Recreational Equipment, Inc. v. guan jing
Claim Number: FA2111001973004
Complainant is Recreational Equipment, Inc. (“Complainant”), represented by Matthew Moersfelder of Davis Wright Tremaine LLP, Washington, USA. Respondent is guan jing (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <reistoreonline.com>, registered with Key-Systems GmbH.
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 11, 2021; the Forum received payment on November 11, 2021.
On November 15, 2021, Key-Systems GmbH confirmed by e-mail to the Forum that the <reistoreonline.com> domain name is registered with Key-Systems GmbH and that Respondent is the current registrant of the name. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH 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 November 18, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 8, 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@reistoreonline.com. Also on November 18, 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 December 14, 2021, 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 name be transferred from Respondent to Complainant.
A. Complainant
The Complainant is a national outdoor recreational retailer and member owned co-operative. Complainant has rights in the REI trademark through its registration of the trademark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,163,815, registered Aug. 4, 1981). Respondent’s <reistoreonline.com> is confusingly similar to Complainant’s REI trademark. Respondent incorporates the trademark in its entirety and adds the term “store online” along with the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <reistoreonline.com> domain name as Respondent is not commonly known by the disputed domain name, nor did Complainant authorize Respondent to use the REI trademark in any way. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent attempts to pass off as Complainant by offering competing goods.
Respondent registered and used the <reistoreonline.com> domain name in bad faith as Respondent attempts to pass itself off as Complainant by offering competing goods. Respondent had actual knowledge of Complainant’s rights in the REI trademark due to the longstanding use of the trademark in commerce.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner a number of trademark registrations, including, but not limited to the following trademarks registered with the United States Patent and Trademark Office (“USPTO”):
- No. 1,163,815 REI (word), registered on August 4, 1981 for goods in Intl Class 25;
- No. 1,276,551 REI (word), registered on May 1, 1984 for services in Intl Class 42;
- No. 2,683,701 REI (word), registered on February 4, 2003 for goods in Intl Classes 12, 18, 20, 22 and 28;
- No. 5,679,141 REI (word), registered on February 19, 2019 for services in Intl Classes 39 and 41; and
- No. 6,142,682 REI (word), registered on September 1, 2020 for services in Intl Class 41.
The Complainant is also owner of a number of other trademarks registered with the United States Patent and Trademark Office (“USPTO”), including the word REI, in combination with other words and/or figures.
Further, the Complainant has provided a list of national and international trademark registrations outside the USA, including the trademark REI (word) in China, the home country of the Respondent.
The disputed domain name <reistoreonline.com> was registered on November 20, 2020.
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 claims to have rights in the REI trademark through its registration of the trademark with the USPTO, as well as in other countries around the world. Registration of a trademark with the USPTO is sufficient to establish rights in a trademark per Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Here, Complainant has provided the Panel with a copy of its USPTO registration for the REI trademark (e.g. Reg. No. 1,163,815, registered Aug. 4, 1981). Therefore, the Panel find that Complainant has rights in the trademark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <reistoreonline.com> is confusingly similar to Complainant’s REI trademark. Registration of a domain name that contains a trademark in its entirety and only adds generic terms and a gTLD does not distinguish the domain name from the trademark per Policy ¶ 4(a)(i). See Kurk Wasserman Consulting, L.L.C. v. ming li, FA 1782613 (Forum May 29, 2018) (“Respondent’s <lilashserum.us> domain name is confusingly similar to the LILASH mark as Respondent merely adds the descriptive term “serum” and the “.us” ccTLD to the mark.”). Here, Complainant argues that Respondent incorporates the trademark in its entirety and adds the term “store online” along with the “.com” gTLD. This generic addition can be seen as a description related to the specific trademark, namely indicating that the web site connected to the disputed domain name is Complainant’s official or accepted online place selling the Complainant’s products. Therefore, the Panel find that Respondent’s domain name is confusingly similar to Complainant’s REI trademark per 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 AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Complainant argues Respondent lacks rights or legitimate interest in the <reistoreonline.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been given license or consent to use the REI trademark or register domain names using Complainant’s trademark. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the 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)”). The WHOIS information for the disputed domain name lists the registrant as “guan jing” and there is no other evidence to suggest that Respondent was authorized to use the REI trademark or was commonly known by the disputed domain name. Therefore, the Panel find that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent attempts to pass off as Complainant by offering competing goods. Use of a disputed domain name that attempts to pass off as a complainant by offering competing goods is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business). Here, Complainant has provided screenshots of Respondent’s <reistoreonline.com> domain name that shows products related to Complainant’s business on sale while also making use of the REI trademark. Therefore, the Panel find that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii).
Complainant argues that Respondent registered and used the <reistoreonline.com> domain name in bad faith as Respondent attempts to pass itself off as Complainant by offering competing goods. Use of a disputed domain name to pass off as a complainant and offer competing goods and services may be evidence of bad faith per Policy ¶¶ 4(b)(iii) and (iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business). As noted above, the Complainant has provided screenshots of Respondent’s <reistoreonline.com> domain name that shows products related to Complainant’s business on sale while also making use of the REI trademark. Therefore, the Panel find that Respondent registered and used the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Complainant argues that Respondent had knowledge of Complainant’s rights in the REI trademark at the time of registering the <reistoreonline.com> domain name. The Panel disregard arguments of bad faith based on constructive notice as UDRP case precedent declines to find bad faith as a result of constructive knowledge. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). The Panel instead choose to determine whether Respondent had actual knowledge of Complainant's rights in the trademark prior to registering the disputed domain name as actual knowledge can adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). To support this assertion, Complainant points to its trademark registrations around the world along with the fact that Respondent impersonates Complainant to further a fraudulent scam. As such, the Panel find that Respondent have actual knowledge of Complainant’s right in its trademark, and the Panel find 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 <reistoreonline.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: December 20, 2021
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