Tenacious Holdings, Inc. d/b/a Ergodyne v. Hongxia456 Wei
Claim Number: FA2305002042827
Complainant is Tenacious Holdings, Inc. d/b/a Ergodyne (“Complainant”), Minnesota, USA, represented by Emma K. Morehart of Vorys, Sater, Seymour and Pease LLP, Ohio, USA. Respondent is Hongxia456 Wei (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ergodynestore.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 May 2, 2023; Forum received payment on May 2, 2023.
On May 8, 2023, Name.com, Inc. confirmed by e-mail to Forum that the <ergodynestore.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 May 12, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 1, 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@ergodynestore.com. Also on May 12, 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 June 6, 2023, 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, Tenacious Holdings, Inc. d/b/a Ergodyne offers ergonomic products. Complainant asserts rights in the ERGODYNE mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,581,378, registered June 18, 2002). The disputed domain name is confusingly similar to Complainant’s ERGODYNE trademark because it incorporates the mark in its entirety and adds the generic word “store” and the generic top-level domain name (“gTLD”) “.com” to form.
ii) Respondent does not have rights or legitimate interests in the disputed domain name. Respondent is not licensed or authorized to use Complainant’s ERGODYNE mark and is not commonly known by the disputed domain name. Respondent also does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Respondent attempts passing off as Complainant by offering its products for sale.
B. Respondent
Respondent did not submit a response in this proceeding.
1. The disputed domain name was registered on September 5, 2022.
2. Complainant has established rights in the ERGODYNE mark based upon registration with the USPTO (e.g., Reg. No. 2,581,378, registered June 18, 2002).
3. Respondent attempts to pass itself off as Complainant by mimicking the layout of Complainant’s website and copying images and language from Complainant’s website.
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 asserts rights in the ERGODYNE mark based upon registration with the USPTO (e.g., Reg. no. 2,581,378, registered June 18, 2002). Registration of a mark with the USPTO is considered a valid showing of rights under Policy ¶ 4(a)(i). Since Complainant has provided evidence of registration of the ERGODYNE mark with the USPTO, the Panel finds that Complainant has established rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that the disputed domain name <ergodynestore.com> is confusingly similar to Complainant’s ERGODYNE trademark because it incorporates the mark in its entirety and adds the generic word “store” and the gTLD “.com”. The addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i). See MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”). Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s ERGODYNE 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 contends that Respondent does not have rights or legitimate interests in the disputed domain name because Respondent is not licensed or authorized to use Complainant’s ERGODYNE mark and is not commonly known by the disputed domain name. 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. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). 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 Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”). The WHOIS information for the disputed domain name lists the registrant as “Hongxia456 Wei.” Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant contends Respondent also does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Respondent attempts passing off as Complainant by offering its products for sale. Replicating a complainant’s website and displaying a complainant’s products is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (iii). See Nokia Corp. v. Eagle, FA 1125685 (Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)); see also Fadal Engineering, LLC v. DANIEL STRIZICH,INDEPENDENT TECHNOLOGY SERVICE INC, FA 1581942 (Forum Nov. 13, 2014) (finding that Respondent’s use of the disputed domain to sell products related to Complainant without authorization “does not amount to 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).”). Complainant provides screenshots of the disputed domain name’s resolving webpage showing use of Complainant’s mark and offers of its products for sale. The Panel notes that the disputed domain name’s resolving website uses Complainant’s ERGODYNE logo or one confusingly similar in the URL icon, and the ERGODYNE trademark throughout. The Panel further notes that Respondent attempts to pass itself off as Complainant by mimicking the layout of Complainant’s website and copying images and language from Complainant’s website. Thus, the Panel finds Respondent does not provide 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).
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. Respondent disrupts Complainant’s business by offering its products for commercial gain. Respondent creates a likelihood of confusion with Complainant by attempting to pass off for commercial gain. Replicating a complainant’s website and displaying a its products is evidence of bad faith under Policy ¶ 4(b)(iv). See Fanuc Ltd v. Mach. Control Servs., FA 93667 (Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products). The Panel recalls Complainant provides screenshots of the disputed domain name’s resolving webpage showing use of Complainant’s mark and offers of its products for sale. The Panel notes that the disputed domain name’s resolving website uses Complainant’s ERGODYNE logo or one confusingly similar in the URL icon, and the ERGODYNE trademark throughout. The Panel further notes that Respondent attempts to pass itself off as Complainant by mimicking the layout of Complainant’s website and copying images and language from Complainant’s website. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(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 <ergodynestore.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: June 12, 2023
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