Gotham Licensing Group LLC v. fenglan li
Claim Number: FA2212002024057
Complainant is Gotham Licensing Group LLC (“Complainant”), represented by Harlan M. Lazarus of Lazarus & Lazarus P.C., New York. Respondent is fenglan li (“Respondent”), CN.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <blank-nyc.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.
The Honorable Neil Anthony Brown KC as Panelist.
Complainant submitted a Complaint to Forum electronically on December 14, 2022; Forum received payment on December 14, 2022.
On Dec 15, 2022, Name.com, Inc. confirmed by e-mail to Forum that the <blank-nyc.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 December 16, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 5, 2023 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@blank-nyc.com. Also on December 16, 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 January 9, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC 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
Complainant made the following contentions.
Complainant Submits that it has rights in the [BLANKNYC] mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,813,705 registered July 6, 2010). See Compl. Ex. 1. The disputed domain name <blank-nyc.com> is confusingly similar because in incorporates a dominant portion of Complainant’s mark differing only through the deletion of the brackets and addition of the hyphen with the addition of the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the [BLANKNYC] mark in any way. Additionally, Respondent fails to use the disputed domain name in connection with make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to create a likelihood of confusion so that it can commercially benefit by selling counterfeit goods.
Respondent registered and uses the disputed domain name in bad faith. Respondent uses the disputed domain to pass itself off as Complainant to sell counterfeit and competing goods for commercial gain. Finally, Respondent used false information when registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the apparel industry.
2. Complainant has established its rights in the [BLANKNYC] mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,813,705 registered July 6, 2010).
3. Respondent registered the disputed domain name on August 13, 2022.
4. Respondent has caused the disputed domain name to be used to create a likelihood of confusion so that Respondent can commercially benefit by selling counterfeit goods.
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”).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s [BLANKNYC] mark. Complainant argues that Respondent’s <blank-nyc.com> domain name is confusingly similar to Complainant’s [BLANKNYC] mark because it incorporates a dominant portion of Complainant’s mark with removing the brackets and the additions of the hyphen (“-“) and the “.com” gTLD. Adoption of a dominant portion of a legitimate mark into a domain name has been found to constitute confusing similarity. See Supercell Oy v. WhoisProxy.com Ltd / Jordan Rash, Application Automation LLC, D2015-1445 (WIPO Oct 9, 2015) (determining that Respondent’s incorporation of the word “clash” into a domain conferred standing because “clash was identical to Complainant’s CLASH OF CLANS mark). Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s [BLANKNYC] mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s [BLANKNYC] mark and to use it in its domain name, removing the brackets and adding the hyphen (“-“);
(b) Respondent registered the <blank-nyc.com> domain name on August 13, 2022;
(c) Respondent has caused the disputed domain name to be used to create a likelihood of confusion so that Respondent can commercially benefit by selling counterfeit goods;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent lacks rights or legitimate interests in the disputed domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been given license or consent to use the [BLANKNYC] mark or register domain names using Complainant’s mark. Where a response is lacking, WHOIS information may be used to determine whether a respondent is 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). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed 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)”). The WHOIS information associated with the disputed domain does not indicate that Respondent is known by the disputed domain name. See WHOIS Information. The Respondent is known as “fenglan li.” See Registrar verification email. Respondent was not given rights to use the [BLANKNYC] mark nor was commonly known by the disputed domain name. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name and was not granted usage rights per Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent does not make a bona fide offering of goods or services. Respondent is using an identical or confusingly similar domain name to redirect internet users to purchase counterfeit apparel for Respondent’s own commercial gain and to create a likelihood of confusion. Previous panels have held that usage of a disputed domain to market counterfeit goods is not a legitimate use. 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.”). Complainant has provided a screenshot of the resolving webpage of the disputed domain name purporting to offer goods associated with Complainant. See Compl. Ex. 3. As the Panel agrees, it finds that Respondent fails to use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶ 4(c)(i) and 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a formal Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <blank-nyc.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC
Panelist
Dated: January 10, 2023
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