Shock Doctor, Inc. v. lin lin
Claim Number: FA2210002017027
Complainant is Shock Doctor, Inc. (“Complainant”), USA, represented by Brian S.S. Auerbach of Ballard Spahr LLP, Pennsylvania. Respondent is lin lin (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <shock-doctor.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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to Forum electronically on October 21, 2022; Forum received payment on October 21, 2022.
On October 24, 2022, Name.com, Inc. confirmed by e-mail to Forum that the <shock-doctor.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 October 25, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 14, 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@shock-doctor.com. Also on October 25, 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 16, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
i) Complainant Shock Doctor, Inc. has been selling high quality protective gear for athletics for over 30 years. Complainant has rights in the SHOCK DOCTOR mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,874,753, registered January 17, 1995). The disputed domain name is confusingly similar to Complainant’s mark since it merely adds a hyphen and the “.com” generic top-level domain (“gTLD”) to the SHOCK DOCTOR mark.
ii) Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its SHOCK DOCTOR mark in the disputed domain name. Respondent does not use the domain name in connection with any bona fide offering of goods or services, nor a legitimate non-commercial or fair use. Respondent uses the disputed domain name to pass itself off as Complainant.
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent’s use of the disputed domain name to pass itself off as Complainant in an attempt to defraud Complainant’s customers and disrupt Complainant’s business is clear evidence of Respondent’s bad faith registration and use under Policy 4(b)(iv).
B. Respondent
Respondent did not submit a Response in this proceeding.
1. The disputed domain name was registered on August 26, 2022.
2. Complainant has established rights in the SHOCK DOCTOR mark based upon registration with the USPTO (e.g., Reg. No. 1,874,753, registered January 17, 1995).
3. The disputed domain name hosts a confusingly similar copy of Complainant’s legitimate website, which sells counterfeit Complainant goods bearing counterfeit SHOCK DOCTOR trademarks.
4. Complainant has received several reports of third-parties being scammed by Respondent.
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 claims rights in the SHOCK DOCTOR mark based upon registration with the USPTO. Registration with the USPTO is generally sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Complainant provides evidence of its registration with the USPTO (e.g., Reg. No. 1,874,753, registered January 17, 1995). Therefore, the Panel finds that Complainant has rights in the SHOCK DOCTOR mark under Policy ¶ 4(a)(i).
Complainant argues that the disputed domain name is confusingly similar to Complainant’s mark since it merely adds a hyphen and the “.com” gTLD to the SHOCK DOCTOR mark. The addition of a hyphen does nothing to distinguish the disputed domain name from Complainant’s mark. See Health Devices Corp. v. Aspen STC, FA158254 (Forum July 1, 2003) (addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy 4(a)(i)); Central Source LLC v. annualcreditreport-com.us, No. 1:14CV305, 2014 WL 3767071, at *7 (E.D. Va. 2014) (use of a hyphen deemed insufficient to distinguish the marks and constituted “typosquatting”). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name 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”).
Complainant argues that Respondent does not have rights or legitimate interests in the disputed domain name because Respondent is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name 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). The WHOIS information of record lists the registrant as “lin lin” and no other information of record suggests that Respondent is commonly known by the domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent fails to use the disputed domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant specifically points out that the disputed domain name hosts a confusingly similar copy of Complainant’s legitimate website, which sells counterfeit Complainant goods bearing counterfeit SHOCK DOCTOR trademarks. Complainant provides screenshots of the disputed domain name’s resolving website and Complainant’s own website. The Panel finds that the use of the disputed domain name to pass Respondent off as Complainant does not constitute bona fide offering of goods or services, nor any legitimate non-commercial or fair use.
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. 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 name.
Complainant contends that Respondent registered and uses the disputed domain name in bad faith since Respondent disrupts Complainant’s business and commercially benefits by passing itself off as Complainant. Complainant points out that Respondent uses the disputed domain name to host a confusingly similar copy of Complainant’s legitimate website, which sells counterfeit Complainant goods bearing counterfeit SHOCK DOCTOR trademarks. Complainant submits that it has received several reports of third-parties being scammed by Respondent.
Use of a disputed domain name to pass off as a complainant and offer competing or counterfeited goods may be evidence of bad faith per Policy ¶ 4(b)(iii) and (iv). 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 Guess? IP Holder L.P. and Guess?, Inc. v. LI FANGLIN, FA 1610067 (Forum Apr. 25, 2015) (finding respondent registered and used the domain name in bad faith per Policy ¶ 4(b)(iii) because the respondent used the resolving website to sell the complainant’s products, using images copied directly from the complainant’s website), 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.”).
The Panel recalls that Complainant has provided the Panel with screenshots of the disputed domain name's resolving website which mirrors the design of Complainant’s own website, and sells counterfeit goods under the SHOCK DOCTOR mark. Therefore, the Panel agrees and finds that Respondent registered and used the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) or (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <shock-doctor.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: November 22, 2022
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