LTWHP, LLC v. jiali zhang
Claim Number: FA2202001985621
Complainant is LTWHP, LLC (“Complainant”), represented by Eric Perrott of Gerben Perrott, PLLC, District of Columbia, USA. Respondent is jiali zhang (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <scarpelotto.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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 23, 2022; the Forum received payment on February 23, 2022.
On February 24, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <scarpelotto.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 February 28, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 21, 2022 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@scarpelotto.com. Also on February 28, 2022, 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 March 27, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho-Hyun Nahm, 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
i) Complainant, LTWHP, LLC, operates a retail store selling LOTTO-branded clothing, accessories, sporting foods and footwear. Complainant has rights in the LOTTO mark based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,023,806, registered on October 28, 1975). The disputed domain name is identical or confusingly similar to Complainant’s LOTTO mark, incorporating the mark in its entirety, and merely adding the descriptive term “scarpe” (which translates to “shoes” in Italian) and adding the “.com” generic top-level domain (“gTLD”).
ii) Respondent lacks rights and legitimate interests in the disputed domain name as it is not commonly known by the disputed domain name and is neither an authorized user or licensee of the LOTTO mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use, but rather to pass itself off as Complainant in an effort to defraud Internet users. Complainant further contends that Respondent uses email accounts connected with the disputed domain in furtherance of its phishing scam.
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent redirects Internet users to a website which mimics Complainant’s legitimate website, which may demonstrate bad faith disruption and attraction to commercial gain. Complainant also contends that Respondent uses the disputed domain name to phish for users’ personal and financial information.
B. Respondent
Respondent did not submit a response in this proceeding.
1. The disputed domain name was registered on December 6, 2017.
2. Complainant has established rights in the LOTTO mark based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,023,806, registered on October 28, 1975).
3. The disputed domain name resolves to a website passing Respondent off as Complainant, displaying Complainant’s products, and sending confirmation emails to further its fraud.
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 LOTTO mark through its registration with the USPTO (e.g., Reg. No. 1,023,806, registered on October 28, 1975). Generally, registration of a mark with a nation’s trademark authority, such as the USPTO, sufficiently demonstrates rights in a mark under Policy ¶ 4(a)(i). See Ecolab USA Inc. v. (name redacted), FA 2003001888902 (Forum Apr. 20, 2020) (“Complainant’s ownership of a USPTO registration for ECOLAB is sufficient to demonstrate its rights in a mark for the purposes of Policy ¶ 4(a)(i).”); see also Brooks Sports, Inc. v. Joyce Cheadle, FA 1819065 (Forum Dec. 28, 2018) (finding that Complainant’s registration of the BROOKS mark with the USPTO sufficiently conferred its rights in the mark under Policy ¶ 4(a)(i).”). As Complainant provides evidence of its registration with the USPTO, the Panel finds that Complainant has established rights in the LOTTO mark under Policy ¶ 4(a)(i).
Complainant then argues that the disputed domain name <scarpelotto.com> is identical or confusingly similar to the LOTTO mark as it incorporates the entire LOTTO mark, merely adding the descriptive term “scarpe” before the mark and adding the “.com” gTLD after the mark to form a domain name. As noted previously, the term “scarpe” translates to “shoes” from Italian. The addition of a descriptive term may not sufficiently distinguish a domain name from a mark under Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); see also Disney Enters., Inc. v. Artmidia Comunicacao Visual Criacao E Arte Ltda., FA 603590 (Forum Jan. 16, 2006) (“The term “disneylandia” is the Portuguese translation of the DISNEYLAND mark, and Complainant holds such a trademark for this term in Brazil. Therefore, the <disneylandia.com> and <disneylandia.net> domain names are confusingly similar to Complainant’s mark.”). Thus, the Panel finds the disputed domain name is confusingly similar to Complainant’s LOTTO mark under 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), 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”).
Complainant argues that Respondent lacks rights and legitimate interests in the disputed domain name as it is not commonly known by the disputed domain name and is neither an authorized user or licensee of the LOTTO mark. When response is lacking, previous Panels have looked to a domain name’s WHOIS information to determine whether a Respondent is commonly known by an infringing domain name under Policy ¶ 4(c)(ii). See Radio Flyer Inc. v. er nong wu, FA 2011001919893 (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).”). Additionally, lack of authorization to use another’s trademark may further demonstrate that a Respondent lacks rights in a domain name under Policy ¶ 4(c)(ii). 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 of record identifies “jiali zhang” as the registrant of the disputed domain name, and nothing in the record suggests Complainant authorized Respondent’s use of the LOTTO mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain under Policy ¶ 4(c)(ii).
