Spectrum Brands, Inc. v. Guo Li Bo
Claim Number: FA1711001760233
Complainant is Spectrum Brands, Inc. (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA. Respondent is Guo Li Bo (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <spectrunnbrands.com>, registered with HiChina Zhicheng Technology Limited.
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 November 28, 2017; the Forum received payment on November 28, 2017.
On December 1, 2017, HiChina Zhicheng Technology Limited confirmed by e-mail to the Forum that the <spectrunnbrands.com> domain name is registered with HiChina Zhicheng Technology Limited and that Respondent is the current registrant of the name. HiChina Zhicheng Technology Limited has verified that Respondent is bound by the HiChina Zhicheng Technology Limited 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 December 5, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 26, 2017 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@spectrunnbrands.com. Also on December 5, 2017, 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 December 29, 2017, 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, Spectrum Brand, Inc., is a diversified company that manages numerous consumer brands. Complainant has rights in the SPECTRUM BRANDS mark based upon its registration of the mark with China’s State Administration for Industry and Commerce (“SAIC”) (e.g. Reg. No. 12600882, registered Feb. 14, 2015). See Compl. Ex. 1H. Complainant also claims common law rights in the mark based upon long-standing, continuous use of the mark since 2005. Respondent’s <spectrunnbrands.com> domain name is confusingly similar to Complainant’s SPECTRUM BRANDS mark, as the domain name contains the mark in its entirety with an intentional misspelling, merely replacing the letter “m” with two “n”s, and adding the “.com” generic top-level domain (“gTLD”).
ii) Respondent has no rights or legitimate interests in the <spectrunnbrands.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the SPECTRUM BRANDS mark in any manner. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the domain name does not resolve to an active website, and an email address associated with the domain name was used to perpetrate a fraudulent scheme. See Compl. Ex. 8-14 (emails pertaining to fraudulent scheme) & Compl. Ex. 16 (screenshot of inactive webpage).
iii) Respondent registered and is using the <spectrunnbrands.com> domain name in bad faith, as Respondent has engaged in a pattern of such conduct, and because Respondent prevented Complainant from reflecting its SPECTRUM BRANDS mark in the domain name. See Compl. Ex. 15 (prior UDRP decision against Respondent). Further, Respondent used the email address associated with the domain name to engage in a fraudulent scheme, thereby disrupting Complainant’s business by acting in opposition to Complainant, and by selling counterfeit products. See Compl. Ex. 8-14. Finally, the fact that Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.
B. Respondent
Respondent failed to submit a Response in this proceeding. The Panel notes that Respondent registered the disputed domain name on October 23, 2017. See Compl. Ex. 6.
Complainant established that it had rights in the mark contained in the disputed domain name. 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."
Preliminary Issue 1: Language of Proceeding
The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese.
Complainant has alleged that because Respondent is conversant and proficient in English, the proceeding should be conducted in English. The Panel under UDRP Rule 11(a) has the discretion to determine the appropriate language of the proceedings taking into consideration the particular circumstances of the administrative proceeding. See FilmNet Inc. v Onetz, FA 96196 (Forum Feb. 12, 2001 (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English). Complainant contends Respondent is capable of proceeding in English because Respondent registered the domain name and used it to pass off as Complainant by sending communications to Amazon.com, in English, claiming to be the brand owner. See Compl. Ex. 8 and 10. Further, a prior UDRP panel found Respondent could proceed in English. See Spike’s Holding, LLC v. Nexperian Holding Limited, FA 1736008 (Forum, Jul. 21, 2017). At the time of filing, Respondent was known as Nexperian Holding Limited (Compl. Ex. 6) and has since changed its name to Guo Li Bo (Compl. Ex. 18 and 19).
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, in the absence of Response and no objection to the Complainant's request for the language of proceeding, the Panel decides that the proceeding should be in English.
Preliminary Issue 2: Consent to Transfer
In correspondence with the Forum, Respondent consented to transfer the <spectrunnbrands.com> domain name to Complainant. However, the Panel notes that Complainant has not implicitly consented in its Complaint to the transfer of the disputed domain name without a decision on the merits by the Panel. The Panel finds that the “consent-to-transfer” approach is but one way for cybersquatters to avoid adverse findings against them. In Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assocs., FA 1195954 (Forum July 17, 2008), the panel stated that:
Respondent has admitted in his response to the complaint of Complainant that it is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy. However, in the facts of this case, the Panel is of the view that the transfer of the disputed domain name deserves to be along with the findings in accordance with the Policy.
Therefore, the Panel decides that it would like to analyze the case under the elements of the UDRP.
