Shift Technologies, Inc. v. Bogdan Lajos / B L Travel Agency Ltd
Claim Number: FA2110001969440
Complainant is Shift Technologies, Inc. (“Complainant”), represented by Atul R. Singh of Ellenoff, Grossman and Schole LLP, New York, USA. Respondent is Bogdan Lajos / B L Travel Agency Ltd (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <shift-autos.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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 18, 2021; the Forum received payment on October 18, 2021.
On October 18, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <shift-autos.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 October 19, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 8, 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@shift-autos.com. Also on October 19, 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 November 11, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, 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
Complainant provides an online platform for the sale, financing, and leasing of automobiles. Complainant asserts common law rights in the SHIFT mark through its continuous and exclusive use of the mark since 2014 and it has a pending application to register its trademark with the U.S. Patent and Trademark Office. Respondent’s <shift-autos.com> domain name, registered on September 7, 2021, is identical or confusingly similar to Complainant’s SHIFT mark, as it incorporates the mark in its entirety, only adding the generic term “autos” and the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <shift-autos.com> domain name. Complainant has not authorized or licensed Respondent to use the SHIFT mark, nor is Respondent commonly known by the disputed domain name. Further, Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services nor is it making a legitimate noncommercial or fair use thereof. Rather, Respondent impersonates and passes itself off as Complainant by copying substantial elements of Complainant’s own www.shift.com website.
Respondent registered and uses the <shift-autos.com> domain name in bad faith. Respondent attempts to pass itself off as Complainant for Respondent’s own commercial gain. Furthermore, Respondent had actual notice of Complainant’s rights in the SHIFT mark based on Respondent’s imitation of Complainant’s website and the notoriety of Complainant’s mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being 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 and evidence 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 and supported 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 common law rights in the SHIFT mark through its continuous and exclusive use thereof since 2014. Past panels have concluded that registration of a mark with a trademark agency is not necessary to establish rights therein under Policy ¶ 4(a)(i). See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”); see also athenahealth, Inc. v. Anudeep Nalla / sumanth Reddy / Unisen nation / Suresh Prasad / ram pal / Ajay Kumar, FA 1967355 (Forum Nov. 12, 2021). To successfully demonstrate common law rights in a mark, complainants must provide evidence of secondary meaning. This can include examples of how the mark is advertised and promoted as well as external recognition of the mark such as news articles and the like. See Psyonix Inc. v. robert gray / notpsyonix, FA 1759780 (Forum Jan. 3, 2018) (finding Complainant had satisfied the requirements for common law rights in the PSYONIX mark where it was “the center of the press worldwide since the release of its Rocket League game, selling over 10 million copies, totaling 36 million registered users and grossing over $110 million worldwide,” and “Complainant provided a sampling of articles from 2015 to 2017, which shows that the PSYONIX trademarks have been extensively used by Complainant, [and] are associated with Complainant amongst the consuming public worldwide.”). Here, Complainant provides screenshots of its current www.shift.com website, including traffic statistics of over one million visitors per month, as well as reviews of its services on a social media site, and articles from recognized business news outlets, all of which significantly predate the creation of the disputed domain name. Based on this evidence, the Panel finds that Complainant has demonstrated common law rights in the SHIFT trademark.
Complainant further claims that it “has a pending application to register its trademark with the U.S. Patent and Trademark Office” (emphasis supplied) and it submits into evidence a filing receipt for USPTO Trademark Application Serial No. 87115509 dated July 25, 2016. As it is unusual for a US trademark application to be pending for over five years and Complainant did not submit evidence of the current status of this Application, the Panel reviewed the records at the USPTO website only to find that this Application was “Abandoned” on June 13, 2017 for failure to respond to an office action. While common law rights to the claimed SHIFT mark have been supported through the other evidence submitted, the Panel will not consider the Complainant’s USPTO application. Complainant and its Representative are admonished to carefully review the last paragraph of the signed Complaint in which it “certifies that the information contained in this Complaint is to the best of Complainant’s knowledge complete and accurate…”
