DECISION

 

Four E, LLC v. bin qin / submit11

Claim Number: FA2311002070278

 

PARTIES

Complainant is Four E, LLC ("Complainant"), represented by Carrie A. Johnson of Eastman & Smith Ltd., Ohio, USA. Respondent is bin qin / submit11 ("Respondent"), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <glassesshop.com> ("Domain Name"), registered with eNom, LLC.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Nicholas J.T. Smith as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on November 8, 2023; Forum received payment on November 8, 2023.

 

On November 9, 2023, eNom, LLC confirmed by e-mail to Forum that the <glassesshop.com> domain name is registered with eNom, LLC and that Respondent is the current registrant of the name. eNom, LLC has verified that Respondent is bound by the eNom, LLC 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 14, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 4, 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@glassesshop.com. Also on November 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 formal response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.

 

On November 16, 2023 and November 29, 2023 Forum received two additional submissions from Complainant, their relevance and admissibility being discussed below.

 

After the Notification of Respondent Default, Complainant changed its original election of a three-member panel to a single-member panel pursuant to Supplemental Rule 9(c). On December 5, 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.

 

RELIEF SOUGHT

Complainant requests that the Domain Name be transferred from Respondent to Complainant.

 

PRELIMINARY ISSUE: ADDITIONAL SUBMISSIONS

The Panel must consider whether to accept the Complainant's Additional Submissions.  While noting the existence of Supplemental Rule 7, the Panel retains the discretion to decide whether to accept additional submissions.  See generally Bar Products.com, Inc. v. RegisterFly.com, FA 829161 (Forum Jan. 9, 2007) (declining to consider Complainant's reply because it adds nothing of substance to the record, and does not address any arguments of Respondent that could not have been anticipated by the Complainant).  If an additional submission simply reargues the same points, there is no reason to accept it; on the other hand, if the additional submission addresses arguments in the Response that Complainant could not have anticipated or provides information unavailable at the time the Complaint was submitted, the Panel may allow the additional submission.

 

In the present case the Complainant's supplemental written submissions contain material that could not have been included in the Complaint, including details of the temporary restraining order issued against Respondent in the Court of Chancery in Delaware on November 13, 2023, further outages of the Complainant's official website hosted on the Domain Name ("Complainant's Website") and further evidence of the Complainant's prior ownership of the Domain Name.  The Panel has exercised its discretion to have regard to both the Complainant's additional submissions.  

 

PARTIES' CONTENTIONS

A. Complainant

Complainant Four E, LLC and its predecessors in title have since 2008 operated an online eyewear store under the GLASSESSHOP Mark and from the Complainant's Website located at the Domain Name.  Complainant asserts rights in the GLASSESSHOP Mark based upon its application for registration with the United States Patent and Trademark Office and under common law through its use in commerce since 2008. Respondent's <glassesshop.com> domain name is identical to Complainant's mark.

 

Respondent has no rights or legitimate interests in the <glassesshop.com> domain name. Respondent has never been authorized to use the GLASSESSHOP mark nor has Respondent sought permission to use the mark. Respondent provided website administration services to Complainant and at some point transferred the Domain Name from Complainant to it. Respondent now seeks the transfer of large sums of money, initially US$150,000 and (following payment of the $150,000) then US$410,000 in exchange for returning control of the Domain Name and threatens to disrupt access to the Complainant's Website located at the Domain Name.  This conduct amounts to unlawful leveraging of the Domain Name in an attempt to extort over US$500,000 from Complainant. Such conduct is not use of the Domain Name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use.

 

Respondent registered and uses the <glassesshop.com> domain name in bad faith. Respondent provided web administration services to Complainant and in that role transferred the Domain Name to itself. Respondent is now working with a rogue former employee of Complainant to blackmail Complainant in exchange for reinstating Complainant's access to the Domain Name and the Complainant's Website. Such conduct amounts to use of the Domain Name in bad faith.

 

B. Respondent

Respondent failed to submit a formal Response in this proceeding.  On December 1, 2023 Respondent sent a single e-mail to Forum stating "There is not any Whois history shows that Complainant had owned the domain glassesshop.com before. I can't find any supporting document in the exhibit that Complainant provided"

 

C. Additional Submissions

Complainant, its predecessor in title or Complainant's director held the Domain Name from 2010 to 2017 and Complainant or its predecessor in title has used it continuously for the Complainant's Website since 2008.  Some time after 2017 ownership was transferred from the Complainant to the Respondent without the knowledge of the Complainant.

