Spyderco, Inc. v. Name Redacted
Claim Number: FA2206002001677
Complainant is Spyderco, Inc. (“Complainant”), represented by Miriam D. Trudell of Sheridan Ross P.C., Colorado, USA. Respondent is Name Redacted (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <spydercostore.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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 23, 2022; the Forum received payment on June 23, 2022.
On June 24, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <spydercostore.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 June 28, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 18, 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@spydercostore.com. Also on June 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.
On July 14, 2022, the Forum received an e-mail from an individual explaining that it had received notice of the Complaint but that it also had no connection whatsoever with the disputed domain name.
Having received no substantive response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On July 22, 2022, 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.
PRELIMINARY ISSUE: PARTIAL REDACTION OF RESPONDENT INFORMATION
The individual who has been identified as the Registrant of the <spydercostore.com> domain name contends that it has no connection with either of the domain names that are the subject of these proceedings. Specifically, on July 14, 2022, the Forum received email correspondence from this named Registrant indicating that it had received notice of these proceedings by postal mail but stating that “I have never registered a domain name, much less a name belonging to someone else. * * * In addition, the phone number listed is not mine (it’s my sister’s, interestingly), and I have no knowledge of the email address listed. * * * Whoever registered the domain name in question is using my name, an address similar to mine, and my sister’s phone number fraudulently.” Although not expressly requested by this individual, the Panel has the authority to make a determination of whether redaction of a Respondent’s identity is proper. According to Policy ¶ 4(j), “[a]ll decisions under this Policy will be published in full over the Internet, except when an Administrative Panel determines in an exceptional case to redact portions of its decision.” In Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellzfargo.com>, FA 362108 (Forum Dec. 30, 2004) and Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellsfargossl>, FA 453727 (Forum May 19, 2005), the panels omitted the respondents’ personal information from the decisions, pursuant to Policy ¶ 4(j), in an attempt to protect the respondents who claimed to be victims of identity theft from becoming aligned with acts the actual registrants appeared to have sought to impute to the respondents.
The named Registrant of the <spydercostore.com> domain name submitted a signed letter to the Forum stating that it has no connection with this matter and inquiring “[w]hat do I need to do in order to clear this up?” No correspondence has been received from the person or entity that is the true Registrant of the <spydercostore.com> domain name.
In view of the above, the Panel finds it highly likely that the named Registrant of the <spydercostore.com> domain name is not, in fact, a proper Respondent for the purposes of the Policy as its identity was falsely used in the WHOIS record for this domain name. As such, that individual’s name will be redacted throughout this decision and the term “Respondent” will herein refer solely to the person or entity who actually registered the disputed domain name.
A. Complainant
Complainant is a Colorado-based knife and cutlery company. Complainant claims rights in the SPYDERCO mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,965,458 registered April 2, 1996). The disputed domain name <spydercostore.com>, registered on January 19, 2022, is confusingly similar because it wholly incorporates Complainant’s mark and differs only through the addition of the term “store” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <spydercostore.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the SPYDERCO mark in any way. Additionally, Respondent fails to use the disputed domain name in connection with make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain to impersonate Complainant as part of a phishing scheme seeking credit card or other financial information from consumers visiting the website.
Respondent registered and uses the disputed domain in bad faith. Respondent uses the disputed domain to impersonate Complainant to disrupt its business and to commercially benefit by offering products that are suspected of being counterfeit. Further, Respondent had actual knowledge of Complainant’s rights in the SPYDERCO mark prior to registration of the disputed domain. Finally, Respondent used a privacy service to register the disputed domain in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
- Complainant owns rights to the SPYDERCO trademark and the <spydercostore> domain name is confusingly similar to the mark;
- Respondent is not commonly known by the disputed domain name and it does not use it to make a bona fide offering of goods or services where it seeks to pass itself off as Complainant and offer for sale products that are either counterfeit, non-existent, or otherwise illegitimate; and
- The disputed domain name has been registered and used in bad faith where Respondent uses it to offer products that are either counterfeit, non-existent, or otherwise illegitimate based on confusion with Complainant’s trademark.
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”).
