Leatherman Tool Group, Inc. v. Domain Admin / Whois Privacy Corp.
Claim Number: FA1609001693727
Complainant is Leatherman Tool Group, Inc. (“Complainant”), represented by Yana Brutman of TM Defence, LLC, Russia. Respondent is Domain Admin / Whois Privacy Corp. (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <leathermanshop.org>, registered with Internet Domain Service BS Corp.
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 September 14, 2016; the Forum received payment on September 14, 2016.
On September 15, 2016, Internet Domain Service BS Corp confirmed by e-mail to the Forum that the <leathermanshop.org> domain name is registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the name. Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service BS Corp 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 September 19, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 11, 2016 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@leathermanshop.org. Also on September 19, 2016, 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 October 17, 2016, 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 has rights in its LEATHERMAN mark through its registration of the mark with the Russian Federal Institute of Industry Property (“RFIIP”) (Reg. No. I63206, date of priority Sept. 13, 1996, date of expiration Sept. 13, 2026). Respondent’s <leathermanshop.org> domain name is confusingly similar to Complainant’s mark because it merely adds the descriptive term “shop” and the “.org” generic top-level domain (“gTLD”) to the fully incorporated LEATHERMAN mark.
ii) Respondent has no rights or legitimate interests in the domain name. Complainant has not authorized Respondent to use its LEATHERMAN mark in any fashion. 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. Rather, Respondent is using the domain name to sell hand tools with the LEATHERMAN trademark, some of which are counterfeit versions of Complainant’s products.
iii) Respondent registered and is using the disputed domain name in bad faith. First, Respondent uses the domain name to sell competing products, some of which are counterfeit versions of Complainant’s products; such use by Respondent constitutes an attempt by Respondent to pass itself off as Complainant. Second, Respondent was aware of Complainant’s mark when it registered the <leathermanshop.org> domain name as Respondent features Complainant’s “history,” as well as “worldwide warranty,” along with Complainant’s products on the resolving website of the disputed domain.
B. Respondent
Respondent did not submit a Response in this proceeding.
Respondent registered the <leathermanshop.org> domain name on June 16, 2014.
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."
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 asserts that it has rights in the LEATHERMAN mark through its registration of the mark with the RFIIP (Reg. No. I63206, date of priority Sept. 13, 1996, date of expiration Sept. 13, 2026). Panels have found that the registration of a mark with a governmental authority confers rights in the mark under Policy ¶ 4(a)(i), even if it is not the governmental authority of the country that the respondent operates in. See Glashütter Uhrenbetrieb GmbH v. li zilin / QQ869292929, FA 1575562 (Forum Sept. 23, 2014) (holding, “Trademark registrations with a governmental authority are sufficient to prove rights in a mark pursuant to Policy ¶4(a)(i)”); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Thus, the Panel determines that Complainant’s registration with the RFIIP confers rights in the LEATHERMAN mark under Policy ¶ 4(a)(i).
Complainant asserts that Respondent’s <leathermanshop.org> domain name is confusingly similar to its LEATHERMAN mark. Complainant argues that the addition of the descriptive word “shop” and that the addition of the “.org” gTLD does nothing to distinguish the disputed domain name from Complainant’s fully incorporated mark. Panels have found that that adding descriptive words or a gTLD is not sufficient to differentiate a domain name featuring a complainant’s mark under Policy ¶ 4(a)(i). See Am. Online, Inc. v. Karandish, FA 563833 (Forum Nov. 2, 2005) (finding that the addition of the descriptive term “talk” to a registered mark does not sufficiently distinguish a domain name under Policy ¶ 4(a)(i)); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). As such, the Panel finds that Respondent’s <leathermanshop.org> domain name is confusingly similar to Complainant’s LEATHERMAN mark.
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 <leathermanshop.org> domain name. Complainant states that it has not authorized Respondent to use its LEATHERMAN mark in any fashion. The Panel notes that the WHOIS information at <leathermanshop.org> lists “Domain Admin” as the registrant with “Whois Privacy Corp.” as the organization. Panels have found that a respondent is not commonly known by a domain name based on the WHOIS information and lack of contradicting evidence in the record. See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1502001605239 (Forum Mar. 22, 2015) (“WHOIS information for the at-issue domain name lists ‘Domain Admin / Whois Privacy Corp.’ as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <google-status.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii).”). The Panel thus finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant asserts that Respondent is not using the <leathermanshop.org> domain name to make a bona fide offering of goods and services under Policy ¶ 4(c)(i), or using it for legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Complainant alleges that Respondent uses the domain name to illegally sell Complainant’s products, some of which may be counterfeit versions of Complainant’s products, in Russia. Panels have found that neither selling products that are directly competitive with a complainant’s business nor a respondent’s attempt to pass itself off as a complainant confers rights or legitimate interests in a domain name. See Fadal Engineering, LLC v. Strizich, 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).”); 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)). Panels have also found that a respondent’s use of a domain to sell counterfeit versions of a complainant’s products does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See eLuxury.com Inc. v. WangJunJie, FA 1075554 (Forum Nov. 30, 2007) (concluding that the sale of counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name). Accordingly, the Panel determines that Respondent has not been making a bona fide offering of goods and services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) and (iii).
Complainant argues that Respondent uses the domain name to sell competing products, some of which are counterfeit versions of Complainant’s products. In so arguing, Complainant asserts that Respondent uses the domain name to make an attempt to pass itself off as Complainant. Panels have determined that a respondent’s use of a domain name to sell competing and/or counterfeit products, and a respondent’s use of a domain name to pass itself off as a complainant, are evidence of bad faith registration and use under Policy ¶¶ 4(b)(iii) and (iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark); see also Louis Vuitton Malletier S.A., L.L.C. v. David, FA 1138296 (Forum Mar. 5, 2008) (concluding that the complainant’s business is disrupted by the respondent’s registration and use of the disputed domain name for the purpose of selling counterfeit products); see also Affliction, Inc. v. Chinasupply, FA 1223521 (Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain by creating confusion as to the complainant’s connection with the website by selling counterfeit products); see also 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.”). Thus, the Panel finds that Respondent registered and is using the domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Complainant contends that Respondent had at least constructive knowledge of Complainant’s rights in the LEATHERMAN mark when it registered the <leathermanshop.org> domain name. Complainant alleges that Respondent’s website offers to sell Complainant’s products, and that Respondent’s website explicitly features Complainant’s “history” and “worldwide guarantee.” While constructive notice is insufficient alone to make a finding of bad faith under the UDRP, the Panel infers actual notice when a respondent uses the complainant’s mark or if the respondent’s website makes it clear that it had notice. See Twentieth Century Fox Film Corporation and Fox International Channels (US), Inc. v. Daniel Pizlo / HS, FA1412001596020 (Forum Jan. 27, 2015) (finding that the respondent must have had actual knowledge of the complainant and its rights in the FOX LIFE mark, where the respondent was using the disputed domain name to feature one of the complainant’s videos on its website, indicating that the respondent had acted in bad faith 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”). Accordingly, the Panel determines that Respondent had actual notice of Complainant’s LEATHERMAN mark when it registered the disputed domain name, and that such actual notice constitutes bad faith under 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 <leathermanshop.org> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: October 25, 2016
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