ASSOS of Switzerland GmbH v. Yulan Zhou
Claim Number: FA2204001994348
Complainant is ASSOS of Switzerland GmbH (“Complainant”), represented by David Ewen of Shipman & Goodwin, LLP, Connecticut, USA. Respondent is Yulan Zhou (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <assosshop.com>, registered with Name.com, 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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 28, 2022; the Forum received payment on April 28, 2022.
On May 1, 2022, Name.com, Inc. confirmed by e-mail to the Forum that the <assosshop.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, 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 May 3, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 23, 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@assosshop.com. Also on May 3, 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 May 30, 2022, 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
Complainant is a provider of cycling apparel. Complainant has rights in the ASSOS trademark due to its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,152,174, registered on Jun. 5, 2012). Respondent’s <assosshop.com> domain name is identical or confusingly similar to Complainant’s trademark as it incorporates the trademark in its entirety and adds the word “shop” along with the “.com” generic top-level domain (“gTLD”). Respondent lacks rights and legitimate interests in the <assosshop.com> domain name.
Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its ASSOS trademark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use, but instead mimics Complainant’s website and purports to sell its products at a largely discounted rate.
Respondent registered and uses the <assosshop.com> domain name in bad faith. Respondent holds the disputed domain name with a resolving website featuring Complainant’s mark and purporting to sell Complainant’s products at discounted rates. Respondent is phishing for user information. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the ASSOS mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registrations:
No. 5,893,747 (IR No. 1435146) ASSOS (word), registered October 29, 2019, 2002 for goods and services in Intl Classes 28 and 35;
No. 2,648,797 ASSOS (fig), registered November 12, 2002 for goods in Intl Classes 12 and 25;
No. 4,152,174 ASSOS (word), registered June 5, 2012 for goods in Intl Classes 3, 12 and 25;
No. 4,582,185 ASSOS (word), registered August 12, 2014 for goods in Intl Class 9;
No. 4,144,664 ASSOS (word), registered May 22, 2012 for goods and services in Intl Classes 5, 9, 18 and 41;
No. 4,152,198 ASSOS (fig), registered June 5, 2012 for goods and services in Intl Classes 3, 5, 9, 12, 18, 25 and 41; and
No. 6,302,819 ASSOS (word), registered March 23, 2021 for goods in Intl Class 25.
The disputed domain name <assosshop.com> was registered on December 20, 2021.
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 rights in the ASSOS trademark due to its registration with the USPTO (e.g., Reg. No. 4,152,174, registered on Jun. 5, 2012). Registration with the USPTO is generally sufficient to establish rights in a trademark for the purposes of Policy ¶ 4(a)(i). 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”).”). The Panel therefore holds that Complainant’s registration of the ASSOS trademark with the USPTO is sufficient to establish rights in the trademark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <assosshop.com> domain name is identical or confusingly similar to Complainant’s ASSOS trademark. Under Policy ¶ 4(a)(i), a domain name is generally considered confusingly similar to the trademark it incorporates where it adds a generic term and a gTLD. See Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).”). In the present case, the Panel notes that <assosshop.com> incorporates Complainant’s ASSOS trademark and adds the generic term “shop” (a term related to the Complainant’s business) and the “.com” gTLD. Therefore, the Panel find that Respondent’s domain name is confusingly similar to Complainant’s trademark under 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 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”).
The Complainant argues that Respondent is not commonly known by the <assosshop.com> domain name, nor has Complainant authorized or licensed Respondent to use its ASSOS trademark in the disputed domain name. Under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name, while a lack of evidence demonstrating otherwise may affirm a Complainant’s assertion that it never authorized or licensed Respondent to use its trademark in the disputed domain name. See SPTC, Inc. and Sotheby’s v. Tony Yeh shiun, FA 1810835 (Forum Nov. 13, 2018) (finding no rights or legitimate interests in the <sothebys.email> domain name where the WHOIS identified Respondent as “Tony Yeh shiun,” Complainant never authorized or permitted Respondent to use the SOTHEBY’S mark, and Respondent failed to submit a response.). The WHOIS information in the present case identifies Respondent as “Yulan Zhou” and nothing in the record rebuts Complainant’s assertion that it never authorized or licensed Respondent to use its ASSOS trademark in the disputed domain name. Therefore, the Panel agrees with Complainant, and find that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent is not using the <assosshop.com> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), using the disputed domain name to display a complainant’s trademark and purport to sell its products does not constitute a bona fide offering of goods or services, nor any legitimate noncommercial or fair use. See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business). Complainant provides screenshots of the disputed domain name’s resolving website, where Respondent is attempting to mimic Complainant’s trademark and website, while purporting to sell its products at discounted rates. Therefore, the Panel find that Respondent is not using the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
The Complainant alleges Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii). When making a determination of bad faith, the Panel may look beyond the criteria specifically listed in Policy ¶ 4(b) to the totality of the circumstances. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence).
Complainant argues that Respondent registered the <assosshop.com> domain name with bad faith actual knowledge of Complainant’s rights in the ASSOS trademark. Under Policy ¶ 4(a)(iii), actual knowledge is generally sufficient in demonstrating bad faith, and may be established through incorporation of a trademark into the resolving page, while purporting to sell Complainant’s products. See WordPress Foundation v. mich delorme / mich d dots tlds, FA1410001584295 (Forum Nov. 25, 2014) (“Because Respondent here relies on the WORDPRESS mark in the disputed domain name and also makes use of Complainant’s services at the resolving page, the Panel finds that Respondent had actual knowledge of Complainant’s mark, and that such knowledge evidences Policy ¶ 4(a)(iii) bad faith.”). The Panel takes into consideration the Complainant’s screenshots of the disputed domain name’s resolving website, which incorporates Complainant’s trademark, uses the trademark to mimic their website, and purports to offer Complainant’s products for sale at discounted rates. Therefore, the Panel find that Respondent had actual knowledge of Complainant’s rights in the trademark under Policy ¶ 4(a)(iii).
Complainant argues that Respondent registered the <assosshop.com> domain name in bad faith by operating a phishing scheme. Under Policy ¶ 4(a)(iii), using a disputed domain name in furtherance of a phishing scheme is evidence of bad faith registration and use. See Wells Fargo & Co. v. Maniac State, FA 608239 (Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers). As noted above, the Complainant has provided screenshots of the disputed domain name’s resolving website, which mimics Complainant’s website and purports to offer its products for sale at large discounts.
Furthermore, Complainant claims that a representative of theirs attempted to purchase a product from the Respondent’s website, was charged for the purchase, but did not receive an order confirmation nor a product. Therefore, the Panel find that Respondent registered and uses the disputed domain name in 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 <assosshop.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: June 13, 2022
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