Fox Factory, Inc. v. 桂兰 范
Claim Number: FA2207002003016
Complainant is Fox Factory, Inc. (“Complainant”), represented by W. Bruce Patterson of Patterson + Sheridan, LLP, Texas, USA. Respondent is 桂兰 范 (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <foxracestore.com>, registered with Name.com, Inc.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Katalin Szamosi (Presiding Panelist), Douglas M. Isenberg and Paul M. DeCicco as Panelists
Complainant submitted a Complaint to the Forum electronically on July 5, 2022; the Forum received payment on July 5, 2022.
On July 6, 2022, Name.com, Inc. confirmed by e-mail to the Forum that the <foxracestore.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 July 7, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 27, 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@foxracestore.com. Also on July 7, 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 August 03, 2022, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Katalin Szamosi (Presiding Panelist), Douglas M. Isenberg and Paul M. DeCicco, as Panelists.
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 states that it is a manufacturer of bicycle parts.
Complainant asserts that it has rights in the FOX and FOX Racing Shox mark through its numerous registrations with the United States Patent and Trademark Office (USPTO) and the China National Intellectual Property Administration (CNIPA).
Complainant argues that <foxracestore.com> domain name is virtually identical and confusingly similar to Complainant’s marks because it incorporates the “FOX” mark in its entirety and is confusingly similar to “FOX Racing Shox” mark. The domain includes the terms “race” and “store” and the “.com” generic top-level domain (“gTLD”) which enhance the confusing similarity.
Respondent has no legitimate interests in the <foxracestore.com> domain name. Respondent is not known by “foxracestore.com,” “FOX,” “FOX Racing Shox,” or any similar terms.
Complainant asserts that the website under the <foxracestore.com> domain name is a counterfeit website. Complainant has not authorized or licensed Respondent any rights in the FOX mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Complainant asserts that Respondent uses the disputed domain name to operate a competing online store that sells counterfeit versions of Complainant’s goods.
Respondent registered and uses the <foxracestore.com> domain name in bad faith. Respondent registered the disputed domain name in order to disrupt Complainants business. Additionally, Respondent attempts to pass itself off as affiliated with Complainant in order to divert customers for commercial gain
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set out below the Panel finds for Complainant and orders a transfer of the <foxracestore.com> domain name.
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”).
Complainant asserts rights in the “FOX” mark based upon the registration of the mark with the USPTO (e.g., Reg. No. 2,321,069 registered February 22, 2000) and CNIPA (e.g., Reg. No. 6,553,658 registered March 7, 2012) and “FOX Racing shox” based upon the registration of the mark with the USPTO (e.g., Reg. No. 3,882,587 registered November 30, 2010) and CNIPA (e.g., Reg. No. 8,162,807 registered February 14, 2012). Registration of a mark with any national registry is sufficient to show rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Since Complainant provides evidence of registration of the “FOX” or “FOX Racing shox” marks, the Panel finds that the Complainant has rights in a mark under Policy 4(a)(i).
Complainant argues Respondent’s <foxracestore.com> domain name is identical or confusingly similar to Complainant’s FOX” and “FOX Racing shox” marks. The addition of a gTLD and generic terms fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)). Here, the disputed domain name contains the FOX mark in its entirety while adding in the terms “race” and “store” and the “.com” gTLD. Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
The Panel accordingly finds that Complainant has satisfied the first element of the Policy.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in <foxracestore.com> domain name to then enable the burden to, in effect, shift to Respondent to show it does have rights or legitimate interests.
Here, Complainant contends that Respondent does not have rights or legitimate interests in the <foxracestore.com> domain name because Respondent is not commonly known by the disputed domain name.
Complainant contends that Respondent lacks rights or legitimate interests in the <foxracestore.com> domain name since Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed to Respondent any rights in the “FOX” and “FOX Racing shox” marks. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii) and there is no evidence in the record that otherwise suggests that Respondent is known by the at-issue domain name. 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). In addition, a lack of authorization to use a complainant’s mark may also indicate that a respondent is not commonly known by the disputed domain name. See Deutsche Lufthansa AG v. Mohamed elkassaby, FA 1801815 (Forum Sep. 17, 2018) (“The WHOIS lists “Mohamed elkassaby” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).”).
Complainant further asserts it has not licensed or otherwise authorized Respondent to use Complainant’s FOX mark. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as the disputed domain name instead resolves to a competing online store displaying counterfeit versions of Complainant’s goods for sale. Complainant provides evidence of the disputed domain name resolving to a page displaying Complainant’s logo and mark and advertising for sale what it describes as counterfeit versions of products offered by Complainant. Therefore, the Panel finds that Respondent fails to use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
See Watts Water Technologies Inc. v. wo ci fa men zhi zao (kun shan) you xian gong si, FA 1740269 (Forum Aug. 11, 2017) (“Respondent has used the domain name to resolve to a website that mimics the color scheme associated with Complainant’s WATTS brand and displays counterfeit versions of Complainant’s products for purchase in an attempt to pass itself off as Complainant… [therefore], the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.”); see also eLuxury.com Inc. v. WangJunJie, FA 1075554 (Forum Nov. 30, 2007) (concluding that the sale of counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name).
Since Complainant asserts that the disputed domain is used for selling counterfeit versions of products offered by Complainant and Respondent has not rebutted this assertion, it appears that the Respondent is not an authorized dealer of the Complainant’s products therefore to the Panel has not further investigated the bona fide nature as in the Oki Data decision (WIPO Arbitration and Mediation Center, Case No. D2001-0903, Oki Data Americas, Inc. v. ASD, Inc.).
The Panel accordingly finds that Complainant has satisfied the second element of the Policy.
Complainant argues that Respondent registered and uses the <foxracestore.com> domain name in bad faith because Respondent’s use of the domain name disrupts Complainant’s business and attempts to attract Internet users to what Complainant calls “nothing more than a counterfeit website.” Use of a disputed domain name to redirect consumers to a competing online store selling counterfeit goods is evidence of bad faith disruption Complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See H-D U.S.A., LLC v. Linchunming / linchunming, FA1411001589214 (Forum Dec. 22, 2014) (“As mentioned above, Respondent uses the domain name to promote counterfeit goods like those offered by Complainant. Doing so disrupts Complainant’s business and demonstrates Respondent’s bad faith under 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).
Complainant provides evidence of the disputed domain name resolving to a page displaying for sale what it asserts are counterfeit versions of Complainant’s goods – an assertion that Respondent has not rebutted. Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) or (iv).
Complainant further argues that Respondent registered and uses the <foxracestore.com> domain name in bad faith because Respondent uses Complainant’s logo in an attempt to take advantage of confusion with Complainant’s mark to attract Internet users to its competing website for commercial gain. Use of a domain name that is confusingly similar to a complainant’s mark is evidence of a bad faith attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
In addition, use of a disputed domain name to imitate Complainant’s website is evidence of an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). 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.”).
Complainant provides evidence that Respondent utilizes Complainant’s logo and other identifiers and for the other reasons discussed above the Panel finds that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
The Panel accordingly finds that Complainant has satisfied the third and final element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <foxracestore.com> domain name be TRANSFERRED from Respondent to Complainant.
Katalin Szamosi (Presiding Panelist), Douglas M. Isenberg and Paul M. DeCicco as Panelists
Dated: August 16, 2022
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