Lacrosse Footwear, Inc. v. wang bin
Claim Number: FA2201001982152
Complainant is Lacrosse Footwear, Inc. (“Complainant”), represented by Jim Vana of Perkins Coie LLP, Washington, USA. Respondent is wang bin (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <dannerclub.online>, <dannersale.online>, <dannerofficial.online>, <dannerpromo.online>, <dannercenter.online>, <dannerpeak.online>, <dannershoes.online>, <dannershoesinus.online>, <dannerfootwear.online>, <dannercheapest.online>, <danner-deal.online>, <dannerbestsale.online>, <dannerbuyit.online>, <dannerclassic.online>, <dannerclearance.online>, <dannercore.online>, <dannercoupon.online>, <dannerdiscount.online>, <dannerinus.online>, <dannerlatest.online>, <dannervip.online>, and <dannerusasale.online> registered with Alibaba Cloud Computing Ltd. D/B/A Hichina (Www.Net.Cn).
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.
The Honorable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 26, 2022; the Forum received payment on January 26, 2022.
On January 28, 2022; February 7, 2022, Alibaba Cloud Computing Ltd. D/B/A Hichina (Www.Net.Cn) confirmed by e-mail to the Forum that the <dannerclub.online>, <dannersale.online>, <dannerofficial.online>, <dannerpromo.online>, <dannercenter.online>, <dannerpeak.online>, <dannershoes.online>, <dannershoesinus.online>, <dannerfootwear.online>, <dannercheapest.online>, <danner-deal.online>, <dannerbestsale.online>, <dannerbuyit.online>, <dannerclassic.online>, <dannerclearance.online>, <dannercore.online>, <dannercoupon.online>, <dannerdiscount.online>, <dannerinus.online>, <dannerlatest.online>, <dannervip.online>, <dannerusasale.online> domain names are registered with Alibaba Cloud Computing Ltd. D/B/A Hichina (Www.Net.Cn) and that Respondent is the current registrant of the names. Alibaba Cloud Computing Ltd. D/B/A Hichina (Www.Net.Cn) has verified that Respondent is bound by the Alibaba Cloud Computing Ltd. D/B/A Hichina (Www.Net.Cn) 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 February 15, 2022, the Forum served the Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of March 7, 2022 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@dannerclub.online, postmaster@dannersale.online, postmaster@dannerofficial.online, postmaster@dannerpromo.online, postmaster@dannercenter.online, postmaster@dannerpeak.online, postmaster@dannershoes.online, postmaster@dannershoesinus.online, postmaster@dannerfootwear.online, postmaster@dannercheapest.online, postmaster@danner-deal.online, postmaster@dannerbestsale.online, postmaster@dannerbuyit.online, postmaster@dannerclassic.online, postmaster@dannerclearance.online, postmaster@dannercore.online, postmaster@dannercoupon.online, postmaster@dannerdiscount.online, postmaster@dannerinus.online, postmaster@dannerlatest.online, postmaster@dannervip.online, postmaster@dannerusasale.online. Also on February 15, 2022, 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 14, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honorable Neil Anthony Brown QC 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 submitted that the entities which control the domain name(s) 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 WHOIS records for each of the disputed domain names are identical and the resolving websites for each disputed domain name present users with the same fraudulent scheme. Accordingly, Complainant submits that the domain names are registered by the same domain name holder within the meaning of Paragraph 3(c) of the Rules.
In the light of the evidence submitted and all the circumstances, the Panel finds that the domain names are commonly owned/controlled by a single Respondent who is using multiple aliases.
The proceeding was therefore validly filed and may go forward on that basis.
PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDING
The Panel notes that the Registration Agreements relating to the domain names is written in Chinese, thereby making the language of the proceedings in Chinese. However, the Panel has the discretion under UDRP Rule 11(a) to determine a more appropriate language for the proceeding taking into consideration the particular circumstances of the administrative proceeding. See FilmNet Inc. v. Onetz, FA 96196 (Forum Feb. 12, 2001) (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English).
Complainant has submitted that because Respondent is conversant and proficient in the English language, the proceeding should be conducted in English. Complainant contends Respondent’s websites available at the disputed domain names use English characters and words therein, suggesting that Respondent is at least proficient in the English language. Further, Complainant is not conversant nor proficient in the Chinese language and it would require delay and unnecessary costs to translate the documents into English.
Having regard to all the circumstances, the Panel determines pursuant to UDRP Rule 11(a) that the proceeding be conducted in the English language.
A. Complainant
Complainant made the following contentions.
