P448 S.R.L. v. Vung Bui Van
Claim Number: FA2204001990775
Complainant is P448 S.R.L. (“Complainant”), represented by Harlan M. Lazarus of Lazarus & Lazarus P.C., New York, USA. Respondent is Vung Bui Van (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <p448us.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.
The Honorable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 3, 2022; the Forum received payment on April 3, 2022.
On April 4, 2022, NameCheap, Inc. confirmed by e-mail to the Forum that the <p448us.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 April 4, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 25, 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@p448us.com. Also on April 4, 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 April 29, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honorable Neil Anthony Brown QC 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 made the following contentions.
Complainant, P448 S.R.L., operates a footwear manufacturer with shoes sold in upscale department stores such as Bloomingdales and Nordstrom. Complainant has rights in the P448 mark based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,526,878, registered Jul. 31, 2018) and assignment to Complainant. See Amend. Compl. Ex. 1. Respondent’s <p448us.com> domain name is identical or confusingly similar to Complainant’s P448 mark, incorporating Complainant’s mark in its entirety before adding the geographic term “US” and the “.com” generic top-level domain (“gTLD”) to form the domain name.
Respondent lacks rights and legitimate interests in the <p448us.com> domain name as it is not commonly known by the disputed domain name and is neither an authorized user nor licensee of the P448 mark. Additionally, Respondent fails to use the disputed domain name for any bona fide offer of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to pass itself off as Complainant and offer counterfeit versions of Complainant’s products.
Respondent registered and uses the <p448us.com> domain name in bad faith. First, Respondent uses the disputed domain name to pass itself off as Complainant and encourage users to purchase counterfeit versions of Complainant’s products. Such use may demonstrate both bad faith disruption and attraction to commercial gain. Complainant also argues Respondent utilized false or misleading contact information when registering the disputed domain name. Finally, Complainant argues that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the P448 mark based on the arbitrary nature of the mark and Respondent’s use of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is the manufacturer of a prominent brand of footwear.
2. Complainant has established its rights in the P448 trademark based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,526,878, registered Jul. 31, 2018) and assignment to Complainant.
3. Respondent registered the disputed domain name on March 7, 2022.
4. Respondent has caused the disputed domain name to be used to pass itself off as Complainant and offer counterfeit versions of Complainant’s prestige products.
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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the P448 mark through registration of the mark with the USPTO (e.g., Reg. No. 5,526,878, registered Jul. 31, 2018). See Amend. Compl. Ex. 1. Generally, registration of a mark with a national trademark agency, such as the USPTO, is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Recreational Equipment, Inc. v. Liu Chan Yuan, FA 2107001954773 (Forum Aug. 9, 2021) (“Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i)”); see also Synovus Financial Corp. v. Elizabeth Fagin / Wells & Wadw, FA 1601001655021 (Forum Feb. 5, 2016) (finding that Complainant had demonstrated its rights in the SYNOVUS mark through its registration with the USPTO). As Complainant has provided evidence of its registration of the mark with the USPTO, the Panel finds Complainant has rights in the P448 mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s P448 mark. Complainant argues that Respondent’s <p448us.com> domain name is confusingly similar to Complainant’s P448 mark, as the domain name incorporates Complainant’s entire mark and adds the geographic or generic letters “US” and the “.com” gTLD. The addition of the letters “US,” whether they be random or geographic, along with adding a gTLD does not sufficiently distinguish a domain name from a mark under Policy ¶ 4(a)(i). In the present case, the internet user would probably assume that the domain name was invoking Complainant’s business in the
United States; see Bittrex, Inc. v. Sergey Valerievich Kireev / san Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015) (finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity.) Thus the Panel finds the disputed domain name is identical or confusingly similar to Complainant’s P448 mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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”).
