DECISION

 

Fox Factory, Inc. v. Guo Xing

Claim Number: FA2311002071285

 

PARTIES

Complainant is Fox Factory, Inc. ("Complainant"), represented by W. Bruce Patterson of Patterson + Sheridan, LLP, Texas, USA. Respondent is Guo Xing ("Respondent"), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <foxsuspensions.com>, registered with DNSPod, Inc.

 

PANEL

The undersigned certify 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.

 

Charles A. Kuechenmeister as Panelist, Paul DeCicco as Panelist, and Jeffrey J. Neuman as Panelist and Chair.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on November 15, 2023; Forum received payment on November 15, 2023.

 

On November 20, 2023, DNSPod, Inc. confirmed by e-mail to Forum that the <foxsuspensions.com> domain name is registered with DNSPod, Inc. and that Respondent is the current registrant of the name. DNSPod, Inc. has verified that Respondent is bound by the DNSPod, 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 22, 2023, Forum served the Complaint and all Annexes, including a Chinese and English Written Notice of the Complaint, setting a deadline of December 12, 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@foxsuspensions.com. Also on November 22, 2023, the Chinese and English 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 in Chinese and English.

 

On December 19, 2023, pursuant to Complainant's request to have the dispute decided by a three-member Panel, Forum appointed Charles A. Kuechenmeister and Paul DeCicco as Panelists, and Jeffrey J. Neuman as a Panelist and Chair.

 

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: LANGUAGE OF THE PROCEEDINGS

Paragraph 11(a) of the Rules states: "Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding."  In this proceeding, the Registrar has stated that the language of the Registration Agreement is Chinese.

 

Complainant has submitted that the proceedings should be conducted in English because the Disputed Domain Name "is plainly a composite of two English words" and "the content of the website connected with the domain name at issue is entirely in English. Section 4.5.1 of WIPO Overview 3.0 states that the following scenarios, among others, "may warrant proceeding in a language other than that of the registration agreement": (1) "the language/script of the domain name" and (2) "any content on the webpage under the disputed domain name." 

 

Accordingly, because, as Complainant has noted, the Disputed Domain Name consists solely of two words in English and the website associated with the Disputed Domain Name consists solely of content in English, the Panel exercises its authority pursuant to paragraph 11(a) of the Rules and determines that the language of this proceeding shall be English.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant states that it provides goods—including various vehicle components, particularly vehicle suspension systems—under each of the below-identified trademarks. Complainant operates its own websites at "ridefox.com" and other domain names to market and provide information regarding its goods.

 

Complainant provides these goods in connection with a number of trademarks, including the following (for which it provided relevant evidence):

 

·       U.S. Reg. No. 2,321,069 for FOX (registered February 22, 2000) for use in connection with "vehicle parts, namely shock absorbers, bicycle parts, namely, shock absorbers;

 

·       U.S Reg. No. 5,584,002 for FOX FACTORY (registered October 16, 2018) for use in connection with "suspension systems for vehicles, namely, suspension systems for bicycles and motor vehicles; vehicle parts, namely, shock absorbers; bicycle parts, namely, shock absorbers; parts and fittings for all the forgoing"; and "retail store services and computerized online retail store services featuring vehicle parts, bicycle parts, clothing and accessories, bicycle bags, sports bags, decals, and printed materials related to the foregoing".

 

·       U.S. Reg. No. 7, 082,921 for the design mark that consists of the words FOX FACTORY (registered June 20, 2023) for use in connection, inter alia "suspension components for vehicles, namely, adjustable and fixed length control arm, shock absorbers; suspension springs for vehicles, automobiles, bicycles, aircraft, drones, and their structural parts; suspension systems for vehicles, automobiles, …" 

 

·       U.S. Reg. No. 5,590,471 for the design mark that consists of the words FOX FACTORY (registered October 23, 2018) for use in connection, inter alia, "suspension systems for vehicles, namely, suspension systems for bicycles and motor vehicles; Vehicle parts, namely, shock absorbers; suspension, and suspension parts consisting of lift kits comprising of spacers, linkages, cross members, shock absorbers…" 

 

The foregoing registrations are referred to herein as the "FOX Trademarks"; and U.S. Reg. Nos. 5,590,471 and 7,082,921 are referred to specifically as the "FOX Design Marks."