Next, Complainant argues that Respondent’s <spydercostore.com> domain name is confusingly similar to Complainant’s mark because it wholly incorporates Complainant’s mark differing only through the addition of the generic term “store” before also adding the “.com” gTLD. The addition of a generic or descriptive phrase and gTLD generally fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). As the entirety of Complainant’s mark is incorporated in the disputed domain name and the generic word “store” is added, which is relevant to Complainant’s business, the Panel finds that the disputed domain name is confusingly similar to Complainant’s 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 argues that Respondent lacks rights or legitimate interest in the <spydercostore.com> domain name as Respondent is not commonly known by the disputed domain name nor is there a relationship between the parties that would give rise to a license, permission or any other rights for the respondent to own or use Complainant’s mark. In considering this issue, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding that a respondent has no rights or legitimate interests in a disputed domain name where the relevant WHOIS information indicated that the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information associated with the <spydercostore.com> domain does not indicate that Respondent is known by the disputed domain name. According to the Registrar verification email sent to the Forum, The Respondent is listed as an individual whose name bears no relation to the SPYDERCO mark or the disputed domain name. Further, Complainant asserts that Respondent was not given rights to use the SPYDERCO mark and Respondent has, by its default in this case, declined to contest this. Therefore, the Panel finds no ground upon which to conclude that Respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant further argues that Respondent does not use the <spydercostore.com> domain name for any bona fide offering of goods or services, and that it does not make any legitimate noncommercial or fair use thereof. Instead, it asserts that Respondent uses the disputed domain name to impersonate Complainant as part of a phishing or fraudulent scheme. Using a disputed domain name to pass oneself off as a Complainant is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under 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.”) Complainant has provided screenshots of the old and current versions of the website that resolved from the disputed domain name. The old one displays Complainant’s SPYDERCO mark, its associated logo, and copyrighted images and descriptions of Complainant’s products. The current one does not display the logo but it still contains many images of SPYDERCO knives that are offered for sale. Complainant also notes that the offered products “are deeply discounted and well below Complainant’s manufacturing cost”. The Panel further notes the appearance of links for users to pay Respondent via PayPal or credit card. This gives the impression that Respondent is seeking to offer, for sale, products that it claims originate with Complainant. However, the Panel is particularly influenced by the very low retail prices, the lack of a statement on the website relating to any relationship, or lack thereof, between Respondent and Complainant, see Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001), and Respondent’s use of false WHOIS information. Respondent has not filed a response, nor has it made any other submission in this case and so it has provided no explanation of its activities. As Complainant has made out a prima facie case which has not been rebutted by Respondent, upon a preponderance of the evidence before it the Panel finds no reason to conclude that Respondent makes a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) or (iii).
Complainant argues that Respondent had actual knowledge of Complainant’s rights in the SPYDERCO mark at the time that it registered the <spydercostore.com> domain name. Actual knowledge of a complainant’s mark can create a foundation upon which an assertion of bad faith may be built under Policy ¶ 4(a)(iii). See 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”). To support its assertion, Complainant points to the fact that Respondent prominently displayed its logo and product photographs on its website. Based on the content of Respondent’s website, the Panel finds it highly likely that Respondent did have actual knowledge of Complainant’s right in its mark at the time that it registered the disputed domain name.
Next, Complainant argues that Respondent registered and uses the <spydercostsore.com> domain name in bad faith because Respondent disrupts Complainant’s business and attempts to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the SPYDERCO mark and offering counterfeit or competing products. Where the respondent uses a disputed domain name to pass itself off as a complainant, the Panel may find evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See 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 screenshots of the disputed domain name’s old and current resolving pages and its own webpage. Respondent uses the SPYDERCO mark to offer knives at deeply discounted prices. Complainant asserts this suggests that such goods may be counterfeit, non-existent, or otherwise illegitimate. Further, Respondent makes liberal use of copyrighted images and textual descriptions of these knives that have been copied from Complainant’s own website. Such use further suggests bad faith by Respondent. 23andMe, Inc. v. zhou lei, FA 2001863 (Forum July 25, 2022) (bad faith registration and use found where “Respondent’s Website passes itself off as an official website of the Complainant including reproducing copyrighted material from Complainant’s official website.”) Based on the evidence presented, the Panel finds it more likely than not that Respondent registered and used the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and/or (iv).
Finally, Complainant argues that Respondent’s use of a privacy service and false WHOIS information, when registering the disputed domain name, further demonstrates bad faith. Past Panels have noted that although engaging a privacy service alone is not sufficient, it may demonstrate bad faith based on the overall context of the case under Policy ¶ 4(a)(iii). See Robert Half International Inc. v. robert arran, FA 1764367 (Forum Feb. 5. 2018) (“Respondent's use of a privacy registration service in an attempt to conceal his identity, though not itself dispositive, is a further indication of bad faith.”) See also Farouk Systems, Inc. v. Jack King / SLB, FA 1618704 (Forum June 19, 2015) (finding bad faith registration and use pursuant to Policy ¶ 4(a)(iii) where the respondent had provided false contact information when registering the disputed domain name). The publicly available WHOIS information demonstrates that Respondent utilized a privacy service when registering the disputed domain and the information revealed to the Forum by the Registrar, after the present Complaint was filed, uses a false Registrant name, address, and email. The Panel finds that Respondent’s use of a privacy service and false Registrant information further supports the finding of 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 <spydercostore.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: July 26, 2022
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