Makita Corporation v. gold hz / DYLAN ROBERT LEON APPLEGATE / Shen Tao
Claim Number: FA2102001931363
Complainant is Makita Corporation (“Complainant”), represented by Deborah A. Wilcox, Ohio, USA. Respondent is gold hz / DYLAN ROBERT LEON APPLEGATE / Shen Tao (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <makitats.com>, <mktsets.com>, and <mkttools.shop>, registered with Shanghai Meicheng Technology Information Development Co., Ltd. and NameSilo, 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 8, 2021; the Forum received payment on February 8, 2021. The Complaint was received in English.
On February 9, 2021 and February 18, 2021, Shanghai Meicheng Technology Information Development Co., Ltd. and NameSilo, LLC confirmed by e-mail to the Forum that the <makitats.com>, <mktsets.com>, and <mkttools.shop> domain names are registered with Shanghai Meicheng Technology Information Development Co., Ltd. and NameSilo, LLC and that Respondent is the current registrant of the names. Shanghai Meicheng Technology Information Development Co., Ltd. and NameSilo, LLC have verified that Respondent is bound by the Shanghai Meicheng Technology Information Development Co., Ltd. and NameSilo, LLC registration agreements 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 22, 2021, the Forum served the English language Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of March 15, 2021 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@makitats.com, postmaster@mktsets.com, postmaster@mkttools.shop. Also, on February 22, 2021, the Chinese and English language 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 22, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson 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.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant contends that the disputed domain names are controlled by a single entity since the <makitats.com>, <mktsets.com>, and <mkttools.shop> domain names all consist of variations on Complainant’s MAKITA mark and resolve to identical websites. Additionally, the <makitats.com> and <mktsets.com> domain names have the same registrant information. Therefore, Complainant argues the disputed domain names are controlled by the same entity. The Panel here finds that Complainant has sufficiently presented evidence demonstrating that the listed entities are jointly controlled.
Preliminary Issue: Language of Proceeding
The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese. Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstances of the present case, the Panel decides that the proceeding should be in English.
A. Complainant
Complainant is a manufacturer of power tools. Complainant has rights in the MAKITA mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,798,357, registered June 8, 2010). Respondent’s <makitats.com>, <mktsets.com>, and <mkttools.shop> domain names are confusingly similar to Complainant’s MAKITA mark because they all consist of the mark or an abbreviation of the mark, and add generic terms and a generic top level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <makitats.com>, <mktsets.com>, and <mkttools.shop> domain names. Respondent is not commonly known by the disputed domain names and Complainant has not authorized or licensed Respondent to use the MAKITA mark. Additionally, Respondent does not use the disputed domains for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domains to pass off as Complainant, purports to offer Complainant’s goods for sale at a discount, and likely engages in phishing.
Respondent registered and uses the <makitats.com>, <mktsets.com>, and <mkttools.shop> domain names in bad faith. Respondent uses the domains to pass off as Complainant. Additionally, Respondent likely engages in phishing. Furthermore, Respondent has constructive and actual knowledge of Complainant’s rights in the MAKITA mark based on the inclusion of the entire mark in the <makitats.com> domain name and the use of the mark on the resolving website for all the disputed domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Makita Corporation (“Complainant”), of Japan. Complainant is the owner of domestic and international registrations for the mark MAKITA and related variations constituting the family of MAKITA marks. Complainant has continuously used its MAKITA mark since at least as early as 1915 in connection with its production of a wide variety of goods and services related to manufacturing including tools, clothing, and numerous construction related items. Complainant is also the owner of various domains including <makitatools.com> which it has owned and operated since 1995.
Respondent is Gold Hz / Dylan Robert Leon Applegate / Shen Tao (“Respondent”), of China and Fort Worth, TX, USA. Respondent’s registrars are listed as Shanghai, China and Phoenix, AZ, USA. The Panel notes that the disputed domain names were registered on or about January 14th and 25th, 2021.
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 asserts rights in the MAKITA mark based on registration of the mark with the USPTO (e.g., Reg. No. 3,798,357, registered June 8, 2010). Registration of a mark with the USPTO is a valid showing of rights in a mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). The Panel here finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <makitats.com>, <mktsets.com>, and <mkttools.shop> domain names are confusingly similar to Complainant’s MAKITA mark because they all consist of the mark or an abbreviation of the mark, and add generic terms and a gTLD. The abbreviation of a mark and the addition of generic terms and gTLD to a mark are generally insufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See Sainato's Restaurant and Catering Limited v. chen xue ming, FA 1781748 (Forum June 4, 2018) (finding the <sainatos.com> domain name is confusingly similar to the SAINATO’S RESTAURANT mark as it “appends the gTLD “.com” to an abbreviated version of the mark.”); see also MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”). Complainant argues that the “mkt” in <mktsets.com> and <mkttools.shop> domain names is an abbreviation of Complainant’s MAKITA mark. Additionally, Complainant contends that the “ts” in the <makitats.com> domain name stands for “tool sets.” The Panel here finds that the disputed domain names are confusingly similar to the MAKITA mark under Policy¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel notes that 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. 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 Panel here finds that Complainant has set forth the requisite prima facie case.
