Andreas Stihl AG & Co KG v. Theresa Chavez
Claim Number: FA2108001958401
Complainant is Andreas Stihl AG & Co KG (“Complainant”), represented by Mary Dalton Baril of McGuireWoods LLP, Virginia, USA. Respondent is Theresa Chavez (“Respondent”), Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <stihlch-outlet.com>, registered with Dynadot, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 6, 2021; the Forum received payment on August 6, 2021.
On August 09, 2021, Dynadot, LLC confirmed by e-mail to the Forum that the <stihlch-outlet.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 August 11, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 31, 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@stihlch-outlet.com. Also on August 11, 2021, 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 September 5, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant, Andreas Stihl AG & Co KG, is a manufacturer of chainsaws and other handheld power equipment. Complainant maintains registration of its STIHL mark with the United States Patent and Trademark Office (USPTO).
The at-issue domain name, <stihlch-outlet.com> is identical or confusingly similar to Complainant’s STIHL mark because it incorporates Complainant’s STIHL mark while adding in the generic term “outlet” and the geographic term “ch” to the “.com” generic top-level domain to form a domain name.
Respondent does not have any rights or legitimate interests in the <stihlch-outlet.com> domain name because Respondent is not commonly known by the <stihlch-outlet.com> domain name nor has Respondent been granted a license to use Complainant’s STIHL mark. Respondent is not using the <stihlch-outlet.com> domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use because Respondent sells, or attempts to sell, counterfeit goods of Complainant. Further, Respondent engages in a phishing scheme asking for personal information and advanced payment before shipment of the supposed goods.
Respondent registered and uses the <stihlch-outlet.com> domain name in bad faith because Respondent sells complainant’s goods at the disputed domain. Respondent also acted with actual knowledge of Complainant’s rights in the STIHL mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in STIHL.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the STIHL trademark.
Respondent used the at-issue domain name to address a website that competes with Complainant and phishes for private data.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of its STIHL mark with the USPTO sufficiently demonstrates Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Respondent’s <stihlch-outlet.com> domain name incorporates Complainant’s STIHL trademark, adds the geographical abbreviation “ch,” a hyphen and the generic term “outlet,” then follows all with the generic top-level domain “.com.” Under the Policy, the resulting differences between Complainant’s trademark and Respondent’s domain name do nothing to distinguish the at-issue domain name from Complainant’s trademark. Therefore, the Panel concludes that Respondent’s domain name is confusingly similar to Complainant’s STIHL trademark pursuant to Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); see also, Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Svensson Viljae, FA 1784650 (Forum June 1, 2018) (finding confusing similarity where “[t]he disputed domain name <skechers-outlet.com> adds a hyphen and the generic term ‘outlet’ to Complainant's registered SKECHERS mark, and appends the ‘.com’ top-level domain.”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name. See Charter Communications Holding Company, LLC v. Taha Shaikh / Tskdesigners, FA 1814475 (Forum Nov. 25, 2018) (finding no rights or legitimate interests in <spectrumfeature.com> because complainant never gave respondent permission to use the mark in any manner and “Panels may use these assertions as evidence that no rights or legitimate interests exist in a disputed domain name.”);
The WHOIS information for <stihlch-outlet.com> indicates that “Theresa Chavez” is the domain name’s registrant. There is nothing in the record before the Panel that indicates that Respondent is otherwise known by the <stihlch-outlet.com> domain name. As such, the Panel finds that Respondent is not commonly known by the at-issue domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Next, Respondent uses <stihlch-outlet.com> in furtherance of addressing a website offering goods that are similar or identical to Complainant’s. Such goods, if even actually available, may be counterfeit and in any event Respondent is not authorized to sell products under Complainant’s trademark. Respondent’s use of <stihlch-outlet.com> thus indicates neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015) (finding no bona fide offering of goods or legitimate noncommercial or fair use existed where Respondent used the resolving website to sell products branded with Complainant’s MERRELL mark, and were either counterfeit products or legitimate products of Complainant being resold without authorization).
Moreover, users of Respondent’s <stihlch-outlet.com> website are required to provide payment information including personal data. There is also some indication that internet users believing they are purchasing Complainant’s products will instead receive nothing and are being asked to provide an advanced payment for transportation costs. Respond’s phishing for third party personal data and to collect bogus charges is also neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See 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.”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶ 4(a)(ii).
Respondent’s <stihlch-outlet.com> domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present that allow the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First and as mentioned above regarding rights and legitimate interests, Respondent uses <stihlch-outlet.com> to offer products for sale that compete with goods offered by Complainant under its STIHL trademark. Such products appear to be counterfeit versions of genuine STIHL merchandise. Registering and using the <stihlch-outlet.com> domain name to confuse internet users into falsely believing the domain name and its referenced website is affiliated with or sponsored by Complainant is disruptive to Complainant’s business and constitutes bad faith under Policy ¶¶ 4(b)(iii) and (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).
As also mentioned above, it appears that Respondent is intent on scamming <stihlch-outlet.com> website’s visitors into not only giving up personal information but also having such visitors turn over funds for specious services. Respondent’s behavior may be characterized as criminal and further shows Respondent’s bad faith under the Policy. See Emissary Technologies, LLC v. Careright Healthcare, Inc., FA 1451502 (Forum Aug. 8, 2016) (“with no evidence submitted by Respondent to the contrary, Complainant’s contentions that the disputed domain name resolves to a website that appears to offer a legitimate healthcare business but is actually “scam” and to cover up illegal activity constitutes use of the disputed domain name for an illegal purpose, in bad faith according to Policy ¶ 4(a)(iii).).
Additionally, the Panel finds that Respondent registered its <stihlch-outlet.com> domain name knowing that Complainant had trademark rights in STIHL. Respondent’s prior knowledge is evident from the notoriety of Complainant’s STIHL trademark and from Respondent’s use of the domain name as setout elsewhere herein. Respondent’s prior knowledge of Complainant's trademark further shows that Respondent registered and used the <stihlch-outlet.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name"); see also Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum Mar. 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under 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 <stihlch-outlet.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: September 6, 2021
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