 

Complainant states that on or about September 15, 2023, it discovered a live website at the domain name <foxsuspensions.com> ("Disputed Domain"). It alleges and provides evidence to support, that the Disputed Domain Name is being used in connection with a website that includes the FOX Design Marks in the header and as its "favicon" (the icon associated with the website that is displayed beside the browser's address bar or next to the site name in a bookmark list).  Complainant alleges that the website also contains "purported summaries of FOX-branded shocks series, with depictions of shocks bearing FOX logos, plus a copyright notice attributed to "FOX Factory", the Complainant's corporate name and registered trademark. Complainant describes the website as "nothing more than a counterfeit website, masquerading as a legitimate FOX-branded site under Complainant's exclusive trademarks."

 

Complainant asserts that the Disputed Domain Name is confusingly similar to the Complainant's Trademarks because the Disputed Domain Name "plainly includes" the FOX Trademarks and "[t]he addition of 'suspensions' following 'fox' only enhances such confusion, because 'suspensions' are "the exact class of goods associated with the Complainant's marks."  

 

Complainant asserts that Respondent has no rights or legitimate interests in the Disputed Domain Name because, inter alia, "Respondent has not been known by <foxsuspensions.com> 'FOX' or any similar terms". "[h]aving only very recently registered the domain and in view of Complainant's long established and recognized trademark rights Respondent cannot have had any good-faith belief that rights in <foxsuspensions.com> had been or could be acquired by Respondent"; and "the goods allegedly described at <foxsuspensions.com> are the very goods for which Complainant's trademarks have long been registered: vehicle suspension systems."

 

Complainant asserts that the Disputed Domain Name was registered and is being used in bad faith because, inter alia, Respondent is "disrupting Complainant's business, and/or attracting users to its web site for illegitimate gain by creating and exploiting confusion between the foxsuspensions.com domain name and content displayed there on the one hand, and Complainant's well-known brands covered by its registered trademarks on the other hand". The domain name <foxsuspensions.com> uses the FOX mark plus "suspensions" and the Fox Design Marks are prominently displayed at the header of Respondent's <foxsuspensions.com> website. Further, "the website purports to describe FOX branded vehicle suspension components, using Complainant's FOX-branded trademarks."

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant is the owner of the registrations for the FOX Trademarks and the FOX Design Marks.  The Disputed Domain Name was created on November 24, 2022, and is being used in connection with a website that includes the FOX Design Marks in the header and favicon, and contains multiple references to the FOX Trademarks in association with the advertisement and display of goods related to vehicular suspension equipment.

 

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

Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the FOX Trademarks, the earliest of which is U.S. Registration No. 2,321,069 (registered February 22, 2000).

 

As to whether the Disputed Domain Name is identical or confusingly similar to the FOX Trademarks, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., "foxsuspensions") because "[t]he applicable Top-Level Domain ('TLD') in a domain name (e.g., '.com', '.club', '.nyc') is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test".  WIPO Overview 3.0, section 1.11.1.

 

As set forth in section 1.7 of WIPO Overview 3.0: "in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing."  Here, the Disputed Domain Name incorporates the entirety of the FOX Trademarks.

 

In addition, as set forth in section 1.8 of WIPO Overview 3.0: "Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element."  Therefore, the additional word "suspensions" that appears in the Disputed Domain Name does nothing to prevent a finding of confusing similarity – and, in fact, may actually increase confusing similarity because "[c]onfusion is only heightened when the generic word added by a respondent is descriptive of a complainant's goods or services marketed in relation to the mark."  Media West-DMR et al. v. Phil Nagy, WIPO Case No D2005-1322.  Because Complainant's trademarks are registered for use in connection with vehicle suspensions, the panel finds that Complainant has proven the first element of the Policy.

 

Rights or Legitimate Interests

Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, "Respondent has not been known by <foxsuspensions.com>, 'FOX,' 'FOX FACTORY,' or any similar terms"; "[h]aving only very recently registered the domain and in view of Complainant's long established and recognized trademark rights, Respondent cannot have had any good-faith belief that rights in <foxsuspensions.com>had been or could be acquired by Respondent"; and "the goods allegedly offered for sale at 'foxsuspensions.com' are the very goods for which Complainant's trademarks have long been registered: vehicle suspension systems."

