DECISION

 

Plexus Worldwide, LLC v. Robin Lee Zaft / Earlee Bird, Inc. Plexus Products

Claim Number: FA1803001776007

 

PARTIES

Complainant is Plexus Worldwide, LLC (“Complainant”), represented by Bradley P. Hartman, Arizona, USA.  Respondent is Robin Lee Zaft / Earlee Bird, Inc. Plexus Products (“Respondent”), Utah, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <plexuschangeyourlife.com>, registered with GoDaddy.com, LLC.

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on March 14, 2018; the Forum received payment on March 14, 2018.

 

On March 15, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <plexuschangeyourlife.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 March 19, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 9, 2018 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@plexuschangeyourlife.com.  Also on March 19, 2018, 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 April 12, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

Preliminary Issue: Consent to Transfer

The Forum received correspondence from Respondent, which is identified in this proceeding as “Other Correspondence.”  In this document, Respondent purports to consent to the transfer of the <plexuschangeyourlife.com> domain name. The Panel notes that it is under no obligation to acknowledge any such documents. 

 

PARTIES' CONTENTIONS

A.   Complainant

1.    Complainant, Plexus Worldwide, LLC, began selling cosmetic and nutritional supplement products under the PLEXUS trademark to the general public in April 2008 and September 2009, respectively. Complainant offers its products online and through a direct sales, multi-level marketing network consisting of individual brand Ambassadors. Complainant has rights in the PLEXUS mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. 5,017,984, registered Aug. 9, 2016). See Compl. Ex. 2. Respondent’s <plexuschangeyourlife.com> domain name is confusingly similar to Complainant’s PLEXUS mark as it incorporates the mark in its entirety and merely adds the generic terms “change,” “your,” and “life,” which read together as “change your life.”

 

 

2.    Respondent has no rights or legitimate interests in the <plexuschangeyourlife.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the PLEXUS 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 is being used to display and offer for sale products bearing Complainant’s mark. See Compl. Exs. 7 and 8.

3.    Respondent registered and is using the <plexuschangeyourlife.com> domain name in bad faith. Respondent disrupts Complainant’s business and intentionally attempts to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Respondent creates this confusion to sell Complainant’s products without authorization. See Compl. Exs. 7 and 8. Further, Respondent clearly had actual knowledge of Complainant’s rights in the PLEXUS mark prior to registering the disputed domain name.

 

B.   Respondent

1.    Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1.    Respondent’s <plexuschangeyourlife.com> domain name is confusingly similar to Complainant’s PLEXUS mark.

2.    Respondent does not have any rights or legitimate interests in the <plexuschangeyourlife.com> domain name.

3.    Respondent registered or used the <plexuschangeyourlife.com> domain name in bad faith.

 

DISCUSSION

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 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.”).

 

 

Identical and/or Confusingly Similar

Complainant claims rights in the PLEXUS mark based upon registration of the mark with the USPTO (e.g. Reg. 5,017,984, registered Aug. 9, 2016). See Compl. Ex. 2. Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum Jul. 28, 2017) (finding that registration with the USPTO was sufficient to establish the Complainant’s rights in the HOME DEPOT mark). Therefore, the Panel holds that Complainant’s registration of the PLEXUS mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).

 

Next, Complainant argues Respondent’s <plexuschangeyourlife.com> domain name is confusingly similar to the Complainant’s PLEXUS mark, because the domain name consists entirely of the mark plus the generic terms “change,” “your,” and “life,” which read together as “change your life.” The addition of these terms is not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. YETI Coolers, LLC v. Randall Bearden, FA 16060016880755 (Forum Aug. 10, 2016) (finding that the words “powder coating” in the <yetipowdercoating.com> domain name are “merely explicative and directly refer to some of the services rendered by the Complainant” and, therefore, create an “irrefutable confusing similarity” to complainant’s YETI mark). Although Complainant did not mention in its contentions that Respondent also added a “.com” generic top-level domain name (“gTLD”) to the mark, the gTLD in addition to the generic terms is still not sufficient enough to distinguish the domain name from the mark in a Policy ¶ 4(a)(i) analysis. 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). The Panel therefore determines the <plexuschangeyourlife.com> domain name is confusingly similar to the PLEXUS mark per Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

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”).

