Hanna Andersson LLC v. Joe Mingo
Claim Number: FA1911001873107
Complainant is Hanna Andersson LLC (“Complainant”), represented by William C. Rava, Washington, United States. Respondent is Joe Mingo (“Respondent”), New Jersey, United States.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain name at issue are <hannaandersson.org>, <hannaandersson.net>, and <hannaandersson.online>, registered with NameCheap, Inc..
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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 26, 2019; the Forum received payment on November 26, 2019.
On November 26, 2019, NameCheap, Inc. confirmed by e-mail to the Forum that the <hannaandersson.org>, <hannaandersson.net>, and <hannaandersson.online> domain names are registered with NameCheap, Inc. and that Respondent is the current registrant of the names. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 December 2, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 23, 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@hannaandersson.org, postmaster@hannaandersson.net, postmaster@hannaandersson.online. Also on December 2, 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 December 26, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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 names be transferred from Respondent to Complainant.
A. Complainant
The Complainant is an apparel brand that designs, produces, and sells high-end children’s clothing through its website, catalogs, and retail locations globally. Complainant asserts rights in the HANNA ANDERSSON trademark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,478,085, registered on Feb. 23, 1988). Respondent’s <hannaandersson.org>, <hannaandersson.net>, and <hannaandersson.online> domain names are identical or confusingly similar to Complainant’s trademark as they includes the HANNA ANDERSSON mark in its entirety, merely adding “.org,” “.net,” or “.online” generic top-level domains (“gTLDs”).
Respondent lacks rights or legitimate interests in the <hannaandersson.org>, <hannaandersson.net>, and <hannaandersson.online> domain names. Respondent is not authorized or licensed to use Complainant’s HANNA ANDERSSON trademark and is not commonly known by the disputed domain name. Next, Respondent fails to use the disputed domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s disputed domain name webpages each resolve to an inactive page which states “This site can’t be reached.”
Respondent registered and uses the <hannaandersson.org>, <hannaandersson.net>, and <hannaandersson.online> domain names in bad faith. Respondent participates in a fraudulent phishing scheme by using a script placed on Complainant’s official billing website to skim personal information of Complainant’s customers and send the information to the <hannaandersson.org> domain name. Finally, the resolving webpages of the disputed domain names are all inactive.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registrations:
No. 1,478,085 HANNA ANDERSSON (word), registered February 23, 1988 for services in class 42;
No. 1,582,686 HANNA ANDERSSON (word), registered February 13, 1990 for goods in class 25,
No. 4,501,874 HANNA ANDERSSON (word), registered March 25, 2014 for goods in class 25,
No. 5,324,024 HANNA ANDERSSON (word), registered October 31, 2017 for goods in class 24,
No. 5,727,941 HANNA ANDERSSON (word), registered April 16, 2019 for goods in class 25, and
No. 5,850,149 HANNA ANDERSSON (word), registered September 3, 2019 for services in class 35.
Tthe disputed domain names were registered on November 1, 2019 (<hannaandersson.net> and <hannaandersson.org>) and on November 11, 2019 (<hannaandersson.online>).
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”).
The Complainant asserts rights in the HANNA ANDERSSON trademark based on registration with the USPTO. Registration of a trademark with the USPTO sufficiently confers a complainant’s rights in a trademark for the purposes of Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Complainant provides copies of its registration of the HANNA ANDERSSON trademark with the USPTO (e.g. Reg. No. 1,478,085, registered on Feb. 23, 1988). Accordingly, the Panel finds that Complainant has established rights in the HANNA ANDERSSON trademark for the purposes of Policy ¶ 4(a)(i).
The Complainant next asserts that the <hannaandersson.org>, <hannaandersson.net>, and <hannaandersson.online> domain names are identical and/or confusingly similar to Complainant’s trademark as they include the HANNA ANDERSSON trademark in its entirety, merely adding “.org,” “.net,” or “.online” gTLDs. Additions of a gTLD may not be sufficient to distinguish a trademark for purposes of policy ¶ 4(a)(i). See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a trademark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”).
The Panel notes that - for pure technical reasons - there is only two ways to create a domain name based on a two word trademark: either write the two words with a hyphen in between, or – as in this specific case – combining the two words into one word: “hannaandersson”.