 

WIPO Overview 3.0, section 2.1, states: "[w]hile the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of 'proving a negative', requiring information that is often primarily within the knowledge or control of the respondent.  As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name.  If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element." However, if the Respondent's fails to come forward (as here) the record must nevertheless lack evidence persuasively showing that Respondent has rights in the disputed domain name under the Policy.

 

The Panel finds that Complainant has established its prima facie case.  Complainant's allegation that the Respondent is not commonly known by the disputed domain name is supported by the registrant information provided by the Registrar, which informed Forum that the Registrant is "Guo Xing".  In addition, the Panel takes note of the screenshots provided by the Complainant (as described in more detail below) indicate that the Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services nor is it making a legitimate noncommercial or fair use of the Disputed Domain Name.  Without any evidence from Respondent or of record to the contrary, the Panel is satisfied that the second element of the Policy favors Complainant.

 

Registration and Use in Bad Faith

Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) circumstances set forth in the Policy: "(i) circumstances indicating that the registrant has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant's documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant's website or location or of a product or service on the registrant's website or location."  Policy, paragraph 4(b).

 

Here, Complainant argues that Respondent has "registered and used the <foxsuspensions.com> domain solely to disrupt Complainant's business, and/or attracting users to its web site for illegitimate gain by creating and exploiting confusion between the Dispute Domain Name and content displayed there on the one hand, and Complainant's well-known brands covered by its registered trademarks on the other hand" under Policy paragraphs 4(b)(iii) and 4(b)(iv).

 

The Panel finds that Complainant has proven the third element of the Policy under paragraph 4(b)(iv) of the Policy. More specifically, the Disputed Domain Name is being used in connection with a website that includes the FOX Design Marks in the header and as its "favicon". In addition, according to the screenshots that were provide by Complainant, the website also contains "purported summaries of FOX-branded shocks series, with depictions of shocks bearing FOX logos, plus a copyright notice attributed to "FOX Factory", the Complainant's corporate name and registered trademark."  It is also clear that the Respondent is attempting to mislead consumers into believing that it is in fact the Complainant. The website not only uses the Complainant's FOX Design Marks in the header, but it also provides photographs of Complainant's vehicle products containing the Complainant's FOX Design Marks and descriptions using the Complainant's FOX Trademarks.

 

In addition to photos and summaries of various FOX vehicle components, the Respondent's website contains links to Amazon.com where end users can both check the pricing of, and purchase, the products. The footer of Respondent's website states that "This site is a participant in the Amazon Services LLC Associates Program, and affiliate advertising program designed to provide a means for sites to earn advertising fees by advertising and linking to Amazon.com."  According to Amazon, "participants in the Associates program can earn up to 10% in associate commissions from qualifying purchases and programs." See https://affiliate-program.amazon.com/.

 

Previous panels have found that offering goods for sale in direct competition with the goods traded by the Complainant, either directly or by monetizing traffic and redirection to the Amazon.com marketplace through the Amazon Affiliate Program, constitutes the registration and use of the Disputed Domain Name in bad faith.  See Philip Morris USA Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, D2109-1109 (WIPO July 1, 2019)(finding that the fact that the same Respondent as in this case "derives (or has the opportunity to derive) some commercial benefit from the click-through revenue generated by the website to which the Domain Name presently resolves" supported a bad faith finding); Starbucks Corporation v. Registration Private, Domains by Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, D2019-1991 (WIPO Oct. 8, 2019), Chewy, Inc. v. Shanavas Mundolakkal, ADM, D2020-3049 (WIPO Jan. 25, 2021) (finding that Respondent's registration and use of <dogschewy.com> because it either directly or indirectly sold competing products of the Complainant through Amazon Affiliate links).

 

Respondent has failed to rebut – or, for that matter, even respond to – Complainant's allegations. It is clear to the Panel that visitors to Respondent's website could easily mistake it for Complainant's own website (which the Complaint makes clear it is not).  See, e.g., Houghton Mifflin Co. v. The Weathermen, Inc., WIPO Case No. D2001-0211 ("a visitor to Respondent's site would be likely to believe that it was Complainant's official site" where Respondent's website offered Complainant's goods for sale and contained the complainant's mark "with its distinctive lettering style").

 

Accordingly, the Panel finds that Complainant has proven the third element of the Policy.

 

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 <foxsuspensions.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Jeffrey J. Neuman, Chair

Paul DeCicco, Panelist

Charles A. Kuechenmeister, Panelist

Dated: December 28, 2023