DECISION

 

Fox Factory, Inc. v. Wenhui Chen

Claim Number: FA2403002088919

 

PARTIES

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

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <bikefoxsuspension.com>, registered with NameCheap, Inc..

 

PANEL

The undersigns certify that they have acted independently and impartially and to the best of their knowledge, have no known conflict in serving as Panelists in this proceeding.

 

Lynda M. Braun and David S. Safran as Panelists and Carol M. Stoner as Chairperson.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on March 18, 2024; Forum received payment on March 18, 2024.

 

On March 18, 2024, NameCheap, Inc. confirmed by e-mail to Forum that the <bikefoxsuspension.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 March 19, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 8, 2024 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@bikefoxsuspension.com. Also on March 19, 2024, 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's Default.

 

On April 11, 2024, pursuant to Complainant's request to have the dispute decided by a three-member Panel, Forum appointed Lynda M. Braun and David S. Safran as Panelists and Carol M. Stoner as Chairperson.

 

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 <bikefoxsuspension.com> be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.       Complainant

Complainant operates its website at <ridefox.com> to market and to sell bicycle-related goods, primarily shock absorbers. In these regards, Complainant has submitted, with its original Complaint, a copy of its trademark registrations as Exhibits 1-14. Examples of these registered trademarks are the following:

 

-       Reg. No. 2,321,069 for the wordmark FOX, for vehicle parts, namely shock absorbers, with a date of first use of June, 1975 and a registration date of February 22, 2000.

 

-       Reg. No. 2,321,107 for the stylized mark of FOX, intertwined with a purported foxtail, for vehicle parts, namely shock absorbers, with a date of first use of December, 1978 and a registration date of February 22, 2000.

 

-       Reg. No. 4,025,621 for the stylized mark of FOX, intertwined with a purported foxtail, for retail store services marketing bicycle clothing and equipment, with a date of first use of September 30, 2005 and a registration date of September 13, 2011; and

 

-       Reg. No. 5,590,471 for the stylized mark of FOX, intertwined with a purported foxtail for vehicle parts, namely shock absorbers, with a date of first use of April 10, 2014 and a registration date of October 23, 2018.

 

The subject of Complainant's Complaint is Respondent's domain name of <bikefoxsuspension.com> which Complainant discovered about January 16, 2024. Complainant thereafter alleges that the disputed domain is confusingly similar to its own trademark because the mark includes the FOX trademark and the inclusion of "bike" before FOX and "suspension" following FOX. And that additional confusion ensues because the FOX trademarks primarily focus upon bicycle suspension components.

 

Complainant submitted Exhibit 15, which evidences screenshots of Respondent's webpages and product listings. Complainant alleges that these screenshots show clear trademark infringement. Further, these screenshots show a massive array of FOX branded bicycle components and related accessories.

 

Complainant alleges that the domain name <bikefoxsuspension> is a counterfeit website which is likely to confuse consumers as to Respondent's affiliation with Complainant.

 

Complainant alleges that Respondent has no rights or legitimate interests in <bikefoxsuspension.com> because the Respondent has not been known by this name.  

 

Complainant alleges that, because Respondent registered the disputed domain name on September 28, 2022, long after Complainant first registered its trademarks, that Respondent could not have believed that they could have acquired Complainant's marks.

 

Complainant asserts that Respondent has no rights in disputed domain name because the goods offered for sale at Respondent's website are the same goods for which Complainant's trademarks have long been registered.

 

Complainant lastly asserts that the Respondent registered and used <bikefoxsuspension.com> in bad faith. Complainant alleges that Respondent registered and used the <bikefoxsuspension.com> domain name to disrupt Complainant's business and/or to attract users to its web site for illegitimate gain by creating and exploiting confusion between the <bikefoxsuspension.com> domain name and content displayed there and Complainant's well-known brands covered by its registered trademarks.

                 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(1)       The domain name <bikefoxsuspension.com> registered by Respondent, is confusingly similar to Complainant's trademarks and servicemarks, in which Complainant has rights; and

(2)       Respondent has no rights or legitimate interests in respect of the domain name <bikefoxsuspension.com>; and

(3)       the domain name <bikefoxsuspension.com> has been registered and is being used 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 <bikefoxsuspension> 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 has decided 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 has drawn such inferences that it considers appropriate pursuant to paragraph 14(b) of the Rules. 

 

The Panel has further found that Complainant's unchallenged allegations are both reasonable and supported by substantial evidence. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3.

 

Identical and/or Confusingly Similar

Complainant claims rights in the <bikefoxsuspension> mark through its registration of trademarks and servicemarks with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,321,069, for vehicle parts, February 22, 2000, registered date). See also Com. Exh. 1-14. The Panel rules that Registration with the USPTO suffices to establish rights in a mark under Policy Par 4(a)(i).  See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (" Complainants ownership of a USPTO registration for DIRECTV demonstrates its right in such mark for the purposes of ¶ 4(a)(i)."). Accordingly, the Panel finds that the Complainant has rights in the <bikefoxsuspension> mark under Policy 4(a)(i).