(a) Respondent has chosen to take Complainant’s P448 mark and to use it in its domain name, adding only the geographic or generic letters “US” to the mark which does not negate the confusing similarity between the domain name and the trademark;
(b) Respondent registered the domain name on March 7, 2022;
(c) Respondent uses the disputed domain name to pass itself of as Complainant in furtherance of an email phishing scheme for financial gain;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent lacks rights and legitimate interests in the <p448us.com> domain name as it is not commonly known by the disputed domain name and is neither an authorized user or licensee of the P448 mark. When a response is lacking, past Panels have looked to relevant WHOIS information to determine whether a Respondent is commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See PragmaticPlay Limited v. Robert Chris, FA2102001932464 (Forum Mar. 23, 2021) (“The WHOIS information of record lists the registrant as “Robert Chris,” and no other information of record suggests Respondent is commonly known by the domain name. 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 the Complainant’s trademark may demonstrate that a domain registrant is not commonly known by the 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 of record identifies “Vung Bui Van” as the domain registrant, and nothing within the record indicates Complainant in any way authorized Respondent’s use of the P448 mark. See Registrar Verification Email. The Panel therefore finds Respondent is not commonly known by the disputed domain name within the meaning of Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent fails to use the <p448us.com> domain name for any bona fide offer of goods or services, nor for any legitimate noncommercial or fair use, but rather to pass itself off as Complainant and to offer counterfeit versions of Complainant’s products. Such use does not qualify as either a bona fide offer or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (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).”). Complainant provides screenshots of both Complainant’s legitimate website and Respondent’s landing page as evidence of Respondent’s illegitimate use of the disputed domain name. Compare Amend. Compl. Exs. 2-3. As such, the Panel finds Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) and (iii).
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 does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
Registration and Use in Bad Faith
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <p448us.com> domain name in bad faith because Respondent causes the disputed domain name to resolve to a landing page where it passes itself off as Complainant and offers copies of Complainant’s goods which appear to be counterfeit or otherwise illegitimate products. Such use may demonstrate both bad faith disruption and attraction to commercial gain under Policy ¶¶ 4(b)(iii) and (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). As previously noted, Complainant provides screenshots of its own legitimate website and Respondent’s own illegitimate website as evidence that Respondent attempts to pass itself off as Complainant and to offer counterfeit or otherwise illegitimate versions of Complainant’s products. Compare Amend. Compl. Exs. 2-3. Thus, the Panel finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Secondly, Complainant argues that Respondent utilized false or misleading contact information when registering the <p448us.com> domain name. Notably, past Panels have realized that Policy ¶ 4(b) provides a list of non-exhaustive examples of bad faith; however Panels may look to other evidence to find bad faith under Policy ¶ 4(a)(iii). See HDR Global Trading Limited v. Martin Forstner / Affiliate Group N.V., FA2111001972594 (Forum Dec. 10, 2021) (noting that the “list of circumstances set forth in Policy ¶ 4(b) is non-exclusive, allowing for consideration of additional factors in an analysis for bad faith…”). Past Panels have recognized that providing false or misleading information to the WHOIS database may qualify as bad faith within the meaning of Policy ¶ 4(a)(iii). See CNU ONLINE Holdings, LLC v. Domain Admin / Whois Privacy Corp., FA1504001614972 (Forum May 29, 2015) (“As the Panel sees that Respondent has provided false or misleading WHOIS information, the Panel finds bad faith in Respondent’s registration of the disputed domain name per Policy ¶ 4(a)(iii).”). Complainant notes that the WHOIS information of record contains an address and telephone number for a Sony Interactive store in California, along with an invalid email address. See Amend. Compl. Ex. 4. As the Panel finds that Respondent provided false or misleading contact information to the WHOIS database, the Panel also finds bad faith under Policy ¶ 4(a)(iii).
Thirdly, Complainant argues that Respondent registered the <p448us.com> domain name with actual knowledge of Complainant’s rights in the P448 mark. Pursuant to Policy ¶ 4(a)(iii), registration of an infringing domain name with actual knowledge of another’s trademark rights is sufficient to establish bad faith and can be shown by the arbitrary nature of the mark and Respondent’s use of the disputed domain. See Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Thomas Zuber, FA1906001846352 (Forum Jun. 30, 2019) (“Respondent’s prior knowledge is evident given the notoriety and arbitrary nature of Complainant’s trademark, as well as from Respondent’s use of the <skechersolcson.com> domain name to address a website which displays Complainant’s trademark and images of Complainant’s merchandise to support Respondent’s unauthorized sale of items similar…”). Here, Complainant argues that its P448 mark is arbitrary, and Respondent’s knowledge is evident based on its attempts to pass itself off as Complainant and offer counterfeit or otherwise illegitimate versions of Complainant’s goods. Compare Amend. Compl. Exs. 2-3. As the Panel agrees that actual knowledge was present, it finds bad faith under Policy ¶ 4(a)(iii).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <p448us.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown QC
Panelist
Dated: May 3, 2022
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page