STOCKX LLC v. Yang Jian Ze
Claim Number: FA1808001803028
Complainant is STOCKX LLC (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California. Respondent is Yang Jian Ze (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <stock-x.shop>, registered with Chengdu West Dimension Digital Technology Co., Ltd.
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.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the Forum electronically on August 24, 2018; the Forum received payment on August 24, 2018.
On August 27, 2018, Chengdu West Dimension Digital Technology Co., Ltd. confirmed by e-mail to the Forum that the <stock-x.shop> domain name (the “Domain Name”) is registered with Chengdu West Dimension Digital Technology Co., Ltd. and that Respondent is the current registrant of the name. Chengdu West Dimension Digital Technology Co., Ltd. has verified that Respondent is bound by the Chengdu West Dimension Digital Technology Co., Ltd. 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 August 31, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of September 20, 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@stock-x.shop. Also on August 31, 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 September 20, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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
Complainant registered the STOCKX mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 5,025,577) on August 23, 2016. Respondent’s Domain Name is identical or confusingly similar to Complainant’s mark as it incorporates the “stock” element of Complainant’s mark verbatim, adds a hyphen between that element and the “x” element of the mark, and adds the “.shop” generic top-level-domain (“gTLD”).
Respondent has no rights or legitimate interests in the Domain Name. Respondent is not affiliated with Complainant nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark, and Respondent is not commonly known by the Domain Name. Further, Respondent is not using the Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Respondent passes off as Complainant and sells counterfeit goods from the resolving web site in competition with Complainant’s business.
Respondent registered and uses the Domain Name in bad faith. Respondent uses the confusingly similar Domain Name to attract Internet users to his web site, where he passes off as Complainant and sells counterfeit items from that site. Respondent had actual knowledge of Complainant’s rights in the STOCKX mark prior to registering the Domain Name.
B. Respondent
Respondent did not submit a Response in this proceeding.
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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 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.”).
The Panel finds as follows with respect to the matters at issue herein.
Complainant registered its STOCKX mark with the USPTO (Reg. No. 5,025,577) on August 23, 2016. See, Amended Complaint Exhibit C. Registration of a mark with the USPTO is sufficient to establish a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (“There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). In addition to registering its STOCKX mark, Complainant also registered its distinctive logo, or design mark, with the USPTO (Reg. No. 5,026,168) on August 23, 2016. The logo consists of the word “stock” printed in lower case letters, followed by a larger green “X,” with one line of the “X” having an arrowhead tip. See, Amended Complaint Exhibit C.
Respondent’s Domain Name is confusingly similar to Complainant’s mark. It incorporates the “stock” element of Complainant’s mark verbatim, adds a hyphen between that element and the “x” element of the mark, and adds the “.shop” generic top-level-domain (“gTLD”). The addition of a hyphen and a gTLD to a complainant’s wholly incorporated mark does not distinguish a domain name from that mark for the purposes of Policy ¶ 4(a)(i). Blizzard Entertainment, Inc. v. XINXIU ZENG / haimin liang, FA 1736365 (Forum July 19, 2017) (finding that the addition of punctuation—specifically, a hyphen—did not sufficiently distinguish the disputed domain name from complainant’s registered mark), 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.”).
For the reasons discussed above, the Panel finds that the Domain Name is confusingly similar to the STOCKX mark, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent or commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) he is not affiliated with or authorized by Complainant to use Complainant’s mark in any way, (ii) he is not commonly known by the Domain Name, and (iii) he is not using the Domain Name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or other fair use because he is using the confusingly similar Domain Name to attract Internet users seeking Complainant to his web site, where he impersonates and passes himself off as Complainant and sells goods similar or identical to those commonly traded on Complainant’s web site. These allegations are supported by competent evidence.
According to the information furnished to The Forum by the registrar, the registrant of the Domain Name is “Yang Jian Ze.” This name bears no resemblance to the Domain Name. UDRP panels have consistently held that evidence of a registrant name that is materially different from the domain name at issue is competent evidence that the respondent is not commonly known by the domain name. Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name).
Complainant states that Respondent is not affiliated with it, and that it has never licensed or authorized Respondent to use its STOCKX mark in any way. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights and legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (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).
