Woot LLC v. 王 鹏
Claim Number: FA2210002014580
Complainant is Woot LLC (“Complainant”), represented by David J. Diamond of Richard Law Group, Inc., Texas, USA. Respondent is 王 鹏 (“Respondent”), CN.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <wootjapan.com>, <wootjp.com>, <wootsypo.com> and <wootyoiu.com> (“Disputed Domain Names”), registered with Name.com, Inc. (“Registrar”).
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to Forum electronically on October 3, 2022; Forum received payment on October 3, 2022.
On October 04, 2022, the Registrar confirmed by e-mail to Forum that the Disputed Domain Names are registered with it and that Respondent is the current registrant of the names. The Registrar verified that Respondent is bound by the its 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 October 10, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 31, 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@wootjapan.com, postmaster@wootjp.com, postmaster@wootsypo.com, postmaster@wootyoiu.com. Also on October 10, 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, Forum transmitted to the parties a Notification of Respondent Default.
On November 6, 2022, pursuant to the complainants’ request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
The Complaint requests that the Disputed Domain Names be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in WOOT and submits that the Disputed Domain Names are confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the Disputed Domain Names.
Complainant alleges that Respondent registered and used the Disputed Domain Names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant provides online retail services;
2. Complainant owns, inter alia, United States Patent & Trademark Office (“USPTO”) Reg. No. 3,012,788, registered on November 8, 2005, for the trademark, WOOT;
3. the Disputed Domain Names were created in March and April of 2022; and
4. there is no association between the parties and Complainant has not authorized Respondent to use its trademark or register any domain name incorporating its trademark.
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 based on 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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights[i]. Complainant therefore has rights in WOOT since it provides proof of its registration of that trademark with the USPTO, a national trademark authority.
For the purposes of comparison of the Disputed Domain Names with the trademark, the gTLD “.com” can be disregarded as trivial. Thereafter, the Disputed Domain Names take the trademark to which they add the country name, “japan”, or its most common abbreviation, “jp”, or the descriptive term, “sypo” (shorthand for “sell your products online”), or the seemingly meaningless letters, “yoiu”. Those additions are of no distinctive value and the trademark remains the recognizable part of the Disputed Domain Names. As such, the Panel finds the names to be confusingly similar to the trademark[ii].
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
For the purposes of discussion which follows, the Panel finds this to be a convenient place to make the additional finding that the trademark is well-known. Complainant’s business was launched in 2004 and the evidence of public recognition includes a No. 1 listing in 2008 in Inc. magazine of the fastest growing private retail companies at that time; a highly publicized acquisition of Complainant by Amazon.com in 2010; and prior UDRP decisions such as Woot, Inc. v. Brooks, FA1506001622681 (Forum July 16, 2015) and Woot LLC v. 猩 猩, FA2208002007177 (Forum Sept. 6, 2022), both noting that Complainant’s WOOT trademark was well-known.
Rights or Legitimate Interests
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the Disputed Domain Names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests[iii].
The name of the domain name holder, as disclosed by the Registrar, does not provide any indication that Respondent might be commonly known by any of the Disputed Domain Names. There is no evidence that Respondent has any trademark rights. Complainant states that there is no association between the parties and Respondent has no authority to use the trademark.
The evidence accompanying the Complaint is that the Disputed Domain Names have either not been used at all, or have been used to impersonate Complainant as part of a phishing or otherwise fraudulent scheme. The Panel is satisfied of that evidence and finds that Complainant has established a prima facie case[iv].
The onus shifts to Respondent and, in the absence of a Response, Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the Disputed Domain Names were registered in bad faith and used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.
In the case of the names which have been used, the Panel finds that Respondent’s actions fall under paragraph 4(b)(iv) above. The Panel has already found confusing similarity. The use is for commercial gain. In terms of the Policy, the Panel finds that Respondent has intentionally used the disputed domain name to attract, for commercial gain, internet users to its online location by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of that location[v].
In the case of the names which have not been used, the Panel finds, as separate matters, registration in bad faith and ‘use’ in bad faith. The Panel has already found the Disputed Domain Names to be confusingly similar to the trademark. There is no apparent reason for Respondent to register the names in good faith since the trademark appears to only refer to Complainant’s business and has no other shown meaning. In the absence of another explanation, the Panel finds that Respondent targeted Complainant’s trademark and business and so finds registration in bad faith (see, for example, Morgan Stanley v. TONY / shentony, FA 1637186 (Forum Oct. 10, 2015), stating that: “Complainant’s MORGAN STANLEY marks are so well-known that the only plausible inference that can be derived from Respondent’s registration of the disputed domain name is that Respondent registered the disputed domain name to take advantage of and intentionally trade on the goodwill associated with Complainant’s marks.”)
