C.C. Filson Co. v. Haiyan Zhu
Claim Number: FA2205001998044
Complainant is C.C. Filson Co. (“Complainant”), represented by Kristen McCallion of Fish & Richardson P.C., Minnesota, USA. Respondent is Haiyan Zhu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <filsononline.com>, registered with Name.com, Inc..
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 May 25, 2022; the Forum received payment on May 25, 2022.
On May 26, 2022, Name.com, Inc. confirmed by e-mail to the Forum that the <filsononline.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, Inc. 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 May 31, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 21, 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@filsononline.com. Also on May 31, 2022, 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 June 28, 2022, 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 manufacturer and retailer of clothing, hunting and fishing products, and other related accessories. Complainant has rights in the FILSON trademark through its registration with multiple trademark agencies including the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,596,953, registered on Jul. 23, 2002). Respondent’s <filsononline.com> domain name is identical or confusingly similar to Complainant’s trademark as it incorporates the trademark in its entirety, merely adding the descriptive term “online” along with the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <filsononline.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its FILSON mark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use, but instead sells unauthorized or counterfeit versions of Complainant’s products.
Respondent registered and uses the <filsononline.com> domain name in bad faith. Respondent disrupts Complainant’s business by offering counterfeit products for sale in competition with Complainant. Additionally, Respondent attempts to pass off as Complainant while creating a likelihood of confusion. Furthermore, Respondent diverts consumers for its own commercial gain. Respondent had at least constructive knowledge of Complainant’s rights in the trademark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of several registrations for the FILSON trademark around the word, for example:
- US National Trademark Registration No. 2,596,953 FILSON (word), registered on July 23, 2002 for goods in Intl Classes 18 and 25;
- US National Trademark Registration No. 1,747,115 FILSON (word), registered on January 19, 1993 for goods in Intl Class 18;
- US National Trademark Registration No. 3,823,799 FILSON (word), registered on July 27, 2010 for services in Intl Class 35;
- US National Trademark Registration No. 1,305,076 FILSON (word), registered on November 13, 1984 for goods in Intl Class 25;
- US National Trademark Registration No. 2,139,660 FILSON (word), registered on February 24, 1998 for goods in Intl Class 25;
- Canadian National Trademark Registration No. 1,118,812 FILSON (word), registered January 27, 2022 for goods and services in Intl Classes 12, 14, 18, 35 and 36;
- International Trademark Registration No. 1 181 138 FILSON (word), registered October 9, 2013 for goods in Intl Class 18, covering China, European Union, Japan and Russian Federation;
- European Union Trade Mark registration No. 001912948 FILSON (word), registered March 5, 2022 for goods in Intl Class 18 and 25;
- International Trademark Registration No. 1 180 651 FILSON (word), registered October 4, 2013 for services in Intl Class 35, covering Australia, European Union, Japan, Norway, Republic of Korea and Switzerland.
The disputed domain name <filsononline.com> was registered on December 20, 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”).
The Complainant claims rights in the FILSON trademark through its registration with multiple trademark agencies including the USPTO (e.g. Reg. No. 2,596,953, registered on Jul. 23, 2002). Registration with multiple trademark agencies including the USPTO is generally sufficient in demonstrating rights in a trademark under Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Jimmy Yau, FA 1764034 (Forum Jan. 25, 2018) (“The Panel finds that complainant has rights in BLOOMBERG mark under Policy ¶ 4(a)(i) based upon its registration with multiple trademark agencies, including the USPTO.”). Therefore, the Panel find that Complainant has rights in the trademark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <filsononline.com> domain name is identical or confusingly similar to Complainant’s FILSON trademark. Under Policy ¶ 4(a)(i), adding a descriptive word and the “.com” gTLD to a disputed domain name is insufficient in differentiating from the mark it incorporates. See Broadcom Corp. v. Domain Depot, FA 96854 (Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to the complainant’s BROADCOM mark); see also F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”). The Panel notes that the disputed domain name incorporates Complainant’s trademark in its entirety and only adding the descriptive word “online” (which - if considered at all – rather indicates that it relates to an online shop for the trademarked goods) along with the “.com” gTLD. Thus, the Panel find that Respondent’s domain name is confusingly similar to Complainant’s trademark under 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 contends that Respondent is not commonly known by the <filsononline.com> domain name, nor has Complainant authorized or licensed Respondent to use its FILSON trademark in the disputed domain name. Under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name, while a lack of evidence demonstrating otherwise may affirm a Complainant’s assertion that it never authorized or licensed Respondent to use its trademark in the disputed domain name. See Bittrex, Inc. v. Operi Manaha, FA 1815225 (Forum Dec. 10, 2018) (concluding that the respondent was not commonly known by the <appbittrex.com> domain name where the WHOIS information listed Respondent as “Operi Manaha,” and nothing else in the record suggested Respondent was authorized to use the BITTREX mark.). Here, the WHOIS information identifies Respondent as “Haiyan Zhu”, and nothing in the record rebuts Complainant’s assertion that it never authorized or licensed Respondent to use its mark in the disputed domain name. Therefore, the Panel find that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent is not using the <filsononline.com> domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to sell unauthorized or counterfeit products does not constitute a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. 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 trademark, and were either counterfeit products or legitimate products of Complainant being resold without authorization). Complainant provides screenshots of the disputed domain name’s resolving website which displays Complainant’s FILSON trademark and purports to sell identical products as Complainant, while displaying photos taken from Complainant’s website. Therefore, the Panel agrees, and find that Respondent is not using the disputed domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
The Complainant contends that Respondent registered and uses the <filsononline.com> domain name in bad faith by disrupting Complainant’s business and offering competing and likely counterfeit products for sale. Under Policy ¶ 4(b)(iii), offering counterfeit products for sale is indeed disruptive of a complainant’s business and evidence of bad faith registration and use. 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)”). As already noted, Complainant has provided screenshots of the disputed domain name’s resolving website which displays Complainant’s FILSON trademark and purports to sell identical products as Complainant, while displaying photos taken from Complainant’s website. Thus, the Panel find that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iii).
Additionally, Complainant argues that Respondent registered and uses the <filsononline.com> domain name in bad faith by passing off as Complainant and creating a likelihood of confusion for users. Under Policy ¶ 4(b)(iv), passing off as a complainant and creating a likelihood of confusion and false sense of affiliation with complainant is evidence of bad faith. See 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.”). Again, referring to the evidence provided by the Complainant, the Panel find that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Furthermore, Complainant contends that Respondent registered and uses the <filsononline.com> domain name in bad faith by diverting users for commercial gain. Under Policy ¶ 4(b)(iv), diverting users to respondent’s website for commercial gain is evidence of bad faith registration and use. See Dell Inc. v. Innervision Web Solutions, FA 445601 (Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services). The Panel agrees with Complainant’s conclusion, and find that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Finally, Complainant argues that Respondent’s bad faith is further demonstrated by its registration of the <filsononline.com> domain name with at least constructive knowledge of Complainant’s rights in the FILSON trademark. Constructive knowledge may be demonstrated under Policy ¶ 4(a)(iii) at least where Respondent used the trademark in the disputed domain name and used the resolving website to display identical photos and likely counterfeit products for sale. See 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.”). Referring to the clear evidence showing the Respondent’s web site connected to the disputed domain name, the Panel find that Respondent registered and uses the disputed 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 <filsononline.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: July 7, 2022
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