@ruggabie.com. Also on June 16, 2021, the Chinese 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 June 7, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Jeffrey J. Neuman 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: LANGUAGE OF PROCEEDINGS
It is important to note that the Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
A. Complainant
Complainant has rights in the RUGGABLE mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,016,507, registered Aug. 23, 2011.) See Compl. Ex. 2. Respondent’s <rugagble.com> and <ruggabie.com> domain names are confusingly similar to Complainant’s mark because they are simply misspelled versions of Complainant’s RUGGABLE mark.
Respondent does not have rights or legitimate interests in the <rugagble.com> and <ruggabie.com> domain names. Respondent is not commonly known by the disputed domain names and Complaint has not licensed or authorized Respondent to use the RUGGABLE mark. Additionally, Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the domains to pass off as Complainant and offer pay-per-click hyperlinks to competing goods.
Respondent registered and uses the <rugagble.com> and <ruggabie.com> domain names in bad faith. Respondent diverts users to its own websites which feature pay-per-click hyperlinks to competing goods. Additionally, Respondent engages in typosquatting. Furthermore, the RUGGABLE mark is a fanciful mark and therefore Respondent could not have come up with the disputed domain names independently.
B. Respondent
The disputed domain names were registered on May 13, 2021. However, Respondent did not submit a response to the Complaint.
1. Complainant has been using the RUGGABLE mark in connection with furniture, carpeting, rugs, bedding, mats, etc. since at least as early as June 2011. Complainant owns numerous registered trademarks globally, including within China, the UK and the United States, all of which are valid and in full force and effect. See Amend. Compl. p. 4-5 and Exhibit 2.
2. The disputed domain names are identical or confusingly similar to the RUGGABLE marks.
3. Complainant has not licensed or otherwise authorized Respondent to use its marks, nor is Respondent commonly known by the marks.
4. Complainant has established that the disputed domain names have been registered and used 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 asserts rights in the RUGGABLE marks based on registrations of the marks globally, including within China, the UK and the United States. Complainant attached registration certificates for the Ruggable Marks registered in the United States with the USPTO (e.g., Reg. No. 4,016,507, registered Aug. 23, 2011.). See Compl. Ex. 2. Registration of a mark with the USPTO is a valid showing of rights in a mark. See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”). Since Complainant provides evidence of registration of the RUGGABLE mark with the USPTO, the Panel may find that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <rugagble.com> and <ruggabie.com> domain names are confusingly similar to Complainant’s mark because they are simply misspelled versions of Complainant’s RUGGABLE mark. Misspelling a mark by replacing a letter or transposing letters is not sufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See WordPress Foundation v. Bernat Lubos, FA 1613444 (Forum May 21, 2015) (finding that the <worspress.org> domain name is confusingly similar to the WORDPRESS mark under Policy ¶ 4(a)(i), stating, “On a standard QWERTY keyboard, the letters ‘s’ and ‘d’ are adjacent. A minor misspelling is not normally sufficient to distinguish a disputed domain name from a complainant’s mark.”); see also Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA 1626253 (Forum July 29, 2015) (finding that “Respondent has simply transposed the letters ‘u’ and ‘r’ in the term ‘furniture’ to complete the [<ashleyfurnitrue.com>] domain name. The addition of a descriptive term, such as ‘furniture’, even if misspelled, does not negate a finding of confusing similarity under Policy ¶ 4(a)(i).”).
The Panel agrees with Complainant in this case. The <rugagble.com> domain name merely transposes the letters “G” and “A” in the RUGGABLE marks, and the <ruggabie.com> domain name simply replaces the letter “L” with the letter “I.” It is also worth noting that the capital Letter “I” looks virtually identical to the lower case “L” (“l”), which only reinforces the confusing similarity. Thus, the Panel finds the disputed domain names appear to be typos of the Marks and therefore are confusingly similar to the RUGGABLE marks under Policy ¶ 4(a)(i).
In addition to demonstrating that that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights, the Complainant must make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Once that prima facie case is made, 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 <rugagble.com> and <ruggabie.com> domain names because Respondent is not commonly known by the disputed domain names and Complaint has not licensed or authorized Respondent to use the RUGGABLE mark. 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 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)). Additionally, lack of authorization to use a mark constitutes a further showing that a respondent is not commonly known by a disputed domain name. See Bittrex, Inc. v. Operi Manaha, FA 1815225 (Forum Dec. 10, 2018) (concluding that the respondent was not commonly known by the <appbittrex.com> domain name where the WHOIS information listed Respondent as “Operi Manaha,” and nothing else in the record suggested Respondent was authorized to use the BITTREX mark.). Here, the WHOIS information identifies “Zhichao Yang” as the registrant. There has been no information provided by the registrant to indicate that it is commonly known by the RUGGABLE Marks.