Complainant also contends that Respondent fails to use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use, as Respondent resolves the disputed domain name to a webpage that mimics Complainant’s website and purports to offer Complainant’s goods for sale. Such use generally does not constitute either a bona fide offer or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Bloomberg Finance L.P. v. Nikita A Paskhalnyy / Private Person, FA 1638757 (Forum Nov. 5, 2015) (finding no rights or legitimate interests where Respondent offered Complainant’s own financial news services in the Russian language); see also Fadal Engineering, LLC v. DANIEL STRIZICH,INDEPENDENT TECHNOLOGY SERVICE INC, FA 1581942 (Forum Nov. 13, 2014) (finding that Respondent’s use of the disputed domain to sell products related to Complainant without authorization “does not amount to 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 provides screenshots of the disputed domain name as evidence that Respondent attempts to pass itself off as Complainant and displays Complainant’s LOTTO-branded products. Therefore, the Panel finds Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) and (iii).
Complainant also points out that Respondent uses an email account associated with the disputed domain name to send confirmation emails to Internet users after obtaining their personal and financial information through the fraudulent transaction. Using an email account associated with an infringing domain name to further fraudulent conduct generally does not constitute either a bona fide offer or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the respondent’s use of the disputed domain names to send fraudulent emails purportedly from agents of complainant to be 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 Chevron Intellectual Property LLC v. Thomas Webber / Chev Ronoil Recreational Sport Limited, FA 1661076 (Forum Mar. 15, 2016) (finding that the respondent had failed to provide a bona fide offering of goods or services or any legitimate noncommercial or fair use, stating, “Respondent is using an email address to pass themselves off as an affiliate of Complainant. Complainant presents evidence showing that the email address that Respondent has created is used to solicit information and money on false pretenses. The disputed domain name is being used to cause the recipients of these emails to mistakenly believe Respondent has a connection with Complainant and is one of the Complainant’s affiliates.”). Complainant provides screenshots of an email send to Internet users who was defrauded by Respondent. The Panel finds Respondent fails to use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. 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 argues that Respondent registered and uses the disputed domain name in bad faith because Respondent resolves the disputed domain name to a landing page where it attempts to pass itself off as Complainant and purports to offer Complainant’s LOTTO-branded products. Such use may demonstrate bad faith disruption and attraction to commercial gain under Policy ¶¶ 4(b)(iii) and (iv). See ZIH Corp. v. ou yang lin q, FA1761403 (Forum Dec. 29, 2017) (Finding bad faith where Respondent used the infringing domain name to disrupt Complainant’s business by diverting Internet users from Complainant’s website to Respondent’s website where it offered competing printer products); see also Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the Respondent’s use of the disputed domain names to send fraudulent emails supported a finding of bad faith registration and use under Policy ¶ 4(b)(iii)); see additionally 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 previously noted, Complainant provides evidence that Respondent resolves the disputed domain name to a website passing off as Complainant, displays Complainant’s products, and sends confirmation emails to further its fraud. The Panel finds Respondent’s bad faith registration and use of the disputed domain name under Policy ¶¶ 4(b)(iii) and (iv).
Complainant also contends that Respondent uses the disputed domain name to phish for users’ personal and financial information. Using a domain name in furtherance of a phishing scheme may demonstrate bad faith under Policy ¶ 4(a)(iii). See United Services Automobile Association v. john arkoos, FA1702001718272 (Forum Mar. 28, 2017) (finding bad faith under Policy ¶ 4(a)(iii) and transferring the <usaainfocenter.com> domain name based on Respondent using the domain name to engage in a phishing scheme intended to defraud Internet users). As previously noted, Complainant provides screenshots of the disputed domain name, which displays a cart where Internet users can presumably add products and input payment and shipping information. Therefore, the Panel finds Respondent’s bad faith registration and use 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 <scarpelotto.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: March 31, 2022
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