 

Complainant has now obtained a court order in the Court of Chancery of the State of Delaware restraining Respondent from any action to interfere with, shut down access to or transfer the Domain Name to a third party. Respondent is in breach of the court order and has now shut down the Complainant's Website until it's payment demands are satisfied.

 

FINDINGS

Complainant holds trademark rights for the GLASSESSHOP mark.  The Domain Name is identical to Complainant's GLASSESSHOP mark.  Complainant has established that Respondent lacks rights or legitimate interests in the use of the Domain Name and that Respondent registered and uses the Domain Name in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").

 

Identical and/or Confusingly Similar

While Complainant has a trade mark application for the GLASSESSHOP mark with the USPTO, an application to register a mark with the USPTO is generally not sufficient to establish rights in that mark.  See Jireh Industries Ltd. v. DVLPMNT MARKETING, INC. / Domain Administrator, FA 1719671 (Forum Apr. 14, 2017) ("Pending trademark applications do not confer rights under Policy ¶ 4(a)(i).").

 

As Complainant does not have any registered trade mark rights it is therefore necessary to consider whether Complainant holds common law rights in the GLASSESSHOP mark as Policy ¶ 4(a)(i) does not require a complainant to hold a registered trademark if it can demonstrate established common law rights in the mark.  See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017).  To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning.  See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of "long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark's having acquired secondary meaning."). 

 

Complainant or its predecessors in title has offered an online eyewear service under the GLASSESSHOP mark since 2008. Since that date its sales and advertising have been significant, with $25.5 million in sales between 2020 and 2022. The Complainant's Website at the Domain Name receives approximately 400,000 unique visitors per month, its Facebook account has 145,000 followers and its Instagram account has 54,000 followers. It's success has received significant reporting in third party media. Notwithstanding the fairly descriptive nature of the mark, the Panel is satisfied from the evidence in the Complaint as to length and manner of use as well as evidence of reputation in the market that Complainant's use of the GLASSESSHOP mark for an online eyewear retail is sufficient to establish secondary meaning in that mark and hence Complainant has common law rights in the GLASSESSHOP mark for the purposes of Policy ¶ 4(a)(i). 

 

The Panel finds that the <glassesshop.com> domain name is identical to Complainant's GLASSESSHOP mark as it incorporates the GLASSESSHOP mark in its entirety and merely adds the ".com" gTLD.  This change is insufficient to distinguish the Domain Name from the GLASSESSHOP mark under Policy ¶ 4(a)(i).  See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Forum May 27, 2003) ("The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name").

 

Rights or Legitimate Interests

Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. 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 Name 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 Name as Respondent is not commonly known by the Domain Name, nor is it authorized to use the GLASSESSHOP mark. 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, FA 1613011 (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, FA 1621573 (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 "bin qin / submit11." as registrant of record and the Respondent does not assert that it is commonly known by the Domain Name.

 

In the absence of a Response the Panel accepts Complainant's version of events, namely that Respondent has provided web administration services for the Complainant and as part of a scheme with a rogue former employee of Complainant, Respondent has hijacked the Domain Name and is seeking to blackmail Complainant into paying large sums of money in order for the Complainant to retain access to the Complainant's Website located at the Domain Name. Presently, as part of the scheme the Domain Name no longer resolves to the Complainant's Website and is inactive.  This conduct does not provide Respondent with rights or legitimate interests in the Domain Name. Specifically, it does not amount to a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

The Domain Name was registered in 2005 however the Panel accepts the evidence that the Domain Name was held by the Complainant from 2010 to at least 2017. On a date that is unclear to the Complainant (and the Panel) but after 2017, Respondent, who was providing web administration services to Complainant, transferred (without the Complainant's permission) the Domain Name from the Complainant to the Respondent.  Respondent did so knowing Complainant's use of the Domain Name for the Complainant's Website and its rights in the GLASSESSHOP 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's present use of the Domain Name is in bad faith. The Panel accepts the Complainant's uncontested evidence that Respondent is working with a rogue former employee of Complainant to seek the payment of nearly US$600,000 in exchange for transferring the Domain Name (which it has no right to hold) back to the Complainant, and in the meantime, in order to blackmail Complainant into making payment, is cutting off access to the Complainant's Website which is normally hosted from the Domain Name.  The Panel finds that Respondent's actions amount to use of the Domain Name in bad faith per Policy ¶ 4(b)(i) since in exchange for transfer of the Domain Name Respondent seeks valuable consideration, well in excess of Respondent's documented out of pocket costs relating to the Domain Name.  

 

 The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <glassesshop.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Nicholas J.T. Smith, Panelist

Dated: December 5, 2023