Gagemaker, LP v. Pavel B Novoselov
Claim Number: FA1701001714411
Complainant is Gagemaker, LP (“Complainant”), represented by Bruce J. Cannon of Sutton McAughan Deaver PLLC, Texas, USA. Respondent is Pavel B Novoselov (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gagemaker.info>, registered with Regional Network Information Center, JSC dba RU-CENTER.
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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 27, 2017; the Forum received payment on January 27, 2017.
On Jan 31, 2017, Regional Network Information Center, JSC dba RU-CENTER confirmed by e-mail to the Forum that the <gagemaker.info> domain name is registered with Regional Network Information Center, JSC dba RU-CENTER and that Respondent is the current registrant of the name. Regional Network Information Center, JSC dba RU-CENTER has verified that Respondent is bound by the Regional Network Information Center, JSC dba RU-CENTER 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 February 2, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 22, 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@gagemaker.info. Also on February 2, 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 March 6, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn 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 GAGEMAKER mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,916,831, registered Mar. 15, 2016). Respondent’s <gagemaker.info> mark is confusingly similar as it includes the entire GAGEMAKER mark.
Respondent has no rights or legitimate interests in <gagemaker.info>. Respondent does not use the disputed domain name for any bona fide offering of goods or services or a legitimate noncommercial or fair use. The domain name resolves to a website that attempts to mimic and sell counterfeit products as Complainant, harming Complainant’s business.
Respondent registered and uses the <gagemaker.info> domain name in bad faith. Respondent uses the disputed domain name to sell counterfeit products of Complainant’s, disrupting its business. Additionally, Respondent registered the domain name to intentionally attempt to attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s mark and benefiting from Complainant’s popularity and goodwill.
B. Respondent
Respondent did not submit a Response in this proceeding. The Panel notes that Respondent registered <gagemaker.info> on Nov. 23, 2013.
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 had manufactured and sold precision inspection equipment and measuring devices for the quality control industry since 1989. Complainant sells its products in over 85 countries worldwide. Complainant claims it registered the GAGEMAKER mark with the USPTO (e.g., Reg. No. 4,916,831, registered Mar. 15, 2016). Prior panels have held that a registration with the USPTO is sufficient to establish rights in a given mark. See Paisley Park Enters. v. Lawson, FA 384834 (Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). However, Respondent registered the disputed domain name on November 23, 2013, or approximately two and one half years prior to Complainant’s USPTO registration. This does not demonstrate sufficient established rights in the GAGEMAKER mark under the USPTO. Thus Complainant must be able to establish rights to the GAGEMAKER mark under the common law.
Complainant asserts that it has common law rights in the GAGEMAKER mark dating back to the first use of the mark in commerce and its registration and continued use of its domain name containing the mark. In such a situation, the Panel must determine if there is sufficient evidence to conclude that the mark has secondary meaning to establish common law rights. See Golden Title Loans, LLC dba 745Cash v. roylee, FA 1618801 (Forum June 23, 2015) (holding, “Relevant evidence of secondary meaning includes continuous and ongoing use of a mark, holding of a domain name identical to the mark, or using the mark in commerce before a disputed domain name is created.” Finding “Complainant has provided evidence of secondary meaning . . . displaying Complainant’s business registration with the state of Tennessee, showing use of the 745-CASH mark since July 2005 . . . showing the creation date as March 30, 2004 of Complainant’s own website <745cash.com>. Complainant states it first used the GAGERMAKER mark in July, 1989, the date listed on the patent obtained from the USPTO. Additionally, Complainant alleges it registered its <gagemaker.com> domain name on June 5, 1996, using it continually for the same purpose until present. Complainant has also asserted that it has spent significant marketing dollars and achieved substantial revenue from use of this mark since 2011. Based on this uncontested secondary evidence, the Panel concludes that Complainant has established rights in the GAGEMAKER mark under the common law .
Next, Complainant argues that Respondent’s <gagemaker.info> is confusingly similar as it incorporated Complainant’s entire mark. See Infineon Technologies AG v. mustafa mashari, FA 1619868 (Forum June 27, 2015) (holding “the addition of the “.info” gTLD is seen as irrelevant to its analysis”). Therefore, because Respondent only added “.info” to an otherwise unchanged mark, the Panel agrees that Respondent has not distinguished the domain name from Complainant’s mark under Policy ¶ 4(a)(i).
Complainant contends that Respondent has no rights or legitimate interests in <gagemaker.info>. The identification of Respondent in WHOIS is important to this inquiry.See Braun Corp. v. Loney, FA 699652 (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). The WHOIS identifies “Pavel B Novoselov” as the registrant. No evidence exists to show that Respondent had ever been known by the disputed domain name prior to its registration. The Panel therefore agrees that Respondent lacks rights or legitimate interests in the <gagemaker.info> domain name under Policy ¶ 4(c)(ii).
Complainant next alleges that Respondent’s actions do not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the domain name to sell counterfeit products of Complainant and thus is harming its business. Disrupting a complainant’s business by selling counterfeit products can demonstrate a lack of a bona fide offering of goods or services. 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). The disputed domain name resolves in a webpage that mimics Complainant’s <gagemaker.com> domain design.On the webpage, Respondent lists counterfeit products of Complainant for sale to consumers. Accordingly, the Panel agrees that Respondent’s mimicking and selling counterfeit products does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the name in bad faith by selling counterfeit products of Complainant’s on a similar looking webpage, thereby disrupting its business. These uses evidence bad faith. See H-D U.S.A., LLC v. Linchunming / linchunming, FA 1589214 (Forum December 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).”). As previously stated, Respondent adopted a nearly identical webpage to Complainant, and used the webpage to sell counterfeit products. The Panel therefore finds that Respondent acted in bad faith under Policy ¶ 4(a)(iii) by selling counterfeit goods and disrupting Complainant’s business.
Similarly, Complainant contends that Respondent registered the domain name, which is identical to Complainant’s trademark, to attempt to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s mark and benefiting from Complainant’s popularity and goodwill. Prior Panels have found that posing as a complainant to benefit from its popularity, and selling counterfeit materials to commercially benefit, constitutes bad faith. See 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). Respondent is posing as Complainant and is selling counterfeit products for commercial gain. The Panel therefore agrees with Complainant and finds bad faith registration and use by Respondent.
Thus Complainant has also satisfied 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 <gagemaker.info> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: March 20, 2017
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