The Panel refers to its earlier finding that the trademark is well-known. Although the there is no use, the Panel cannot envisage any unauthorized use which would be in good faith. Accordingly, the Panel finds so-called passive holding in bad faith and so finds registration in bad faith in line with the principles first enunciated in Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).
Panel 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 Disputed Domain Names be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: November 16, 2022
[i] See, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)).
[ii] See, for example, Dell Inc. v. Suchada Phrasaeng, FA 1745812 (Forum Sept. 28, 2017) (“Adding geographical terms does not sufficiently distinguish a domain name from a mark to prevent a finding of confusingly similarity under a Policy ¶ 4(a)(i) analysis.”; Franklin Covey Co. v. franklincoveykorea, FA 1774660 (Forum Apr. 11, 2018) finding that the <franklincoveykorea.com> domain name is confusingly similar to the FRANKLIN COVEY mark, as “[t]he addition of a geographic term and a gTLD do not negate confusing similarity between a domain name and a mark per Policy ¶ 4(a)(i).”;
Net2phone Inc. v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) finding <net2phone-europe.com> confusingly similar to the complainant’s mark because “the combination of a geographic term with the mark does not prevent a domain name from being found confusingly similar"; Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2014) ("...it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark."); Hewlett-Packard Dev. Co. L.P. v. Surya Tech., FA0708001059665 (FORUM Oct. 2, 2007) (“addition of a term that relates to the business in which Complainant engages and the addition of the gTLD are not sufficient to differentiate a domain name from a known mark”); Caterpillar Inc. v. personal, D2010-2190 (WIPO Feb. 8, 2011) adding the name of a product the Complainant markets to Complainant’s mark is “likely to compound the likelihood of confusion”; Amazon Technologies, Inc. v. Naguib, FA1608001688949 (FORUM Sept. 16, 2016) finding <amazonarabmarket.com> confusingly similar to AMAZON; The Timken Co. v. Chun, FA2204001990760 (FORUM May 12, 2022) finding <timken-bendac.com> confusingly similar to complainant’s TIMKEN mark after noting that the addition of “the meaningless word ‘bendac’” to complainant’s mark “is generally insufficient to create a distinction between a complainant’s mark and a disputed domain name under Policy ¶ 4(a)(i)”; see, finally, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition § 1.8: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element” of the Policy.
[iii] See, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
[iv] See, for example, Woot LLC v. 猩 猩, FA2208002007177 (Forum Sept. 6, 2022) finding no bona fide or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii) where the respondent’s webpages displayed “Complainant’s mark and logo and identif[ied] Amazon—Complainant’s parent company” and requested that consumers send payments that purportedly would lead to later compensation; Amazon Technologies, Inc. v. Bernson, FA2006001900330 (Forum July 14, 2020) (“Passing off as a complainant in furtherance of a fraudulent scheme is neither a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii).”); Charles Komar & Sons, Inc. v. Bates, FA1108001405374 (Forum Oct. 12, 2011) finding that using the disputed domain name in connection with a phishing scam does not coincide with a bona fide offering of goods or services or a legitimate noncommercial or fair use; Amazon Technologies, Inc. v. Folkerts, FA2110001967621 (Forum Nov. 3, 2021) (“the Panel considers it likely that the Inactive Domain Names are being held pending use in a similar manner to the Active Domain Names”); Flor-Jon Films, Inc. v. Larson, FA0006000094974 (Forum July 25, 2000); see also Sun Microsystems, Inc. v. Color Vivo Internet, FA0909001282898 (Forum Oct. 21, 2009) (“failure to make any active use of [the disputed] domain name is not 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)”).
[v] See, for example, Yahoo! Inc. v. Kalra, FA1512001650447 (Forum Dec. 31, 2015) (“Respondent's registration of domain names obviously intended to create confusion with Complainant, together with its use of those domain names in connection with a fraudulent scheme involving passing itself off as Complainant and attempting to defraud Complainant's customers, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv)”).
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