Cascade Designs, Inc. v. 亚军 李
Claim Number: FA2205001998391
Complainant is Cascade Designs, Inc. (“Complainant”), represented by Timothy Casey of Baker & Hostetler LLP, Washington. Respondent is 亚军 李 (“Respondent”), CN.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <msronlineshop.com>, registered with Name.Com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 31, 2022; the Forum received payment on May 31, 2022.
On May 31, 2022, Name.Com, Inc. confirmed by e-mail to the Forum that the <msronlineshop.com> domain name is registered with Name.Com, Inc. and that Respondent is the current registrant of the names. 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 June 2, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 22, 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@msronlineshop.com. Also on June 2, 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 July 3, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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
1. Respondent’s <msronlineshop.com> domain name is confusingly similar to Complainant’s mark.
2. Respondent does not have any rights or legitimate interests in the <msronlineshop.com> domain name.
3. Respondent registered and uses the <msronlineshop.com> domain name in bad faith.
B. Respondent did not file a Response.
Complainant is a company that specializes in outdoor recreational products and holds a registration for the MSR mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,996,019, registered Jul. 12, 2016).
Respondent registered the <msronlineshop.com> domain name on December 20, 2021, and uses it to pass off as Complainant and sell unauthorized versions of Complainant’s products.
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”).
Respondent’s <msronlineshop.com> domain name uses Complainant’s mark and adds the terms “online” and “shop” and the “.com” gTLD. Adding a generic or descriptive phrase and a gTLD fails to sufficiently distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). Therefore, the Panel finds that Respondent’s <msronlineshop.com> domain name is confusingly similar to Complainant’s MSR mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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”).
Complainant argues that Respondent lacks rights and legitimate interests in the <msronlineshop.com> domain name as Respondent is not commonly known by the disputed domain name and has no license or consent to use the MSR mark. The WHOIS information associated with the disputed domain name shows that Respondent is known as “亚军 李.” Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name and thus has no rights 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).
Complainant further argues that Respondent does not use the <msronlineshop.com> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses it to pass off as Complainant. Using a disputed domain name to pass off as a Complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii). See Dell Inc. v. Devesh Tyagi, FA 1785301 (Forum June 2, 2018) (“Respondent replicates Complainant’s website and displays Complainant’s products. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (iii).”) Complainant provides the Panel with screenshots of the disputed domain name showing that Respondent uses Complainant’s mark and logo at the top of the webpage and offers products similar to those offered by Complainant. The Panel finds that this is not a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus Respondent has no rights under Policy ¶ 4(c)(i) or (iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent’s bad faith is demonstrated by the use of the <msronlineshop.com> domain name to pass off as Complainant. Using a disputed domain name to pass off as a trademark holder evinces bad faith disruption of Complainant’s business and attraction for commercial gain under Policy ¶¶ 4(b)(iii) and (iv). See Vertu Corporation Limited v. wenqiang xie, FA1511001648993 (Forum Jan. 11, 2016) (finding that “Respondent’s attempted sale of counterfeit products disrupts Complainant’s legitimate business, seeks to profit from Internet user confusion under both Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv), respectively, and thus supports a finding of bad faith registration and use.”); see also American Cheerleader Media, LLC. v. ilir shoshi / cheer, FA 1592319 (Forum, January 20, 2015) (“The Panel here finds that Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) as … Respondent utilizes a logo and stylized font identical to Complainant’s own, as well as Complainant’s copyrighted images and text in an attempt to pass itself off as Complainant.”) Accordingly, the Panel finds that Respondent’s use of the disputed domain name to pass off as and compete with Complainant constitutes bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Complainant also argues that Respondent had actual knowledge of Complainant’s rights in the MSR mark when it registered the disputed domain name. To support this assertion, Complainant points to the fact that Respondent uses Complainant’s trademark and logo, and purportedly offers Complainant’s products for sale through the disputed domain name. The Panel agrees and finds further bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Complainant has satisfied 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 <msronlineshop.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: July 5, 2022
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