WE NORWEGIANS, AS v. Ljdej Ujwiw
Claim Number: FA2211002018628
Complainant is WE NORWEGIANS, AS (“Complainant”), represented by Stephanie C. Alvarez of Holley & Menker, P.A., Florida, USA. Respondent is Ljdej Ujwiw (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <we-norwegians.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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to Forum electronically on November 1, 2022; Forum received payment on November 1, 2022.
On November 2, 2022, Name.com, Inc. confirmed by e-mail to Forum that the <we-norwegians.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 November 3, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 23, 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@we-norwegians.com. Also on November 3, 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 30, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Bruce E. Meyerson 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
1. Complainant, We Norwegians, is a sustainable clothing company that does business under the WE NORWEGIANS mark. Complainant has rights in the WE NORWEGIANS mark through its trademark registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,729,685 registered on May 5, 2015).
2. Respondent’s <we-norwegians.com>[i] domain name is confusingly similar to the WE NORWEGIANS mark because the domain name incorporates the entirety of the mark and merely adds a hyphen and the “.com” generic top-level domain (“gTLD”).
3. Respondent lacks rights or legitimate interests in the <we-norwegians.com> domain name, as Complainant has never authorized or licensed use of the mark to Respondent. Respondent also fails to demonstrate a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name.
4. Respondent is intentionally misleading consumers, passing itself off as Complainant to perpetrate fraud and offer competing products.
5. Respondent registered and is using the domain name in bad faith. The <we-norwegians.com> domain name includes the whole WE NORWEGIANS mark and Respondent had actual knowledge of Complainant’s rights in the mark.
6. Respondent is also seeking to pass itself off as or portray an affiliation with Complainant. Respondent is likely commercially benefiting from misleading consumers and using the resolving site to commit fraud.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the WE NORWEGIANS mark. Respondent’s domain name is confusingly similar to Complainant’s WE NORWEGIANS mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <we-norwegians.com> domain name and that Respondent registered and uses the domain name in bad faith.
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 WE NORWEGIANS mark through trademark registration with the USPTO (e.g., Reg. No. 4,729,685 registered on May 5, 2015). Registration of a mark with the USPTO is a valid showing of rights in a mark under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Complainant has provided evidence of registration of the WE NORWEGIANS mark with the USPTO; thus, the Panel finds Complainant has demonstrated rights in the WE NORWEGIANS mark per Policy ¶ 4(a)(i).
Complainant argues that the <we-norwegians.com> domain name is confusingly similar to its WE NORWEGIANS mark because it incorporates the mark in its entirety. When a domain name uses the whole of a registered trademark and merely adds in a hyphen and a gTLD, panels have found it sufficient for a finding of confusing similarity. See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”). Because the <we-norwegians.com> domain name includes the entirety of Complainant’s WE NORWEGIANS mark and merely adds a hyphen and the “.com” gTLD, the Panel holds that the <we-norwegians.com> domain name is identical or confusingly similar under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <we-norwegians.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.) The Panel holds that Complainant has made a prima facie case.
Complainant claims that Respondent lacks rights or legitimate interests in the <we-norwegians.com> domain name, as Complainant has never authorized or licensed use of the WE NORWEGIANS mark to Respondent. Lack of authorization for the use of a mark may indicate that a respondent has no rights or any legitimate interests in a domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). Complainant asserts it has never given Respondent authorization or any license to use its WE NORWEGIANS mark. Given that this assertion is not contradicted, the Panel holds that Respondent lacks rights or legitimate interests in the <we-norwegians.com> domain name per Policy ¶ 4(c)(ii).
Complainant also argues that Respondent has not made a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the <we-norwegians.com> domain name because Respondent is seeking to intentionally mislead consumers by passing itself off as Complainant. The use of a domain name that is confusingly similar to a mark to which a complainant has rights, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See ShipChain, Inc. v. 谢东东 / 谢东东, FA 1785189 (Forum June 21, 2018) (“The resolving webpages between Complainant’s and Respondent’s websites are virtually the same. Respondent’s use of the disputed domain name does not confer rights and legitimate interests under Policy ¶¶4(c)(i) and (iii).”). Complainant has provided evidence that not only is the domain name confusingly similar to its WE NORWEGIANS mark, but also that the resolving site features its logo and copyrighted product images, indicating that Respondent is either Complainant or affiliated with Complainant. Accordingly, the Panel holds that Respondent lacks any bona fide offering of goods or services or legitimate noncommercial or fair use of the <we-norwegians.com> domain name under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and is using the domain name in bad faith because Respondent is using the <we-norwegians.com> domain name to pass of as or portray some affiliation or association with Complainant for commercial gain. When a domain name is confusingly similar to a mark, it may be evidence of a bad faith attempt to attract users for commercial gain per Policy ¶ 4(b)(iv). See 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). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 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 has provided evidence that the resolving site features the WE NORWEGIANS logo and copyrighted images in an apparent effort to misrepresent the <we-norwegians.com> domain name as affiliated with Complainant. Therefore, the Panel holds that Respondent registered and uses the <we-norwegians.com> domain name in bad faith per Policy ¶ 4(b)(iv).
Complainant also argues that Respondent had actual knowledge of Complainant’s rights in the WE NORWEGIAN mark. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Complainant notes that the <we-norwegians.com> domain name uses the mark in its entirety and the resolving site, through its display of the logo and images, clearly suggests actual knowledge. Prior Panels have agreed such evidence demonstrates actual knowledge See WordPress Foundation v. mich delorme / mich d dots tlds, FA1410001584295 (Forum , Nov. 25, 2014) (“Because Respondent here relies on the WORDPRESS mark in the disputed domain name and also makes use of Complainant’s services at the resolving page, the Panel finds that Respondent had actual knowledge of Complainant’s mark, and that such knowledge evidences Policy ¶ 4(a)(iii) bad faith.”). Thus, the Panel holds that Respondent had actual knowledge of Complainant’s rights in the mark per Policy ¶ 4(a)(iii).
The Panel finds 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 <we-norwegians.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: December 10, 2022
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