Next, Complainant argues that Respondent’s <shift-autos.com> domain name is identical or confusingly similar to Complainant’s SHIFT mark as it incorporates the mark in its entirety, only adding the descriptive term “autos”, a hyphen, and the “.com” gTLD. Simply adding a descriptive word, punctuation, and a gTLD is usually not sufficient to differentiate a disputed domain name from the mark it incorporates per 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 Empowered Medical Solutions, Inc. d/b/a QRS-Direct and QRS Magnovit AG v. NULL NULL / QUANTRON RESONANCE SYSTEMS / JIM ANDERSON / HTR / unknown HTR / HTR, FA 1784937 (Forum June 8, 2018) (“Adding or removing descriptive terms or a gTLD is insufficient to differentiate a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i).”). Since Respondent only adds a descriptive term related to the services provided by Complainant as well as the “.com” gTLD, the Panel find the disputed domain name is confusingly similar to Complainant’s SHIFT mark per 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). Should it succeed in this effort, the burden then shifts to Respondent to show that 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 contends that Respondent lacks rights and legitimate interests in the <shift-auto.com> domain name because Respondent is not authorized to use the SHIFT mark, nor is Respondent otherwise commonly known by the disputed domain name. In considering whether a respondent is commonly known by a disputed domain name under Policy ¶ 4(c)(ii), the Panel may reference available WHOIS information. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Lack of authorization to use a mark can also serve as an indication that a respondent is not commonly known by the disputed domain name. See Radio Flyer Inc. v. er nong wu, FA 1919893 (Forum Dec. 16, 2020) (“Here, the WHOIS information lists “er nong wu” as the registrant and no information suggests Complainant has authorized Respondent to use the RADIO FLYER mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”). The WHOIS Information for the <shift-auto.com> domain name identifies Respondent as “Bogdan Lajos” and there is no evidence to suggest that it is authorized to use the SHIFT mark in any way. Respondent has not filed a Response or made any other submission in this case and so it does not provide any further information regarding its identity. Based on the submitted evidence, the Panel finds no ground upon which to hold that Respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent does not use the <shift-auto.com> domain name for a bona fide offering of goods and services and that it does not make a legitimate noncommercial or fair use thereof because the resolving website closely imitates Complainant’s own site, attempting to pass itself off as Complainant. Using a disputed domain name to resolve to a website that impersonate the complainant does not constitute a bona fide offering of goods and services or legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and (iii). See ShipChain, Inc. v. 谢东东 / 谢东东, FA 1785189 (Forum June 21, 2018) (“The resolving webpages between Complainant’s and Respondent’s websites are virtually the same. Respondent’s use of the disputed domain name does not confer rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii).”); see also Dell Inc. v. Devesh Tyagi, FA 1785301 (Forum June 2, 2018) (“Respondent replicates Complainant’s website and displays Complainant’s products. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (iii).”). Complainant provides multiple screenshots of Respondent’s resolving website and comparisons between this and its own www.shift.com website. The Panel notes that Respondent copies multiple elements of Complainant’s site including the SHIFT mark in its logo form, certain photographic images and other graphics, and Complainant’s specific menu items. Further, a number of the links on Respondent’s website lead to pages on Complainant’s own site including those displaying the names and photos of Complainant’s “Executive Team”, the names and logos of Complainant’s finance partners, its legitimate social media pages, and news articles relating to Complainant. Next, a review of the address listed on Respondent’s website indicates that there is no business with the name “Shift” or anything similar at such location. Finally, each page of Respondent’s website bears the footer “© Shift Technologies, Inc.” The Panel finds overwhelming evidence that Respondent attempts to impersonate and pass itself off as Complainant and, thus concludes that Respondent does not use the disputed domain name for a bona fide offering of goods and services and that it also does not make a legitimate noncommercial or fair use thereof.
Complainant asserts that Respondent had actual notice of Complainant’s rights in the SHIFT mark as evidenced by Respondent’s copying and impersonation of Complainant’s own website. Prior decisions have considered the use made of a domain name in determining whether a respondent had actual notice of the complainant’s rights in the mark at the time a disputed domain name was registered. See Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). Here, Respondent attempts to pass itself off as Complainant, copying multiple aspects of Complainant’s own website. The Panel finds that this activity indicates Respondent had actual knowledge of Complainant’s rights in the SHIFT mark at the time it registered the <shift-auto.com> domain name.
Complainant further contends that Respondent registered and used the disputed domain name in bad faith because the resolving website attempts to impersonate Complainant for the commercial gain of Respondent. Using a disputed domain name to resolve to a website that mimics a complainant’s site for the respondent’s commercial gain typically constitutes bad faith per Policy ¶ 4(b)(iii) and/or (iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes itself off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business); see also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). As noted above, the screenshots of Respondent’s website and the comparison to Complainant’s own site lead very clearly to the conclusion that the <shift-auto.com> domain name is being used to impersonate and pass Respondent off as Complainant. Complainant asserts that Respondent’s use of the website allows it to commercially benefit unfairly and opportunistically from the goodwill associated with Complainant’s mark, either through the ability to offer services to Complainant’s customers or to perpetuate fraud upon the same. Respondent has not participated in this case and so provides no further explanation for its actions. By the very clear weight of the evidence presented here, the Panel finds that Respondent acted in bad faith by disrupting Complainant’s business and attempting to pass itself off as Complainant for Respondent’s own financial gain based upon confusion with the SHIFT mark in violation of 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 <shift-autos.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: November 16, 2021
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page