Complainant engages in the business and commerce of footwear, more recently expanding to other areas of apparel and retail. Complainant asserts rights in the DANNER mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO") (e.g., Reg. No. 4,566,638, registered on July 15, 2014). See Amend. Compl. Ex. D. Respondent’s disputed domain names are identical or confusingly similar to Complainant’s DANNER mark as they incorporate the mark in its entirety, only adding generic and descriptive terms, such as “club” and “shoes”, as well as the “.online” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the disputed domain names. Complainant has not authorized or licensed Respondent to use the DANNER mark, nor is Respondent commonly known by any of the disputed domain names. Further, Respondent is not using the disputed domain names in connection with a bona fide offering of goods and services or legitimate noncommercial or fair use as the resolving websites present users with phishing schemes.
Respondent registered and uses the disputed domain names in bad faith. Respondent has a pattern of registering disputed domain names, using Complainant’s mark. Further, Respondent attempts to attract users for commercial gain by passing itself off as Complainant. Finally, Respondent had actual notice of Complainant’s rights in the DANNER mark, evidenced by Respondent’s use of the mark and the notoriety of the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the business and commerce of footwear and other areas of apparel and retail.
2. Complainant has established its trademark rights in the DANNER mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO") (e.g., Reg. No. 4,566,638, registered on July 15, 2014).
3. Respondent registered the disputed domain names, <dannerclub.online>, <dannersale.online>, <dannerofficial.online>, <dannerpromo.online>, <dannercenter.online>, <dannerpeak.online>, <dannershoes.online>, <dannershoesinus.online>, <dannerfootwear.online>, <dannercheapest.online>, <danner-deal.online>, <dannerbestsale.online>, <dannerbuyit.online>, <dannerclassic.online>, <dannerclearance.online>, <dannercore.online>, <dannercoupon.online>, <dannerdiscount.online>, <dannerinus.online>, <dannerlatest.online>, <dannervip.online>, and <dannerusasale.online>, on September 22, 2021.
4. Respondent has caused the disputed domain names to resolve to websites that present users with phishing schemes. Thus, the evidence does not establish that Respondent has a right or legitimate interest in any of the domain names and the evidence shows that Respondent registered and used each of the domain names in bad faith
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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has trademark rights in the DANNER mark through its registration of the mark with the USPTO (e.g., Reg. No. 4,566,638, registered on July 15, 2014). See Amend. Compl. Ex. D. Registering a mark with the USPTO is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See Recreational Equipment, Inc. v. Liu Chan Yuan, FA 2107001954773 (Forum Aug. 9, 2021) (“Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i)”); see also H-D Michigan, LLC v. Private Whois Service, FA 1006001328876 (Forum July 12, 2010) (finding that “Complainant has sufficiently registered its HARLEY-DAVIDSON mark with the USPTO to prove Complainant’s rights in the mark according to Policy ¶ 4(a)(i), regardless of the fact that Respondent lives or operates outside the United States.”). Therefore, the Panel finds Complainant has sufficiently established trademark rights in the DANNER mark.
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s DANNER marks. Complainant argues that Respondent’s disputed domain names are confusingly similar to Complainant’s DANNER mark, as they append generic or descriptive terms and the “.online” gTLD. Merely adding generic or descriptive terms to a mark, along with a gTLD, is not sufficient to differentiate a disputed domain name from Complainant’s mark. See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”); 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.”). The Panel therefore finds that the disputed domain names are confusingly similar to Complainant’s DANNER mark.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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 finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s DANNER trademark to use in its domain names and to add to the trademark various generic words that do not negate the confusing similarity between the domain names and the trademark;
(b) Respondent registered the disputed domain names on September 22, 2021;
(c) Respondent has caused the disputed domain names to resolve to websites that present users with phishing schemes;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends Respondent lacks rights and legitimate interests in the disputed domain names because Respondent is not authorized to use the DANNER mark, nor is Respondent commonly known by the disputed domain names. To determine whether a respondent is commonly known by a disputed domain name, the Panel may reference WHOIS information. