Ontel Products Corporation v. chen xi
Claim Number: FA1912001874517
Complainant is Ontel Products Corporation (“Complainant”), represented by Jenny T. Slocum of Dickinson Wright PLLC, District of Columbia, United States. Respondent is chen xi (“Respondent”), New York, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hugglepets.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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 10, 2019; the Forum received payment on December 10, 2019.
On December 11, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <hugglepets.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 December 12, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 2, 2020 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@hugglepets.online. Also on December 12, 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 January 7, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts its rights in the HUGGLE and HUGGLE PETS trademark registrations described below and submits that it has established a reputation for the HUGGLE and HUGGLE PETS trademark by use on its innovative range of consumer products including popular toys, garments and household items which are sold in nearly every major retail chain in the USA and in over 30 countries across the world.
Complainant submits that the disputed domain name is identical or confusingly similar to Complainant’s HUGGLE and HUGGLE PETS trademarks arguing that the disputed domain name contains both marks in their entirety and it is identical to its HUGGLE PETS mark except for the inclusion of the gTLD <.online> extension. Complainant submits that the gTLD extension does not distinguish the disputed domain name because all domain names have such an extension. See Chevron Intellectual Property LLC v. St. Kitts Registry, FA1080702 (Forum Nov. 16, 2007). Complainant adds that if anything, the addition of “online” suggests that it is affiliated with Complainant as being one of its online retail stores for authentic HUGGLE PETS products.
Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name. Upon information and belief, Respondent is not commonly known by the disputed domain name or any name containing Complainant’s HUGGLE or HUGGLE PETS marks. Complainant states that the Registrar’s WHOIS record does not mention the disputed domain name or the HUGGLE PETS mark as being Respondent’s name or nickname. Complainant submits that a registrant of a disputed domain name may be found to have no right or legitimate interest in a domain name where there is no indication the Respondent is known by that name. See Popular Enters., LLC v. Sunga Jang, FA811921 (Forum Nov. 16, 2006) (“Respondent’s WHOIS information does not suggest that [r]espondent is commonly known by the <ntester.com> domain name”).
Complainant asserts that Respondent has no affiliation with Complainant or authorization to use Complainant’s marks but is using the disputed domain name to resolve to a website that purports to be an online store for Complainant’s HUGGLE PETS products using Complainant’s trademarks and website content without authority or license.
Complainant submits that the disputed domain name was registered and is being used in bad faith. Complainant argues that there is no rationale for Respondent’s use and registration of the disputed domain name other than to disrupt the business of Complainant or to attract visitors to Respondent’s website to extract personal information and/or money from them by misrepresenting that it is Complainant’s online location, by creating a likelihood of confusion with Complainant’s HUGGLE and HUGGLE PETS marks.
Complainant submits that Respondent’s use of the disputed domain name in such a diversionary manner is disruptive to Complainant’s business and is evidence of bad faith registration and use of the domain name under Policy ¶ 4(b)(iii). See Victoria's Secret Stores Brand Management, Inc. v. None c/o Marcias. Da Silva, FA1356205 (Forum Dec. 4, 2010) (finding respondent’s use of its domain name to divert Internet users to respondent’s website, which displayed, advertised and sold products that purported to be complainant’s goods, resulted in a loss of business and revenue to complainant and constituted evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii)).
Complainant adds that despite Respondent having no affiliation with Complainant or authorization to use Complainant’s marks, Respondent is using the disputed domain name to resolve to a website that purports to be an online store for Complainant’s HUGGLE PETS products. Complainant submits that Respondent has copied the exact HUGGLE PETS trademark design as well as images of Complainant’s authentic products for its website, in order to sell directly competing unauthorized products and is attempting to pass its website off to unwary Internet users as an official retail site owned, affiliated or sponsored by Complainant when it is not.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant develops, produces and markets a range of products including toys and garments online and in retail outlets across the United States and in other jurisdictions and is the owner of a number of recent trademark registrations and pending applications in the United States, the European Union and Mexico including:
· United States trademark HUGGLE registration number 5,711,509, registered on March 26, 2019 for “Clothing, namely, sweatshirts” in international class 25
· European Union Reg. No. 18009093 for HUGGLE PETS issued on May 2, 2019 for “Toys” in class 28.
The disputed domain name was registered on October 3, 2019 and resolves to a website that purports to offer Complainant’s goods for sale and displays content that includes images taken from Complainant’s website.
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs and the Registrar’s response to the verification enquiry made by the Forum in connection with this Complaint.
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 provided convincing evidence of its ownership of the HUGGLE and HUGGLE PETS trademarks which it uses in association with its innovative products.
