Backcountry.com, LLC v. Ryeub Uhfry / Ughfe Opdeh
Claim Number: FA2302002030935
Complainant is Backcountry.com, LLC (“Complainant”), represented by Craig A. Beaker of Holland & Hart LLP, Colorado, USA. Respondent is Ryeub Uhfry / Ughfe Opdeh (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <salebackcountry.com> and <clothingback.com> (collectively “Domain Names”), 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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to Forum electronically on February 7, 2023; Forum received payment on February 7, 2023.
On February 9, 2023, Name.com, Inc. confirmed by e-mail to Forum that the <salebackcountry.com> and <clothingback.com> domain names are 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 February 14, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 6, 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@salebackcountry.com, postmaster@clothingback.com. Also on February 14, 2023, 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 March 11, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith 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 Names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant contends that both of the registrants for the Domain Names are related because: 1) the Domain Names are both variants of Complainant’s BACKCOUNTRY mark, containing the BACKCOUNTRY mark or an abbreviation and a generic term 2) the Domain Names were registered with the same 3 registrar and privacy service 3) the named registrants share the same street address, e-mail address and phone number 4) the Domain Names were registered within two days of each other 3) the Domain Names resolve to very similar websites (“Respondent’s Websites”) which purport to offer Complainant’s BACKCOUNTRY products and share photographs, content and content listings taken from the Complainant’s website. This evidence, in the Panel’s opinion, strongly suggests that the Domain Names are owned/controlled by a single Respondent; were the named Respondents unrelated, it would be unlikely that two unconnected entities at the same address would register similar domain names with the same registrar and point them to websites operating an identical business model.
In light of these contentions, which none of the identified Respondents deny, the Panel concludes that, on the balance of probabilities, the Domain Names are commonly owned/controlled by a single Respondent who is using multiple aliases. Hereafter the single Respondent will be referred to as “Respondent” for this Decision.
A. Complainant
Complainant, Backcountry.com, LLC, provides a variety of apparel and outdoor recreation equipment. Complainant has rights in the BACKCOUNTRY mark through numerous trademark registrations, including with the Unites States Patent and Trademark Office (“USPTO”) (e.g., BACKCOUNTRY USPTO Reg. No. 5,164,389, which was registered on March 21, 2017). Respondent’s <salebackcountry.com> and <clothingback.com> domain names are confusingly similar to the BACKCOUNTRY mark since they include either the entire mark or an abbreviated version of the mark and then add a generic term and a generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <salebackcountry.com> and <clothingback.com> domain names since Respondent is not licensed or authorized to use Complainant’s BACKCOUNTRY mark and is not commonly known by the Domain Names. Additionally, Respondent does not use the Domain Names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the Domain Names resolve to pages that display Complainant’s BACKCOUNTRY mark and/or logo and attempt to pass themselves off as Complainant.
Respondent registered and uses the <salebackcountry.com> and <clothingback.com> domain names in bad faith. Respondent has been involved in a prior UDRP proceeding against Complainant in which the domain name <shopbackcountry.com> was transferred from Respondent to Complainant. Respondent disrupts Complainant’s business by passing themselves off as Complainant and purporting to offer competing goods. Finally, Respondent registered the Domain Names with actual knowledge of Complainant’s rights in the BACKCOUNTRY mark as shown by Respondent’s attempts to pass off as Complainant and offer competing goods.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the BACKCOUNTRY mark. Each of the Domain Names is confusingly similar to Complainant’s BACKCOUNTRY mark. Complainant has established that Respondent lacks rights or legitimate interests in the Domain Names and that Respondent registered and has used the Domain Names 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 has rights in the BACKCOUNTRY mark under Policy ¶ 4(a)(i) through its registration of the mark with the USPTO (e.g. Reg. No. 5,164,389, which was registered on March 21, 2017). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
The Panel finds that each of the Domain Names are confusingly similar to the BACKCOUNTRY mark as they each incorporate either the BACKCOUNTRY mark in its entirety or the first element (“BACK”) of the BACKCOUNTRY mark while adding generic terms (“sale” and “clothing”) and the “.com” gTLD. Such changes are insufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i) analysis. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain); see also SEMCO Prods., LLC v. dmg world media (uk) ltd, FA 913881 (Forum Apr. 9, 2007) (finding that the <atlhomeshow.com> domain name was confusingly similar to the complainant’s ATLANTA HOME SHOW mark, as “atl” was a common abbreviation for the city of Atlanta); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (finding top-level domains are irrelevant for purposes of Policy ¶ 4(a)(i) analysis).
In support of the above conclusion, especially with respect to the <clothingback.com> domain name, the Panel notes that the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ¶ 1.15 states that “In some instances, panels have however taken note of the content of the website associated with a domain name to confirm confusing similarity whereby it appears prima facie that the respondent seeks to target a trademark through the disputed domain name.” In the present case, by reason of the facts outlined under the elements below, it is clear that Respondent has sought to target and indeed pass itself off as Complainant through the use of the Domain Names. The Panel finds that the intention of Respondent to mislead Internet users into thinking it is Complainant or connected with Complainant confirms the confusingly similar nature of the Domain Names.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Names. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names as Respondent is not commonly known by the Domain Names, nor has Complainant authorized Respondent to use the BACKCOUNTRY mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “Ryeub Uhfry / Ughfe Opdeh” as the registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Names in accordance with Policy ¶ 4(c)(ii).
Each of the Domain Names resolves to the Respondent’s Websites. These websites, through the reproduction of the BACKCOUNTRY mark, Complainant’s logo (at the website at the <salebackcountry.com> domain name), copyrighted photos of Complainant’s products and other references to Complainant, each pass themself off as an official website of the Complainant for the purpose of selling unauthorized versions of Complainant’s goods, in direct competition with Complainant’s merchandise. The use of a confusingly similar domain name to resolve to a webpage that directly offers unauthorized versions of a complainant’s goods or goods or services that directly compete with a complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use; indeed it provides a false impression that the Respondent is affiliated with or authorized by Complainant. See BALENCIAGA SA v. ling lin, FA 1768542 (Forum Feb. 16, 2018) (“The disputed domain names incorporate Complainant's registered mark, and are being used for websites that prominently display Complainant's mark and logo, along with apparent images of Complainant's products, offering them for sale at discounted prices. The sites do not disclaim any connection with Complainant, and in fact seem to be designed to create an appearance of such a connection. Such use does not give rise to rights or legitimate interests.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds on the balance of probabilities that, at the time of registration of the Domain Names (April 6 and April 8, 2022), Respondent had actual knowledge of Complainant’s BACKCOUNTRY mark since each of the Respondent’s Websites passes off as an official website of the Complainant by reproducing material from Complainant and making repeated references to Complainant and its products. Furthermore, there is no obvious explanation, nor has one been provided, for an entity to register two domain names that contain the BACKCOUNTRY mark (or the first element of the mark) and use them to redirect visitors to similar websites selling goods in direct competition with the Complainant under the BACKCOUNTRY mark other than to take advantage of Complainant’s reputation in the BACKCOUNTRY mark. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Names in bad faith to create confusion with Complainant’s BACKCOUNTRY mark for commercial gain by using the confusingly similar Domain Names to resolve to websites copying Complainant’s websites and offering unauthorized versions of Complainant’s products in direct competition with the Complainant’s products. Using a confusingly similar domain name to trade upon the goodwill of a complainant can evince bad faith under Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). See also 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.”).
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 <salebackcountry.com> and <clothingback.com> domain names be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: March 13, 2023
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