Zappos IP LLC v. Dan Lin
Claim Number: FA2205001997606
Complainant is Zappos IP LLC (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Dan Lin (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <zappos-dicount.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 May 24, 2022; the Forum received payment on May 24, 2022.
On May 24, 2022, NameCheap, Inc. confirmed by e-mail to the Forum that the <zappos-dicount.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 May 24, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 13, 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@zappos-dicount.com. Also on May 24, 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 June 20, 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, Zappos IP LLC, provides online retail services offering shoes, clothing, handbags, and other accessories through its website, <zappos.com>. Complainant has rights in the ZAPPOS mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,198,976, registered Jan. 16, 2007). See Compl. Ex. C. Respondent’s <zappos-dicount.com> domain name is identical or confusingly similar to Complainant’s ZAPPOS mark, merely adding a hyphen, the term “dicount,” a misspelling of the generic term “discount,” and appending the “.com” generic top-level domain (“gTLD”) to form the domain name.
Respondent lacks rights and legitimate interests in the <zappos-dicount.com> domain name as it is not commonly known by the disputed domain name and is neither an authorized user or licensee of the ZAPPOS 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 initially resolved the disputed domain name to a website where it passed itself off as Complainant, displayed Complainant’s products, and solicited Internet users’ email addresses and passwords.
Respondent registered and uses the <zappos-dicount.com> domain name in bad faith. First, Respondent attempts to pass itself off as Complainant and promotes a competing online footwear store through the disputed domain name. Such use is both disruptive of Complainant’s business and likely to attract commercial gain for Respondent. Next, Respondent seems to use the disputed domain name to phish for users’ email addresses and passwords. Finally, Complainant argues that Respondent registered the disputed domain with actual knowledge of Complainant’s rights in the ZAPPOS mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that provides online retail services offering shoes, clothing, handbags, and other accessories through its website, <zappos.com>
2. Complainant has established its rights in the ZAPPOS mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,198,976, registered Jan. 16, 2007)
3. Respondent registered the disputed domain name on April 11, 2022.
4. Respondent has recently caused the disputed domain name to resolve to a website where Respondent passed itself off as Complainant, displayed Complainant’s products, and solicited Internet users’ email addresses and passwords.
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 ZAPPOS mark through its registration with the USPTO (e.g., Reg. No. 3,198,976, registered Jan. 16, 2007). See Compl. Ex. C. Registration of a mark with a nation’s trademark authority, such as the USPTO, is generally 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 Zoosk, Inc. v. Brock Linen, FA 1811001818879 (Forum Jan. 28, 2019) (”The Panel here finds that Complainant’s registration of the ZOOSK mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4a(a)(i).”). As Complainant provides evidence of its registration with the USPTO, the Panel finds Complainant has rights in the ZAPPOS 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 ZAPPOS mark. Complainant argues that Respondent’s <zappos-dicount.com> domain name is identical or confusingly similar to Complainant’s ZAPPOS mark, incorporating Complainant’s mark in its entirety and merely adding a hyphen, the generic term “dicount” or a misspelling of the term “discount,” and attaching the “.com” gTLD. Past Panels have found such changes are insufficient to distinguish a domain name from a mark under Policy ¶ 4(a)(i). See Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Svensson Viljae, FA 1784650 (Forum June 1, 2018) (finding confusing similarity where “[t]he disputed domain name <skechers-outlet.com> adds a hyphen and the generic term ‘outlet’ to Complainant's registered SKECHERS mark, and appends the ‘.com’ top-level domain.”); see also ADP, LLC. v. Ella Magal, FA 1773958 (Forum Aug. 2, 2017) (“Respondent’s <workforce-now.com> domain name appropriates the dominant portion of Complainant’s ADP WORKFORCE NOW mark and adds a hyphen and the gTLD “.com.” These changes do not sufficiently distinguish the disputed domain name from the ADP WORKFORCE NOW mark.”). Thus, the Panel finds the disputed domain name is confusingly similar to Complainant’s ZAPPOS mark within the meaning of 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 ZAPPOS mark and to use it in its domain name, merely adding a hyphen and the generic term “dicount”, a misspelling of the word “discount”;
(b) Respondent registered the disputed domain name on April 11, 2022;