 

Complainant argues that Respondent has no rights or legitimate interests in the <plexuschangeyourlife.com> domain name, as Respondent is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name per Policy ¶ 4(c)(ii). See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum Jul. 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). The WHOIS information of record for the <plexuschangeyourlife.com> domain name lists the registrant as “Robin Lee Zaft  /  Earlee Bird, Inc. Plexus Products,” and no information on the record indicates that Respondent owns any trademark or service mark rights in the “PLEXUS” name. See Compl. Ex. 6. The Panel therefore finds that Respondent has not been commonly known by the <plexuschangeyourlife.com> domain name under Policy ¶ 4(c)(ii).

 

Complainant also argues Respondent’s lack of rights or legitimate interests in the <plexuschangeyourlife.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 instead that the domain name is being used to display and offer for sale products bearing Complainant’s mark. See Compl. Ex. 7 and 8. Until recently, Complainant avers that the website was replete with photographs of Complainant’s products and product descriptions taken almost verbatim from its own website. See Compl. Ex. 8. Using a domain name to pass off as a complainant is not a use indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (refusing to find rights and legitimate interests in a domain name on the part of a respondent when the disputed domain name “resolves to a website that Respondent has designed to mimic Complainant’s own in an attempt to pass itself off as Complainant”); see also Fadal Engineering, LLC v. DANIEL STRIZICH,INDEPENDENT TECHNOLOGY SERVICE INC, FA 1581942 (Forum Nov. 13, 2014) (finding that Respondent’s use of the disputed domain to sell products related to Complainant without authorization “does not amount to a bona fide offering of goods or services under policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). The Panel therefore determines that Respondent does not have the rights or legitimate interests in the <plexuschangeyourlife.com> domain name per Policy ¶¶ 4(c)(i) or (iii).

 

Registration and Use in Bad Faith

Complainant contends that Respondent’s bad faith is indicated by its use of the <plexuschangeyourlife.com> domain name to pass off as Complainant in order to offer for sale Complainant’s unauthorized products (or counterfeit products) in attempt to gain commercially. Complainant claims that this use disrupts Complainant’s business and creates a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Use of a domain name that disrupts a complainant’s business to offer for sale unauthorized products by passing off as the complainant can demonstrate a respondent’s bad faith per Policy ¶¶ 4(b)(iii) and (iv). See Fossil, Inc. v. NAS, FA 92525 (Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant); see also Nokia Corp. v. Eagle,  FA 1125685 (Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)). Complainant provides screenshots of the resolving webpage, which appears to display Complainant’s registered marks and designs and purports to offer the products for sale. See Compl. Exs. 7-8. The Panel therefore finds that Respondent has registered and used the domain name in bad faith per Policy ¶¶ 4(b)(iii) and (iv).

 

Last, Complainant contends Respondent registered the <plexuschangeyourlife.com> domain name in bad faith because it had actual knowledge of Complainant’s rights in the PLEXUS mark prior to registering the <plexuschangeyourlife.com> domain name. Registration and use of an infringing domain name with actual knowledge of a mark holder’s rights can demonstrate bad faith per Policy ¶ 4(a)(iii). See Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”). Complainant asserts that, because Respondent prominently displays the PLEXUS mark on the pages resolving to the domain name, Respondent had actual knowledge of Complainant’s rights in the mark prior to registration of the disputed domain name. See Compl. Exs. 7-8. The Panel agrees and finds Respondent had actual knowledge of Complainant’s rights in the mark and thus registered the at-issue domain name in bad faith.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <plexuschangeyourlife.com> domain name be TRANSFERRED from Respondent to Complainant.

 

                                                                       

                                                                        John J. Upchurch, Panelist

                                                                        Dated:  April 25, 2018