Maurice Sporting Goods, Inc. v. Xiaodong Peng
Claim Number: FA1506001625928
Complainant is Maurice Sporting Goods, Inc. (“Complainant”), represented by Scott W. Smilie of Patzik, Frank & Samotny Ltd., Illinois, USA. Respondent is Xiaodong Peng (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <r2f.net>, registered with Go Montenegro Domains, 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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 24, 2015; the Forum received payment on June 24, 2015.
On June 25, 2015, Go Montenegro Domains, LLC confirmed by e-mail to the Forum that the <r2f.net> domain name is registered with Go Montenegro Domains, LLC and that Respondent is the current registrant of the name. Go Montenegro Domains, LLC has verified that Respondent is bound by the Go Montenegro Domains, 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 30, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 20, 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@r2f.net. Also on June 30, 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 Forum transmitted to the parties a Notification of Respondent Default.
On July 22, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, 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.
A. Complainant
(i) Complainant is an established distributor of fishing tackle, shooting sports accessories, and other outdoor sporting and athletic goods to the strongest mass merchandisers in the retail industry. Complainant has registered the R2F mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,342,304, registered May 28, 2013). Complainant also owns common law rights in the mark that predate Respondent’s registration of the disputed domain name. The <r2f.net> domain name is confusingly similar to the R2F mark as it fully incorporates Complainant’s mark and merely adds the generic top-level domain (“gTLD”) “.net.”
(ii) Respondent has no rights or legitimate interests in the <r2f.net> domain name. Respondent is not commonly known by the disputed domain name or any variant of the R2F mark. Additionally, Respondent does not make a bona fide offering of any goods or services through the disputed domain name or provided a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to redirect Internet users to generic third-party websites, some of which compete directly with Complainant and its business.
(iii) Respondent has registered and is using the disputed domain name in bad faith. Respondent has engaged in a pattern of bad faith registration and use of disputed domain name. Further, Respondent’s disputed domain name competes and disrupts Complainant’s business. Finally, Respondent uses the disputed domain name to intentionally attract and confuse Internet users for commercial profit.
B. Respondent
Respondent did not submit a response in this proceeding. The Panel notes that the <r2f.net> domain name was registered on September 3, 2008.
Complainant established that it had rights in the mark contained in the disputed domain name. The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
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 is an established distributor of fishing tackle, shooting sports accessories, and other outdoor sporting and athletic goods to the strongest mass merchandisers in the retail industry. Complainant has registered the R2F mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,342,304, registered May 28, 2013). The Panel agrees that Complainant’s trademark registration with the USPTO is sufficient in demonstrating its rights in the R2F mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
Complainant’s R2F mark is predated by Respondent’s registration of the <r2f.net> domain name. Complainant registered the R2F mark on May 28, 2013. Respondent registered the disputed domain name on September 3, 2008. As such, Complainant argues its rights in the R2F mark based on common law rights, which is permitted when a complainant’s trademark registration fails to predate a respondent’s registration of a disputed domain name. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant argues that because the R2F mark has been continuously used by Complainant in connection with R2F goods since at least July 20, 2005, it has demonstrated common law rights in the mark for the purposes of Policy ¶ 4(a)(i). Additionally, Complainant asserts that it has expended substantial time and effort since 2005 developing and maintaining goodwill in the R2F mark by advertising and promoting the mark in association with various fishing gear and equipment. The Panel notes that Complainant has failed to provide any evidence to support these contentions. Finally, Complainant mentions that it first filed for protection of its R2F mark in connection with the stylized READY2FISH R2F mark and design in October 6, 2005, and that that mark was registered March 27, 2007. Past panels have found that continued use of a mark and advertising done to promote a mark can establish a complainant’s common law rights. See Surecom Corp. NV v. Rossi, FA 1352722 (Nat. Arb. Forum Nov. 29, 2010) (holding that complainant had acquired secondary meaning in the mark, thereby establishing common law rights in the mark for purposes of Policy ¶ 4(a)(i), as a result of complainant’s continuous use of the CAM4 mark since 1999); see also AOL LLC v. DiMarco, FA 1275978 (Nat. Arb. Forum Sept. 9, 2009) (finding that the manner and amount of advertising done to promote a mark may suggest secondary meaning). Accordingly, as the Panel agrees with Complainant’s contentions in the absence of Respondent's response the Panel finds that Complainant has demonstrated common law rights to the R2F mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that the <r2f.net> domain name is confusingly similar to the R2F mark as it fully incorporates Complainant’s mark and merely adds the generic top-level domain (“gTLD”) “.net.” The Panel agrees that the addition of a gTLD does not remove Respondent’s domain name from the realm of confusing similarity in relation to Complainant’s R2F mark pursuant to Policy ¶ 4(a)(i). See Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Nat. Arb. Forum Sept. 7, 2005) (“[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.”). Accordingly, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s R2F mark pursuant to 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), 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.”).