Additionally, Complainant argues that Respondent does not use the disputed domains for any bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the domains to pass off as Complainant and offer pay-per-click hyperlinks to competing goods. Using a disputed domain name to suggest a connection with a complainant and host competing pay-per-click hyperlinks does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”).
According to the Complaint, the disputed domain names currently resolve to a page purporting to provide links to “Area Rugs,” “Accent Rugs”, and “Runners” to “confuse consumers into believing that they are purchasing products under the Ruggable brand”. Amend. Compl. @ p. 6. Complainant provides screenshots of the resolving webpages for the disputed domain names which feature monetized hyperlinks to competing products including area rugs. See Compl. Ex. 4.
Thus, the Panel agrees with Complainant and finds that Respondent is not using the 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).
Complainant argues Respondent registered and uses the <rugagble.com> and <ruggabie.com> domain names in bad faith because Respondent diverts users to its own websites which feature pay-per-click hyperlinks to competing goods. Using a disputed domain name to redirect consumers to a webpage featuring competing hyperlinks 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 Lenovo (Beijing) Limited Corporation China v. jeonggon seo, FA1411001591638 (Forum Jan. 16, 2015) (finding that where the complainant operated in the computer industry and the respondent used the disputed domain name to offer competing computer related links, the respondent was disrupting the complainant’s business offerings in violation of Policy ¶ 4(b)(iii)); see also Clark Equipment Company v. Namase Patel / Mumbai Domains, FA1406001566288 (Forum July 30, 2014) (“The Panel observes that the Respondent’s disputed domain name leads to a website that features links to products that directly compete with Complainant’s products. The Panel determines that Respondent is attempting to mislead consumers as to Complainant’s affiliation with the disputed domain name, and Respondent likely profits from the resulting confusion. Therefore, the Panel finds evidence of bad faith pursuant to Policy ¶ 4(b)(iv).”).
Screenshots provided by the Complainant of the resolving webpages for the disputed domain names do not only feature hyperlinks to competing products like area and accent rugs, but unlike many other parking pages these are the ONLY hyperlinks provided. The fact that the parking pages only features products that compete with Complainant also demonstrates the strength of the RUGGABLE marks as well as their distinctiveness in identifying the source of such products. Under Policy ¶ 4(a)(iii), registration and use of a disputed domain name containing a fanciful mark indicates bad faith. See Johnson & Johnson v. Rx USA, FA 157288 (Forum June 23, 2003) (finding that the respondent’s unauthorized use of the complainant’s fanciful mark for commercial gain evidenced bad faith registration and use of a domain name). The Panel agrees with Complainant that the RUGGABLE mark is unique and arbitrary and therefore Respondent could not have devised the disputed domain names on its own.
Additionally, Complainant contends Respondent engages in typosquatting. Under Policy ¶ 4(a)(iii), the purposeful misspelling of a mark in a disputed domain name constitutes typosquatting and is itself evidence of bad faith registration and use. See Homer TLC, Inc. v. Artem Ponomarev, FA1506001623825 (Forum July 20, 2015) (“Finally, under this head of the Policy, it is evident that the <homededpot.com> domain name is an instance of typosquatting, which is the deliberate misspelling of the mark of another in a domain name, done to take advantage of common typing errors made by Internet users in entering into a web browser the name of an enterprise with which they would like to do business online. Typosquatting is independent evidence of bad faith in the registration and use of a domain name.”). The Panel agrees with Complainant that both the <rugagble.com> and <ruggabie.com> domain names likely constitute typsoquatting given that the former domain merely reverses the “a” and the “g” and the latter substitutes an “i” for an “l”. As pointed out above, an uppercase “i” (“I”) looks virtually identical to a lower case “L” (“l”).
For the reasons set forth above, the Panel finds that both disputed domain names were registered and used in bad faith pursuant to Policy ¶ 4(b)(iii) and (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <rugagble.com> and <ruggabie.com> domain names be TRANSFERRED from Respondent to Complainant.
Jeffrey J. Neuman, Panelist
Dated: July 21, 2021
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