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 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 (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 claims rights in the SPECTRUM BRANDS mark based upon registration of the mark with the SAIC (e.g. Reg. No. 12600882, registered Feb. 14, 2015). See Compl. Ex. 1H. Registration of a mark with the SAIC is sufficient to establish rights in that mark. See Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (determining that “Complainant has rights in the KOHLER mark through registration with USPTO and SAIC.”). The Panel therefore holds that Complainant’s registration of the SPECTRUM BRANDS mark with the SAIC is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next argues Respondent’s <spectrunnbrands.com> domain name is confusingly similar to the SPECTRUM BRANDS mark, as the name contains the mark in its entirety with an intentional misspelling, merely replacing the letter “m” with two “n”s, and adding the “.com” gTLD. Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Acme Lift Company, L.L.C. v. VistaPrint Technologies Ltd, FA 1607039 (Forum Apr. 11, 2015) (stating, “Where a respondent has created a domain name in an effort to visually deceive Internet users via a simple misspelling (and when such misspellings are visually similar to the mark), a finding of confusing similarity under Policy ¶ 4(a)(i) is appropriate.”); see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them.”). The Panel therefore determines the <spectrunnbrands.com> domain name is confusingly similar to the SPECTRUM BRANDS 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), 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 (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 (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 argues that Respondent has no rights or legitimate interests in the <spectrunnbrands.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the SPECTRUM BRANDS mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. 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). The WHOIS information of record identifies Respondent as “Nexperian Holding Limited / Nexperian Holding Limited.” See Compl. Ex. 6. Additionally, lack of evidence in the record to indicate that the respondent has been authorized to register a domain name using a complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in said domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel may therefore find under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <spectrunnbrands.com> domain name.
Complainant further argues Respondent’s lack of rights or legitimate interests in the <spectrunnbrands.com> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends that Respondent fails to make an active use of the domain name at issue. Inactive holding of a confusingly similar domain name generally does not demonstrate rights or legitimate interests in the name per Policy ¶¶ 4(c)(i) or (iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). Complainant provides a screenshot of the resolving domain, which displays the message “This site can’t be reached” and “DNS address could not be found.” See Compl. Ex. 16. The Panel therefore finds that Respondent inactively holds the domain name, thus does not have rights or legitimate interests in the domain name per Policy ¶¶ 4(c)(i) or (iii).
Complainant also argues that Respondent uses an email address associated with the domain name was used to perpetrate a fraudulent scheme. Complainants may use evidence of passing off to further a fraudulent scheme to evince a lack of any bona fide offering of goods or services or legitimate noncommercial or fair use. See Emerson Electric Co. v. Adilcon Rocha, FA 1735949 (Forum July 11, 2017) (finding that respondent’s attempt to pass off as complainant through emails does not constitute a bona fide offering of goods or services and, as such, respondent lacked rights or legitimate interests in the disputed domain name); see also Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Complainant provides various emails between various parties, and it appears as though Respondent used the domain name in connection with an email address in attempts to pass off as Complainant and remove its merchandise from the <amazon.com> domain and replace it with its own counterfeit merchandise. See Compl. Ex. 8-14. Respondent’s reasoning for these actions remains unknown. Accordingly, the Panel finds that Respondent attempted to pass off as Complainant over email in furtherance of a fraudulent scheme, failing to provide a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. 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 has no rights or legitimate interests in the disputed domain name.
Complainant contends Respondent’s registration of the <spectrunnbrands.com> domain name is part of a pattern of bad faith registration and use. A pattern of bad faith registration can be established by a showing of prior adverse UDRP proceeding, and such a pattern can indicate bad faith per Policy ¶ 4(b)(ii). See Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum Nov. 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)). Complainant includes an example of a prior UDRP case where Respondent, Nexperian Holding Limited, was ordered to transfer ownership of a domain name. See Compl. Ex. 15. Accordingly, the Panel determines that the registration and use of the <spectrunnbrands.com> domain name is part a of pattern and is evidence of bad faith per Policy ¶ 4(b)(ii).
Further, Complainant contends that Respondent’s registration and use of the <spectrunnbrands.com> domain name is in bad faith, as Respondent’s sale of counterfeit products amounts to an attempt to disrupt Complainant’s business to confuse and attract Internet users and compete with Complainant. Use of a domain name to sell counterfeit goods can be evidence of bad faith under Policy ¶¶ 4(b)(iii) and (iv). See H-D U.S.A., LLC v. Linchunming / linchunming, FA1411001589214 (Forum Dec. 22, 2014) (“As mentioned above, Respondent uses the domain name to promote counterfeit goods like those offered by Complainant. Doing so disrupts Complainant’s business and demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iii).”); see also H-D Michigan, LLC v. Ross, FA 1250712 (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). The Panel recalls that Complainant provides various emails between various parties, and it appears as though Respondent used the domain name in connection with an email address in attempts to pass off as Complainant and remove Complainant’s merchandise from the <amazon.com> domain and replace it with its own counterfeit merchandise. See Compl. Ex. 8-14. The Panel agrees with Complainant’s contentions and provided exhibits and finds Respondent’s behavior demonstrates bad faith registration and use of the disputed domain pursuant to Policy ¶¶ 4(b)(iii) and/or (iv).
Finally, Complainant contends that in light of the fame and notoriety of Complainant's SPECTRUM BRANDS mark, it is inconceivable that Respondent could have registered the <spectrunnbrands.com> domain name without actual knowledge of Complainant's rights in the mark. Actual knowledge of a complainant's rights in the mark prior to registering a confusingly similar domain name can evidence bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Complainant claims that the fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration. The Panel agrees and finds Respondent had actual knowledge of Complainant’s rights in the mark and thus registered the name in bad faith per 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 <spectrunnbrands.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: January 5, 2018
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