 

Complainant avers that Respondent's <bikefoxsuspension> domain name is confusingly similar to Complainant's mark as Respondent merely adds terms descriptive of Complainant's business before and after Complainant's dominant trademark of FOX and adds the .com generic top-level domain ('gTLD"). Panel rules that the mere adding of market descriptive terms, along with a gTLD to an otherwise widely recognizable mark, does not sufficiently distinguish a disputed domain name from a complainant's mark under Policy ¶ 4(a)(i).  See Bittrex, Inc. v. Sergey Valerievich Kiree / Kireev, FA 1784651 (Forum June 5, 2018) (holding that the domain name consists of the BITTREX mark and adds "the letters 'btc' and the gTLD.com which do not distinguish the domain name from Complainant's mark.").

 

Panel rules that FOX is the dominant and distinguishable portion of Complainant's mark. "Bike" and "suspension" are not the dominant and distinguishable portion of Complainant's mark. That is, customers would tend to call for FOX irrespective of the generic bookend words of "bike" and "suspension."  Panel therefore rules, that the dominant portion of Respondent's mark, that is FOX, is confusingly similar to that of Complainants' mark. Therefore, the Panel finds that Respondent's domain name of <bikefoxsuspension> is confusingly similar to Complainant's mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

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 that 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 and 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 asserts that Respondent lacks rights or legitimate interest in the <bikefoxsuspension> domain name as Respondent is not known by the disputed domain name, nor has Respondent been given license or permission to use the disputed mark or to register domain names using Complainant's mark.

 

Panel has reviewed Complainant's provided screenshots of Respondent's resolving webpage which displays Complainant's marks, both as wordmarks and in stylized form, along with Complainant's products.  See Complainant's Exhibit 15.

 

Respondent's resolving website is but a mirror image of Complainant's goods, branded with Complainant's marks. As such, this website cannot be considered to be a bona fide offering of goods and services by the Respondent.  That is, Respondent's website serves merely to divert internet users to a misleading website that prominently incorporates Complainant's marks. Panel rules that this described use by Respondent of a disputed domain name to pass off as a Complainant is not a bona fide offering of goods or services or a legitimate non-commercial or fair use. See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4c(i) or for a legitimate non-commercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant's mark and various photographs related to the complainant's business). Therefore, the Panel finds that Respondent did not make a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).

 

The totality of Complainant's adduced evidence cited above, constitutes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).

 

Respondent, in its failure to respond to Complaint, does not dispute Complainant's contentions. Concomitantly, Panel concludes that Respondent has not shouldered its shifted burden to show that Respondent does indeed, have rights or legitimate interests so as to satisfy Policy ¶ 4(c)(i).

 

Registration and Use in Bad Faith

Complainant has propounded credible evidence that Respondent has registered and has used the <bikefoxsuspension.com> domain name in bad faith.

 

Respondent registered the disputed domain name on September 28, 2022, subsequent to Complainant's first use of the mark, as early as 1975, and its first registration of the mark with the USPTO on February 22, 2000. Because Respondent is purportedly in the same business (that is, primarily bicycle parts) it is highly probable that Respondent was aware of Complainant's marks, upon Respondent's registration of domain name, some 22 years later. 

 

The disputed domain name <bikefoxsuspension.com> includes the FOX mark (Reg. No. 2,321,069). And the title tag of the website uses the FOX mark (Reg. No. 2,321,069), and the stylized FOX Tail logo (Reg. Nos. 4,025,621, 5,590,471, 2,321,107, and 7,082,921) is prominently displayed at the header of the website. Panel notes that Respondent's website purports to offer for sale, dozens of FOX branded bicycle components and related accessories, using the Complainant's trademarks.

 

Complainant's Exhibit 15 is compelling evidence that Respondent registered and used the <bikefoxsuspension.com> in bad faith as Respondent is attempting to attract Internet users for commercial gain.

Exhibit 15 consists of screenshots of Respondent's webpage, which illustrates Complainant's products, using Complainant's trademarks. These screenshots of the disputed domain name's resolving website, show webpages offering merchandise identical to that offered by Complainant, branded by Complainant's registered trademarks. This is a bold attempt by Respondent to attract Internet users for commercial gain. Registration and use of a confusingly similar domain name with the purpose of deceiving internet users into believing an affiliation exists between Respondent and Complainant is compelling evidence of bad faith. See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005)("the Panel finds the Respondent is appropriating the Complainant's mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv.").

 

Based upon the above cited evidence and analysis, the Panel finds that Respondent has registered and has used the <bikefoxsuspension.com> domain name in bad faith under Policy ¶¶ 4(b)(ii) and (iv).

 

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

 

 

 

Carol M. Stoner, Chairperson

Dated: April 24, 2024