Complainant argues that Respondent does not have rights or legitimate interests in the <makitats.com>, <mktsets.com>, and <mkttools.shop> domain names because Respondent is not commonly known by the disputed domain names and Complainant has not authorized or licensed Respondent to use the MAKITA mark. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Timothy Mays aka Linda Haley aka Edith Barberdi, FA1504001617061 (Forum June 9, 2015) (concluding that the respondent was not commonly known by the <amazondevice.org>, <amazondevices.org> and <buyamazondevices.com> domain names under Policy ¶ 4(c)(ii), as the pertinent WHOIS information identified “Timothy Mays,” “Linda Haley,” and “Edith Barberdi” as registrants of the disputed domain names). Additionally, lack of authorization to use a mark constitutes a further showing that a respondent lacks rights in a mark. 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). Here, the WHOIS information identifies “gold hz / DYLAN ROBERT LEON APPLEGATE / Shen Tao” as the registrants of the disputed domain names and there is no evidence Complainant has authorized Respondent to use the MAKITA mark in any way. The Panel here finds that Respondent is not commonly known by the domain names under Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent does not use the disputed domains for any bona fide offering of goods or services or legitimate noncommercial or fair use and instead uses the domains to pass off as Complainant, purports to offer Complainant’s goods for sale at a discount, and likely engages in phishing. The use of a disputed domain name to pass off as a complainant, offer a complainant’s goods for sale, and to phish for consumers’ personal information does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See ShipChain, Inc. v. 谢东东 / 谢东东, FA 1785189 (Forum June 21, 2018) (“The resolving webpages between Complainant’s and Respondent’s websites are virtually the same. Respondent’s use of the disputed domain name does not confer rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii).”); see also Fadal Engineering, LLC v. DANIEL STRIZICH,INDEPENDENT TECHNOLOGY SERVICE INC, 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 additionally United States Postal Service v. Kehinde Okunola / Genuine ICT Centre, FA 1785420 (Forum June 6, 2018) (“Respondent uses the <uspscouriers.com> domain name both to sell services competing with the business of Complainant and to phish for personal identification information from Internet users. Neither of these uses of the domain name constitutes 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) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy.”). Here, Complainant provides screenshots of the website for the disputed domain names which replicate Complainant’s own website and appear to offer MAKITA branded products for sale at a deep discount. Complainant also contends that Respondent’s use of a login portal and shopping cart indicates Respondent attempts to collect emails, credit cards, and other personal information from consumers in connection with a phishing scam. The Panel here finds that Respondent is not using the domain names for 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).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant argues that Respondent registered and uses the <makitats.com>, <mktsets.com>, and <mkttools.shop> domain names in bad faith because Respondent passes off as Complainant. Under Policy ¶ 4(b)(iv), the use of a disputed domain name to pass off as a complainant is evidence of bad faith. See Bittrex, Inc. v. Caroline Alves Maia, FA 1796113 (Forum Aug. 6, 2018) (finding the respondent registered and used the domain name in bad faith per Policy ¶ 4(b)(iv) because the respondent used the disputed domain name to present users with a website that was “virtually identical, with the same color scheme, the same layout and the same substantive content” and used the website to gain access to users’ cryptocurrency accounts). The Panel here again notes that Complainant provides screenshots showing the disputed domain names resolve to websites that are basically identical to Complainant’s websites. The Panel here finds Respondent engaged in bad faith registration and use per Policy ¶ 4(b)(iv).
Further, Complainant argues that Respondent registered and uses the disputed domain names in bad faith because Respondent likely engages in phishing. Per Policy ¶ 4(a)(iii), the use of a disputed domain name to further a phishing scheme indicates bad faith registration and use. See Morgan Stanley v. Bruce Pu, FA 1764120 (Forum Feb. 2, 2018) (“[T]he screenshot of the resolving webpage allows users to input their name and email address, which Complainant claims Respondent uses that to fraudulently phish for information. Thus, the Panel agrees that Respondent phishes for information and finds that Respondent does so in bad faith under Policy ¶ 4(a)(iii).”). The Panel again notes that Complainant contends the login portal and shopping cart on the resolving websites for the disputed domain name likely collect consumers’ email and credit card information as part of a phishing scheme. The Panel here agrees and finds Respondent engages in bad faith registration and use under Policy ¶ 4(a)(iii).
Furthermore, Complainant contends that Respondent has actual knowledge of Complainant’s rights in the MAKITA mark based on the inclusion of the entire mark in the <makitats.com> domain name and the use of the mark on the resolving website for all the disputed domain names. Panels have found actual knowledge and therefore bad faith when a respondent has used a disputed domain name to pass off as a complainant. See BMC Software, Inc. v. Dominic Anschutz, FA 1340892 (Forum Oct. 6, 2010) (determining that constructive notice will usually not support a finding of bad faith); see also Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). The Panel here finds that Respondent had actual knowledge of Complainant’s rights in the MAKITA mark and therefore finds Respondent also acted in bad faith under Policy ¶ 4(a)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <makitats.com>, <mktsets.com>, and <mkttools.shop> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: April 6, 2021
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