The Panel therefore finds that the disputed domain name is confusingly similar – or even identical - to the HANNA ANDERSSON trademark under Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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”).
The Complainant contends that Respondent lacks rights or legitimate interests in the <hannaandersson.org>, <hannaandersson.net>, and <hannaandersson.online> domain names. Specifically, Complainant argues that Respondent is not commonly known by the disputed domain names. Where a response is absent, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain names, especially where a privacy service has been engaged, 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); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s trademark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). In the present case, the Panel notes that a privacy service was used by Respondent, but was lifted as a result of this proceeding. As a result, the WHOIS information for the disputed domain names lists the registrant as “Joe Mingo,” and there is no other evidence to suggest that Respondent was authorized to use the HANNA ANDERSSON trademark. Therefore, the Panel finds that Respondent is not commonly known by any the disputed domain names per ¶ 4(c)(ii).
Complainant argues that Respondent fails to use the <hannaandersson.org>, <hannaandersson.net>, and <hannaandersson.online> domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use, as Respondent’s disputed domain names each resolve to an inactive webpage. A respondent’s inactive holding of disputed domain names may not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See CrossFirst Bankshares, Inc. v Yu-Hsien Huang, FA 1785415 (Forum June 6, 2018) (“Complainant demonstrates that Respondent fails to actively use the disputed domain name as it resolves to an inactive website. Therefore, the Panel finds that Respondent fails to actively use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).”). Complainant provides screenshots of each of Respondent’s disputed domain names resolving webpages which state “This site can’t be reached.” The Panel therefore finds that Respondent at least does not use the disputed domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
The Complainant contends that Respondent registered and uses the <hannaandersson.org>, <hannaandersson.net>, and <hannaandersson.online> domain names in bad faith as Respondent fails to make an active use of any of the disputed domain names, presumably to sell the disputed domain names. A respondent’s failure to make an active use of disputed domain names with the intention of selling the domain names supports a finding of bad faith pursuant to Policy ¶ 4(b)(i) and/or ¶ 4(a)(iii). See Cruzeiro Licenciamentos Ltda. v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that mere failure to make an active use of a domain name can qualify as bad faith if the domain name owner’s conduct creates the impression that the name is for sale); see also Marsh Supermarkets Company, LLC, formerly known as Marsh Supermarkets, Inc. v. Choi Sungyeon, FA1312001532854 (Forum Feb. 25, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <marshsupermarkets.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii) because Respondent has failed to make an active use of the disputed domain name.”). Complainant provides screenshots of each of Respondent’s disputed domain webpages which resolve to a page stating “This site can’t be reached.” The Panel notes that Complainant does not provide evidence of the Respondent’s intent to sell the disputed domain names. However, considering the fact that each of the disputed domain names are more or less identical to Complainant’s distinctive trademark, the Panel finds that Respondent registered and uses the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(i) and Policy ¶ 4(a)(iii).
The Complainant next argues that Respondent registered and uses the <hannaandersson.org>, <hannaandersson.net>, and <hannaandersson.online> domain names in bad faith as Respondent engaged in a fraudulent phishing scheme by using a script placed on Complainant’s official billing website to skim personal information of Complainant’s customers and send the information to the <hannaandersson.org> domain name. A respondent’s engagement in a phishing scheme to obtain a Complainant’s customer personal information is indeed evidence of bad faith pursuant to Policy ¶ 4(a)(iii). See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1506001622862 (Forum Aug. 10, 2015) (finding that the respondent’s apparent use of the disputed domain name in furtherance of a ‘phishing’ scheme further established its bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii)); see also Wells Fargo & Co. v. Maniac State, FA 608239 (Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers). Again, the Panel notes that Complainant does not provide any evidence of the purported phishing scheme by Respondent. Further, Respondent’s disputed domain names do not encourage Internet users to enter their personal information, as they are inactive webpages. On the other hand, the Respondent has chosen to not file a Response, thereby also chosen to not argue against the Complainant’s conclusions. The Panel therefore agree with the Complainant, and find that Respondent registered and uses the disputed domain names in bad faith pursuant to 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 <hannaandersson.org>, <hannaandersson.net>, and <hannaandersson.online> domain names be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: January 6, 2020
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page