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Furthermore, lack of authorization to use a mark serves as further indication that a respondent is not commonly known by the disputed domain name. See Radio Flyer Inc. v. er nong wu, FA 2011001919893 (Forum Dec. 16, 2020) (“Here, the WHOIS information lists “er nong wu” as the registrant and no information suggests Complainant has authorized Respondent to use the RADIO FLYER mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”). Here, the WHOIS information shows Respondent is known as “wang bin” and there is no evidence to suggest Complainant authorized to use the DANNER mark in any way. See Amend. Compl. Ex. H. As the Panel agrees, the Panel finds Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent does not use the disputed domain names for a bona fide offering of goods and services or legitimate noncommercial or fair use because the resolving websites present users with a phishing scheme. A panel may find using a disputed domain name only to redirect users to a phishing scheme is not a bona fide offering of goods and services or legitimate noncommercial or fair use. See Wells Fargo & Co. v. WhoisGuard, FA 1103650 (Forum Dec. 13, 2007) (“There is no dispute that respondent previously used the disputed domain name to obtain personal and financial information from Internet customers of complainant. This fraudulent use [is] known as ‘phishing’”); see also Enterprise Holdings, Inc. v. I S / Internet Consulting Services Inc., FA 1785242 (Forum June 5, 2018) (“On its face, the use of a domain name that is confusingly similar to the mark of another in order to facilitate a phishing scheme cannot be described as either 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).”). In the present case, the Panel notes screenshots of the resolving websites that show internet users are presented with a phishing scheme. See Amend. Compl. Ex. E. As the Panel agrees that Respondent engages in a phishing scheme, the Panel finds Respondent is not using the disputed domain names for a bona fide offering of goods and services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant contends that Respondent has a pattern of registering the disputed domain names in bad faith, as there are over 20 domain names in the present case. It is appropriate for the Panel to look at Respondent’s history of registering the disputed domain names to determine the issue of bad faith and whether it is present. See Deutsche Telekom AG v. Dana Dudones, FA 1798440 (Forum Sep. 7, 2018) (“Here the same registrant registered the seven disputed domain names over a two-day period [. . .] Thus the Panel finds that Respondent’s registration of multiple domain names in the present case evinces bad faith registration under Policy ¶ 4(b)(ii).”); see also United States Postal Service v. Yongkun Wang, FA 1788170 (Forum July 11, 2018) (“Complainant contends that Respondent is a serial cybersquatter as evidenced by its registering four separate domain names all incorporating Complainant’s USPS mark. Therefore, the Panel finds that the Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(ii).”). Therefore, the Panel is entitled to consider the disputed domain names’ registrations and the Respondent’s history of registrations to determine bad faith per Policy ¶ 4(b)(ii).
Secondly, Complainant submits that Respondent attempts to attract users for commercial gain by passing itself off as Complainant, copying Complainant’s website and offering Complainant’s goods. Using a disputed domain name to pass off as a complainant for financial gain serves as an indication of bad faith. 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); see also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). Here, Complainant provides screenshots of the resolving websites that mimic Complainant’s website and offer competing goods. See Amend. Compl. Ex. E and F. Additionally, Complainant presents evidence that users have been confused about the association between Respondent’s websites and Complainant’s business, even purchasing fake products and providing financial information. See Amend. Compl. Ex. G. As the Panel agrees that Respondent passes itself off as Complainant for financial gain, the Panel finds Respondent acted in bad faith per Policy ¶ 4(b)(iii) and (iv).
Thirdly, Complainant submits that Respondent had actual notice of Complainant’s rights in the DANNER mark, evidenced by the mark’s notoriety and the Respondent’s use of the mark. Past panels have concluded that a respondent had actual notice of a complainant’s mark when the mark is famous and by analyzing the respondent’s use of the mark. See United States Postal Service v. Yongkun Wang, FA 1788170 (Forum July 11, 2018) (finding Respondent had actual knowledge of Complainant’s rights in the USPS mark “given the widespread use of Complainant’s mark and the fact that Respondent registered four separate domain names all of which include Complainant’s USPS mark in its entirety”); see also iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum January 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”). Here, Complainant provides proof that Respondent mimics Complainant’s website and offers competing products, as well as the mark’s notoriety from users. See Amend. Compl. Exs. E-G. As the Panel finds Respondent had actual notice of Complainant’s rights in the DANNER mark, the Panel finds Respondent acted in bad faith.
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the DANNER mark and in view of the conduct that Respondent has engaged in when using the disputed domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dannerclub.online>, <dannersale.online>, <dannerofficial.online>, <dannerpromo.online>, <dannercenter.online>, <dannerpeak.online>, <dannershoes.online>, <dannershoesinus.online>, <dannerfootwear.online>, <dannercheapest.online>, <danner-deal.online>, <dannerbestsale.online>, <dannerbuyit.online>, <dannerclassic.online>, <dannerclearance.online>, <dannercore.online>, <dannercoupon.online>, <dannerdiscount.online>, <dannerinus.online>, <dannerlatest.online>, <dannervip.online>, and <dannerusasale.online> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown QC
Panelist
Dated: March 15, 2022
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