Griffin Technology, Inc. v. fengwubiao / kaixin
Claim Number: FA1412001596599
Complainant is Griffin Technology, Inc. (“Complainant”), represented by Martha B. Allard of Bass, Berry & Sims PLC, Tennessee, USA. Respondent is fengwubiao / kaixin (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <griffinsurvivorshop.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Hon. Karl V. Fink (Ret) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 22, 2014; the National Arbitration Forum received payment on December 22, 2014.
On December 25, 2014, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <griffinsurvivorshop.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 January 2, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 22, 2015 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@griffinsurvivorshop.com. Also on January 2, 2015, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 29, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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.
Complainant
i. Complainant owns the GRIFFIN and SURVIVOR marks through its trademark registrations with the United States Patent and Trademark Office (“USPTO”).
1. GRIFFIN (Reg. No. 3,938,740, registered March 29, 2011).
2. SURVIVOR (Reg. No. 4,405,866, registered September 24, 2013).
ii. Complainant uses its marks in connection with its business in the retail of consumer electronics and accessories for computers, smartphones, tablets, mobile devices and wearable technology.
i. Policy ¶ 4(a)(i)
1. The <griffinsurvivorshop.com> domain name is confusingly similar to Complainant’s GRIFFIN and SURVIVOR marks, because Respondent puts the marks together and adds the generic term “shop” to the mark.
ii. Policy ¶ 4(a)(ii)
1. Respondent lacks rights or legitimate interests in the disputed domain name.
2. Respondent is not commonly known by the <griffinsurvivorshop.com> domain name. Complainant has not licensed or authorized Respondent to use the GRIFFIN or SURVIVOR marks.
3. Respondent does not provide any bona fide offering of goods or services, or make a legitimate noncommercial or fair use of the disputed domain name.
4. Respondent uses the disputed domain name to offer counterfeit goods.
iii. Policy ¶ 4(a)(iii)
1. Respondent uses the disputed domain name to intentionally divert Internet users to its own website, which offers counterfeit goods, for its own commercial gain.
2. Respondent must have had constructive or actual knowledge of Complainant’s rights in the GRIFFIN and SURVIVOR marks, due to the fact that Respondent used the unique combination of Complainant’s marks.
Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant uses its GRIFFIN and SURVIVOR marks in connection with its business in the retail of consumer electronics and accessories for computers, smartphones, tablets, mobile devices and wearable technology. Complainant claims to own each of the marks through its trademark registrations with the USPTO. (GRIFFIN Reg. No. 3,938,740, registered March 29, 2011) (SURVIVOR Reg. No. 4,405,866, registered September 24, 2013). Complainant’s argument is supported by previous UDRP decisions. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”). Accordingly, even though Respondent operates in China, the Panel finds that Complainant’s USPTO registrations satisfy the requirements of Policy ¶ 4(a)(i).
Complainant argues that the <griffinsurvivorshop.com> domain name is confusingly similar to Complainant’s GRIFFIN and SURVIVOR marks, because Respondent has simply combined the marks and added the generic term “shop”. The disputed domain name also differs from the mark given the affixation of the generic top-level domain (“gTLD”) “.com.” Panels have generally found that combining a complainant’s two marks and adding a generic term, are not significant changes to escape the realm of confusing similarity, and that the mere addition of a gTLD is irrelevant to the Policy ¶ 4(a)(i) analysis. See Fitness Anywhere, Inc. v. Mode Athletics, FA 1320667 (Nat. Arb. Forum May 20, 2010) (“Respondent’s <trxsuspensiontraining.com> disputed domain name is confusingly similar to Complainant’s TRX and SUSPENSION TRAINING marks because it combines Complainant’s marks and merely adds the generic top-level domain “.com.”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). As such, the Panel finds that the <griffinsurvivorshop.com> domain name is confusingly similar to Complainant’s GRIFFIN and SURVIVOR marks under Policy ¶ 4(a)(i).
Complainant has proven this element.
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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
It is Complainant’s position that Respondent lacks rights and legitimate interests in the disputed domain name. In so arguing, Complainant alleges that Respondent is not commonly known by the <griffinsurvivorshop.com> domain name. The WHOIS information identifies “fengwubiao” as the registrant of the disputed domain name. Complainant claims that Respondent is neither licensed nor authorized to use the GRIFFIN or SURVIVOR marks. Given this information and the lack of response from Respondent, the Panel finds that Respondent is not commonly known by the <griffinsurvivorshop.com> domain name pursuant to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Complainant argues that Respondent has not provided any bona fide offering of goods or services, or made a legitimate noncommercial or fair use of the disputed domain name. Complainant alleges that Respondent uses the disputed domain name to intentionally attract Internet users to its own website for commercial gain, in which Respondent sells counterfeit versions of Complainant’s goods. Past panels have found no bona fide offering of goods or services, or legitimate noncommercial or fair use of a disputed domain name where a respondent engages in such conduct. See Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).”). Accordingly, the Panel finds that Respondent use of the domain name is not a bona fide offering of goods or services, or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii)
Complainant has proven this element.
Complainant argues that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii). Complainant argues that Respondent uses the <griffinsurvivorshop.com> domain name to attract Internet users to its own website by offering counterfeit versions of Complainant’s own products for its own personal gain. Complainant claims that such conduct is equivalent to bad faith under Policy ¶ 4(b)(iv). Complainant’s argument is supported by past UDRP panel decisions. See H-D Michigan, LLC v. Ross, FA 1250712 (Nat. Arb. Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion). Consequently, the Panel finds that Complainant is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant argues that Respondent must have had either actual or constructive knowledge of Complainant’s rights in the GRIFFIN and SURVIVOR marks, due to the fact that Respondent used the unique combination of Complainant’s marks and Respondent is using the disputed domain name to sell counterfeit versions of Complainant’s products. Panels have held that constructive knowledge is not enough evidence of bad faith. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."). However, the Panel agrees that the combination of Complainant’s marks to create the domain name, and the sale of counterfeit versions of Complainant’s products, proves Respondent had actual knowledge of Complainants rights in the marks, and concludes that Respondent registered the <griffinsurvivorshop.com> domain name in bad faith according to Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii)."); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name").
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <griffinsurvivorshop.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: February 3, 2015
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