(c) Respondent has caused the disputed domain name to resolve to a website where Respondent passed itself off as Complainant, displayed Complainant’s products, and solicited Internet users’ email addresses and passwords;
(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 <zappos-dicount.com> domain name as it is not commonly known by the disputed domain name and is neither an authorized user or licensee of the ZAPPOS mark. When response is lacking, Panels have looked to relevant WHOIS information to determine whether a Respondent is commonly known by an infringing domain name pursuant to Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use another’s mark may demonstrate that a registrant lacks rights or legitimate interests in a domain name. See Deutsche Lufthansa AG v. Mohamed elkassaby, FA 1801815 (Forum Sept. 17, 2018) (“The WHOIS lists “Mohamed elkassaby” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).”). Here, the WHOIS information of record identifies “Dan Lin” as the domain name registrant. See Am. Compl. Ex. A1. Moreover, nothing within the record indicates Complainant authorized Respondent’s use of the ZAPPOS mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name within the meaning of Policy ¶ 4(c)(ii);
(f) Complainant further contends that Respondent fails to use the <zappos-dicount.com> 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, promote a competing website, and phish for Internet users’ email addresses and passwords. Neither passing off in furtherance of a phishing scheme or competing with a trademark holder qualify as a bona fide offer or a legitimate noncommercial or fair use according to Policy ¶¶ 4(c)(i) or (iii). See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”); see also General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Complainant provides screenshots of the resolving website for the disputed domain name to demonstrate that Respondent passes itself off as Complainant, promotes its own online shoe store, and attempts to obtain users’ login information. See Compl. Ex. D. Therefore, the Panel finds Respondent fails to use the disputed domain name for any bona fide offer of goods or services or for a legitimate noncommercial or fair use 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.
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 <zappos-dicount.com> domain name in bad faith because it has primarily used the domain name to resolve to a website where it passes itself off as Complainant and promotes its own competing online shoe store. Both passing off as a trademark holder and competing directly with Complainant’s business may demonstrate 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 off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business). The Panel notes the screenshots of the disputed domain name’s resolving website which are evidence of Respondent’s illegitimate and bad faith use of the domain name. See Compl. Ex. D. Accordingly, the Panel finds Respondent registered and uses the domain name in bad faith within the meaning of Policy ¶¶ 4(b)(iii) and (iv).
Secondly, Complainant further argues that Respondent’s use of the <zappos-dicount.com> domain name to conduct a phishing scheme is further evidence of bad faith. Using a domain name in furtherance of a phishing scheme has been deemed evidence of 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); see also Morgan Stanley v. Bruce Pu, FA 1764120 (Forum Feb. 2, 2018) (“[T]he screenshot of the resolving webpage allows users to input their name and email address, which Complainant claims Respondent uses that to fraudulently phish for information. Thus, the Panel agrees that Respondent phishes for information and finds that Respondent does so in bad faith under Policy ¶ 4(a)(iii).”). As previously noted, Complainant provides screenshots of the resolving landing page for the disputed domain name, and the Panel notes that it has a login page allowing users to type in their email address and password, showing a clear intention by Respondent to engage in phishing. See Compl. Ex. D. Thus, the Panel finds bad faith under Policy ¶ 4(a)(iii).
Thirdly, Complainant contends that Respondent registered the <zappos-dicount.com> domain name with actual knowledge of Complainant’s rights in the ZAPPOS mark. Per Policy ¶ 4(a)(iii), registration of an infringing domain name with actual knowledge of another’s trademark rights may be sufficient to demonstrate bad faith and it can be established by the notoriety of Complainant’s mark and Respondent’s use of the disputed domain name. See Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Thomas Zuber, FA1906001846352 (Forum June 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…”); see also iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Here, Complainant contends that Respondent’s knowledge may be presumed as Respondent displays Complainant’s logo at the resolving website, and Respondent purports to be an online shoe retailer, the same industry in which Complainant operates. As the Panel agrees that actual knowledge was present in this case, 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 <zappos-dicount.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown QC
Panelist
Dated: June 21, 2022
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page