Complaint Exhibit J consists of screenshots of the web site resolving from the Domain Name on August 1, 2018.[i] The pages shown feature not only Complainant’s name but its registered logo as well, both duplicated exactly. The goods offered on the various pages of this Exhibit are similar to those offered for sale on Complainant’s web site at <stockx.com> (See, Amended Complaint Exhibit H), except that the prices are significantly lower. Complaint Exhibit K consists of screenshots of the web site resolving from the Domain Name on August 13, 2018, after Complainant notified the registrar of the infringing use of Complainant’s mark. The goods offered for sale on these pages appear to be the same as or similar to those offered on the web site as shown in Complaint Exhibit J, but the logo has been changed from that appearing on the Complaint Exhibit J pages. It appears here as “STOCK X” with a series of colored partial circles immediately to the left, with the web site name, <www.stock-x.shop> appearing immediately below the printed STOCK-X name. Regardless of which logo is used, it is clear from a comparison of Respondent’s web site to that of Complainant that Respondent is passing himself off as and impersonating Complainant. Using a domain name in a passing-off scheme for commercial gain does not qualify as using a domain name in connection with a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i) or a legitimate, noncommercial or otherwise fair use within the meaning of ¶ 4(c)(iii). Netflix, Inc. v. Irpan Panjul / 3corp.inc, FA 1741976 (Forum Aug. 22, 2017) (“The usage of Complainant’s NETFLIX mark which has a significant reputation in relation to audio visual services for unauthorised audio visual material is not fair as the site does not make it clear that there is no commercial connection with Complainant and this amounts to passing off . . . As such the Panelist finds that Respondent does not have rights or a legitimate interest in the Domain Name.”).
As shown by a comparison between Complainant’s web site as shown on Amended Complaint Exhibit H and Respondent’s web site as shown on Complaint Exhibits J and K, Respondent is also using the Domain Name to offer goods and services in direct competition with Complainant. Using a confusingly similar domain name which resolves to a webpage that directly competes with a complainant fails to qualify as a bona fide offering of goods or services. Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum Feb. 3, 2016) (finding that the complainant provides freelance talent services, and that Respondent competes with Complainant by promoting freelance talent services through the disputed domain’s resolving webpage, which is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use). General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Complainant has made its prima facie case. On the evidence presented, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of your web site or location or of a product of service on your web site or location.
The evidence of Respondent’s use of the Domain Name set forth above in the rights and legitimate interests analysis also supports a finding of bad faith use and registration. The passing off scheme described above brings Respondent squarely within the circumstances articulated by Policy ¶ 4(b)(iv). He is using the confusingly similar Domain Name to attract for commercial gain, Internet users to his web site by creating confusion as to the source, sponsorship, affiliation or endorsement of his web site. The fact that Respondent’s web site so closely mimics and impersonates Complainant make the bad faith even clearer. Policy 4(b) recognizes that mischief can manifest in many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldwcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (Jan. 5, 2005). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and passing oneself off as a complainant is in and of itself evidence of bad faith registration and use of the Domain Name. Target Brands, Inc. v. JK Internet Servs., FA 349108 (Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”).
Respondent, of course is also using the passing off scheme to compete directly with Complainant and this also has been held to be evidence of bad faith. In light of the open ended, non-exclusive nature of Policy ¶ 4(b), UDRP panels have consistently held that using a confusingly similar domain name to offer goods and services in direct competition with a complainant for a registrant’s benefit supports a finding of bad faith for the purposes of Policy ¶ 4(a)(iii). Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”).
Finally, given the notoriety of Complainant and its mark, and the fact that the Domain Name and the resolving web site so closely mimic and impersonate Complainant’s mark and its presence on the Internet, it is obvious that Respondent had actual knowledge of Complainant and its STOCKX mark when it registered the Domain Name on March 28, 2018. (See, Complaint Exhibit A for date of registration.) As stated above, the non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name is evidence of bad faith for the purposes of 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).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
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 <stock-x.shop> Domain Name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
September 24, 2018
[i] The Complaint, at page 5, identifies Complaint Exhibit J as excerpts from pages of Complainant’s Facebook, Twitter and Instagram pages, but the pages shown in that exhibit all bear the www.stock-x.shop legend and the date August 1, 2018 at the bottom, and the prices shown for the various items offered for sale are given in Euros, not U.S. dollars, which is the currency shown on the Amended Complaint Exhibit H examples of Complainant’s web site at <stockx.com>. It appears that Complaint Exhibit J is in fact a collection of screenshots of Respondent’s web site as of August 1, 2018. There is a similar discrepancy with respect to Exhibit K. The Amended Complaint refers to an Exhibit L but there is no Exhibit L among the Annexes, and the Exhibit K appearing in the Annexes fits the verbal description of Exhibit L in the Amended Complaint. The Panel proceeds on the basis that Complaint Exhibits K and L as described in the text of the Amended Complaint are in fact Complaint Exhibits J and K, respectively.
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