Ontel Products Corporation v. zheng lily
Claim Number: FA1907001853199
Complainant is Ontel Products Corporation (“Complainant”), represented by Jenny T. Slocum of Dickinson Wright PLLC, District of Columbia, USA. Respondent is zheng lily (“Respondent”), Maryland, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <arctichatshop.online>, registered with GoDaddy.com, LLC.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 22, 2019; the Forum received payment on July 22, 2019.
On July 23, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <arctichatshop.online> 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 July 25, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 14, 2019 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@arctichatshop.online. Also on July 25, 2019, 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 August 16, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant, Ontel Products Corporation, develops, markets, and distributes various consumer goods. Complainant registered the ARCTIC HAT mark with the European Union Intellectual Property Office (“EUIPO”) (e.g. Reg. No. 017998157, registered Apr. 16, 2019). Respondent’s <arctichatshop.online>[i] domain name is confusingly similar as it incorporates Complainant’s entire ARCTIC HAT mark, merely adding the generic or descriptive term “shop”, and the “.online” generic top-level domain (“gTLD”).
2. Respondent has no rights or legitimate interests in the <arctichatshop.online> domain name. Respondent is not licensed or authorized to use Complainant’s ARCTIC HAT mark and is not commonly known by the domain name.
3. Additionally, Respondent does not use the domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent disrupts Complainant’s business by attempting to sell Complainant’s counterfeit products.
4. Respondent registered and uses the <arctichatshop.online> domain name in bad faith. Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the ARCTIC HAT mark. Respondent’s domain name is confusingly similar to Complainant’s ARCTIC HAT mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <arctichatshop.online> domain name and that Respondent registered and uses the 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has rights in the ARCTIC HAT mark based upon registration with the EUIPO (e.g. Reg. No. 017998157, registered Apr. 16, 2019). Registration of a mark with a trademark organization is sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Astute, Inc. v. Raviprasath C / Astute Solution Pvt Ltd, FA 1546283 (Forum Apr. 9, 2014) (finding that registrations with two major trademark agencies is evidence enough of Policy ¶ 4(a)(i) rights in the ASTUTE SOLUTIONS mark.). Therefore, the Panel holds that Complainant has rights in the ARCTIC HAT mark per Policy ¶ 4(a)(i).
Complainant next claims that Respondent’s <arctichatshop.online> domain name is confusingly similar to Complainant’s ARCTIC HAT mark as Respondent merely adds a modifier and a gTLD to the mark. Additions of a generic and/or descriptive terms and a gTLD to a complainant’s mark does not negate any confusing similarity between a domain name and the mark under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist 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.); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Complainant has shown that Respondent merely adds the term “shop”, and a “.online” gTLD to Complainant’s ARCTIC HAT mark. The Panel agrees with Complainant and finds that the <arctichatshop.online> does not contain changes that would sufficiently distinguish it from the ARCTIC HAT mark per Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <arctichatshop.online> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the <arctichatshop.online> domain name as Respondent is not authorized to use Complainant’s ARCTIC HAT mark and is not commonly known by the domain name. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a domain name under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.). Additionally, the lack of evidence in the record to indicate the respondent has been authorized to register a domain name using a complainant’s mark supports a finding that the respondent lacks rights or legitimate interests in the domain name per Policy ¶ 4(c)(ii). 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 Registrar identifies the registrant of the <arctichatshop.online> domain name as “zheng lily” and nothing in the record indicates Respondent is authorized by Complainant to use the ARCTIC HAT mark. Accordingly, under Policy ¶ 4(c)(ii), Respondent is not commonly known by the <arctichatshop.online> domain name.
Additionally, Complainant alleges Respondent fails to make a bona fide offering or goods or services or legitimate noncommercial or fair use of the <arctichatshop.online> domain name. Specifically, Complainant contends that Respondent attempts to disrupt Complainant’s business by diverting internet users to a scam website where it sells counterfeit or unauthorized versions of Complainant’s products. Use of a domain name incorporating the mark of another to disrupt that party’s business in order to sell faulty products is evidence that a respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a domain name under Policy ¶¶ 4(c)(i) or (iii). See Watts Water Technologies Inc. v. wo ci fa men zhi zao (kun shan) you xian gong si, FA 1740269 (Forum Aug. 11, 2017) (“Respondent has used the domain name to resolve to a website that mimics the color scheme associated with Complainant’s WATTS brand and displays counterfeit versions of Complainant’s products for purchase in an attempt to pass itself off as Complainant… [therefore], the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.”). Here, Complainant has provided evidence that Respondent's website prominently displays the ARCTIC HAT trademark along with photographs of Complainant’s related products in an attempt to sell faulty products. Thus, Respondent does not engage in a bona fide offering or good or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and is using the <arctichatshop.online> domain name in bad faith by disrupting Complainant’s business and diverting users to the resolving website of the domain name which sells counterfeit products. Disrupting a complainant’s business and diverting users to a the resolving website of a domain name incorporating the mark of another which sells counterfeit goods shows bad faith per Policy ¶¶ 4(b)(iii) and/or (iv). See Ontel Products Corporation v. waweru njoroge, FA1762229 (Forum Dec. 22, 2017) (“Respondent’s primary offering seem to be counterfeits of Complainant’s toy car products. Respondent’s use of the <magictrackscars.com> domain name is thus disruptive to Complainant’s business per Policy ¶ 4(b)(iii)”); see also Affliction, Inc. v. Chinasupply, FA 1223521 (Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain and thus demonstrating bad faith per Policy ¶ 4(b)(iv) by creating confusion as to the complainant’s connection with the website by selling counterfeit products). Complainant has provided evidence that Respondent is using the ARCTIC HAT mark on the resolving webpage to sell counterfeit products.
Furthermore, by using the <arctichatshop.online> domain name along with photographs of Complainant’s counterfeit products, Complainant argues that Respondent attempts to profit by creating a likelihood of confusion with Complainant’s ARCTIC HAT mark. Therefore, the holds that Respondent has acted in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
The Panel finds Complainant has 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 <arctichatshop.online> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson Panelist
Dated: August 23, 2019
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