Complainant alleges that Respondent has no rights or legitimate interests in the <r2f.net> domain name. First, Complainant argues that Respondent is not commonly known by the disputed domain name or any variant of the R2F mark. Further, Complainant has not authorized Respondent to use the R2F mark in association with the disputed domain name. The Panel notes that the WHOIS information merely lists “Xiaodong Peng” as registrant. As Respondent has failed to provide any evidence for the Panel’s consideration, the Panel finds no basis in the available record to find Respondent commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Further, Complainant asserts that Respondent has failed to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). Respondent is using the disputed domain name for commercial gain to divert consumers seeking Complainant’s products to the websites of a plurality of third parties, some of whom directly compete with Complainant. The Panel notes that Complainant has failed to provide any evidence of such behavior. As the Panel agrees with Complainant’s unsupported allegations in the absence of Respondent's response, the Panel finds that Respondent’s behavior is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). SeeTM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
Complainant asserts that Respondent has engaged in a pattern of bad faith registration and use of domain names, thereby engaging in conduct proscribed by Policy ¶ 4(b)(ii). Complainant provides evidence that Respondent has been unsuccessful in at least three previous UDRP cases wherein the panels ruled adversely against Respondent. See Yahoo! Inc. v. Xiaodong Peng, FA 1428038 (Mar. 16, 2012) (finding that Respondent’s registration of yahoorezinr.com domain name was done in bad faith); see also AOL Inc. v. Xiaodong Peng, FA 1432947 (Apr. 20, 2012) (finding that Respondent’s registrations for uffingtonpost.com and huffingtonpostt.com domain names were done in bad faith); see also WordPress Foundation v. Xiaodong Peng, FA 1393152 (July 14, 2011) (finding that Respondent’s registration of wordpress.org domain name was done in bad faith). Past panels have found that a Respondent’s prior UDRP proceedings are sufficient evidence of a pattern of bad faith registration pursuant to Policy ¶ 4(b)(ii). See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”). Accordingly, the Panel finds that Respondent has engaged in bad faith pursuant to Policy ¶ 4(b)(ii).
Complainant argues that Respondent’s use of the disputed domain name competes and disrupts Complainant’s business pursuant to Policy ¶ 4(b)(iii). Complainant states that Respondent does not operate a website directly under the disputed domain name, but rather uses the disputed domain name to immediately direct visitors, who are no doubt seeking Complainant’s website and products, to third party websites, some of which directly compete with Complainant. Complainant contends that Respondent’s attempt to compete with and disrupt Complainant’s business has resulted in substantial losses in revenue for Complainant. Again, the Panel notes that Complainant has failed to submit any evidence in support of this contention. Past panels have found that a Respondent demonstrated bad faith by registering the disputed domain name with the intent to disrupt the complainant’s business. See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)). Therefore, the Panel finds that Respondent’s registration of the disputed domain name competes and disrupts Complainant’s business per Policy 4(b)(iii).
Complainant argues that Respondent has intentionally attempted to attract for commercial gain, Internet users to Respondent’s website, which automatically redirects users to third party websites, some of which are direct competitors of Complainant. By redirecting Internet users, Respondent is commercially benefitting from Complainant’s well-known mark by deliberately attempting to deceive users to believe that these third parties are either endorsed or affiliated with Complainant. Past panels have found bad faith pursuant to Policy ¶ 4(b)(iv), where the respondent took advantage of the confusing similarity between the disputed domain name and a complainant’s mark and presumably commercially benefited from the misleading domain name by receiving referral fees. See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”). Accordingly, the Panel concludes that Respondent engaged in bad faith pursuant to Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <r2f.net> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: August 1, 2015
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