The disputed domain name incorporates both the HUGGLE and HUGGLE PETS marks in their entirety and is identical to its HUGGLE PETS mark. In the circumstances of the present Complaint the gTLD <.online> extension may be ignored as it adds no distinguishing characteristic to the disputed domain name.
This Panel finds therefore that the disputed domain name is identical to the HUGGLE PETS trademark and confusingly similar to the HUGGLE trademark in which Complainant has rights. Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, arguing that Respondent is not commonly known by the disputed domain name or any name containing Complainant’s HUGGLE or HUGGLE PETS marks; that the Registrar’s WHOIS record does not mention the disputed domain name or the HUGGLE PETS mark as being Respondent’s name or nickname; that Respondent has no affiliation with Complainant or authorization to use Complainant’s marks; and that Respondent is using the disputed domain name to resolve to a website that purports to be an online store for Complainant’s HUGGLE PETS products.
In such circumstances the burden of production shifts to Respondent to establish his rights or legitimate interests in the domain name. Respondent has failed to respond to the Complaint and therefore has failed to discharge the burden.
This Panel finds therefore that on the balance of probabilities Respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Complainant submits that the disputed domain name was registered and is being used in bad faith. It is clear that the disputed domain name was registered with actual knowledge of Complainant and its products. The manner in which it has been used indicates that the registrant’s intention in selecting and registering the disputed domain name was to misleadingly present him or herself as Complainant.
While no Response or explanation has been offered by Respondent, on the evidence adduced it is plausible that Respondent chose the domain name as a lawful reseller of Complainant’s goods – albeit not an authorized reseller.
However, even if that is the case, Respondent would not be entitled to retain and use the disputed domain name in the manner which it is used at present.
The well-accepted test in Oki Data Americas, Inc. v. ASD, Inc. WIPO Case No. D2001-0903 is that:
“[t]o be “bona fide,” the offering must meet several requirements. Those include, at the minimum, the following:
- Respondent must actually be offering the goods or services at issue. E.g., World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306 (WIPO Jan. 24, 2001) (respondent failed to show demonstrable preparations to use the domain name in connection with a bona fide offering).
- Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods. Nikon, Inc. v. Technilab, WIPO Case No. D2000-1774 (WIPO Feb. 26, 2001) (use of Nikon-related domain names to sell Nikon and competitive cameras not a legitimate use); Kanao v. J.W. Roberts Co., Case No. 0109 (CPR July 25, 2001) (bait and switch is not legitimate).
- The site must accurately disclose the registrant's relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents. E.g., Houghton Mifflin Co. v. Weatherman, Inc., WIPO Case No. D2001-0211 (WIPO April 25, 2001) (no bona fide offering where website's use of Complainant's logo, and lack of any disclaimer, suggested that website was the official Curious George website); R.T. Quaife Engineering v. Luton, WIPO Case No. D2000-1201 (WIPO Nov. 14, 2000) (no bona fide offering because domain name <quaifeusa.com> improperly suggested that the reflected site was the official U.S. website for Quaife, an English company; moreover, respondent's deceptive communications with inquiring consumers supported a finding of no legitimate interest); Easy Heat, Inc. v. Shelter Prods., WIPO Case No. D2001-0344 (WIPO June 14, 2001) (no bona fide use when respondent suggested that it was the manufacturer of complainant's products).
- The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name. Magnum Piering, Inc. v. Mudjackers, WIPO Case No. D2000-1525 (WIPO Jan. 29, 2001) (“a single distributor is extremely unlikely to have a legitimate interest in precluding others from using numerous variants on a mark”).”
In the present case Respondent has, in bad faith, appropriated images and trademark content from Complainant’s official website without license or authority and has made no attempt to accurately disclose registrant's relationship with the trademark owner. In fact, the content on Respondent’s website misleadingly infers it is Complainant’s site or is endorsed in some way by Complainant and thereby misleads Internet users.
This Panel finds that by using the disputed domain name in this manner, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his or her web site by creating a likelihood of confusion with Complainant's HUGGLE and HUGGLE PETS trademarks as to the source, sponsorship, affiliation, or endorsement of his or her web site in bad faith.
This Panel finds therefore that on the balance of probabilities the disputed domain name was registered and is being used in bad faith.
Complainant has therefore succeeded in the third element of the test in Policy ¶ 4(a)(iii) and is entitled to the relief sought in the Complaint.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hugglepets.online> domain name be TRANSFERRED from Respondent to Complainant.
___________________________
James Bridgeman SC
Panelist
Dated: January 8, 2020
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