Athletic Propulsion Labs LLC v. Client Care / Web Commerce Communications Limited
Claim Number: FA2209002013603
Complainant is Athletic Propulsion Labs LLC (“Complainant”), represented by Matthew D. Witsman of Foley & Lardner LLP, Illinois. Respondent is Client Care / Web Commerce Communications Limited (“Respondent”), MY.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <aplshoesnz.com>, <aplcolombia.com>, <apl-sale.com>, <aplshoes-uk.com>, <aplshoes-southafrica.com>, <apl-nederland.com>, <apl-norge.com>, <aplespana.com>, <athleticpropulsionlabsshoes.com>, <apl-philippines.com>, and <aplshoes-nz.com>, registered with Alibaba.Com Singapore E-Commerce Private Limited.
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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to Forum electronically on September 27, 2022; Forum received payment on September 27, 2022.
On September 28, 2022, Alibaba.Com Singapore E-Commerce Private Limited confirmed by e-mail to Forum that the <aplshoesnz.com>, <aplcolombia.com>, <apl-sale.com>, <aplshoes-uk.com>, <aplshoes-southafrica.com>, <apl-nederland.com>, <apl-norge.com>, <aplespana.com>, <athleticpropulsionlabsshoes.com>, <apl-philippines.com>, and <aplshoes-nz.com> domain names are registered with Alibaba.Com Singapore E-Commerce Private Limited and that Respondent is the current registrant of the names. Alibaba.Com Singapore E-Commerce Private Limited has verified that Respondent is bound by the Alibaba.Com Singapore E-Commerce Private Limited 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 September 29, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 19, 2022 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@aplshoesnz.com, postmaster@aplcolombia.com, postmaster@apl-sale.com, postmaster@aplshoes-uk.com, postmaster@aplshoes-southafrica.com, postmaster@apl-nederland.com, postmaster@apl-norge.com, postmaster@aplespana.com, postmaster@athleticpropulsionlabsshoes.com, postmaster@apl-philippines.com, postmaster@aplshoes-nz.com. Also on September 29, 2022, 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 October 28, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Petter Rindforth 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 bases the conclusion on the facts that the disputed domain names are used in a similar manner, and are all formed by combining Complainant’s trademarks with geographic terms, the term “SHOES,” and in one circumstance, the descriptive word “SALE.”
The Panel notes that the WHOIS information for all the disputed domain names lists the registrant as “Client Care / Web Commerce Communications Limited”, which is thereby the officially registered holder of these domain names. Already based on this fact, it is clear that the Respondent is one and the same.
The similarity of the disputed domain names, created with the same reference to the Complainant’s trademarks and/or company name with the addition of related generic words, further clearly indicate that the identified registrant and holder is the same entity.
The Panel therefore finds that the domain names are commonly owned/controlled by a single Respondent who is using multiple aliases or at least multiple e-mail addresses for contact.
A. Complainant
The Complainant offers athletic footwear products. Complainant asserts rights in the APL and ATHLETIC PROPULSION LAB trademarks (“the APL marks”) based upon registration with multiple international trademark authorities, including the United States Patent and Trademark Office (“USPTO”) (e.g., reg. no. 3,884,381, registered November 30, 2010). Respondent’s <aplshoesnz.com>, <aplcolombia.com>, <apl-sale.com>, <aplshoes-uk.com>, <aplshoes-southafrica.com>, <apl-nederland.com>, <apl-norge.com>, <aplespana.com>, <athleticpropulsionlabsshoes.com>, <apl-philippines.com>, and <aplshoes-nz.com> domain names are confusingly similar to Complainant’s trademark because they each contain one of the APL trademarks in its entirety, merely adding a secondary geographical term, the word “SHOES,” and/or the term “SALE,” together with the generic top-level domain (“gTLD”) “.com” to form the disputed domain names.
Respondent lacks rights or legitimate interests in the <aplshoesnz.com>, <aplcolombia.com>, <apl-sale.com>, <aplshoes-uk.com>, <aplshoes-southafrica.com>, <apl-nederland.com>, <apl-norge.com>, <aplespana.com>, <athleticpropulsionlabsshoes.com>, <apl-philippines.com>, and <aplshoes-nz.com> domain names. Respondent is not licensed or authorized to use Complainant’s APL trademarks and is not commonly known by the disputed domain names. Respondent does not use the disputed domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain names to engage in a phishing scheme.
Respondent registered and uses the <aplshoesnz.com>, <aplcolombia.com>, <apl-sale.com>, <aplshoes-uk.com>, <aplshoes-southafrica.com>, <apl-nederland.com>, <apl-norge.com>, <aplespana.com>, <athleticpropulsionlabsshoes.com>, <apl-philippines.com>, and <aplshoes-nz.com> domain names in bad faith. Respondent uses the disputed domain names in furtherance of a phishing scheme. Respondent registered the disputed domain names with actual or constructive knowledge of Complainant’s rights in the APL trademarks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the APL trademark, registered in a number of countries/areas around the world, including:
Canadian National trademark No. TMA859033 APL, registered on September 3, 2013 for goods and services in Intl Classes 25 and 35;
China (People’s Republic of) National trademark No. 7690084 APL, registered on January 1, 2011 for services in Intl Class 35;
European Union Trade Mark No. 008510869 APL, registered on August 26, 2009 for goods and services in Intl classes 25 and 35;
Hong Kong trademark registration No 303632922 APL; registered on December 17, 2015 for goods in Intl Class 25;
Indonesian National trademark No. IDM000403924 APL, registered November 3, 2009 for goods in Intl class 25;
Indonesian National trademark No. IDM000403531 APL, registered November 3, 2009 for services in Intl class 35;
Japanese National trademark No. 5325825 APL, registered May 28, 2010 for goods and services in Intl Classes 25 and 35;
Malaysian National trademark No. 2016011286 APL, registered on December 5, 2017 for goods in Intl Class 25;
Mexican National trademark No. 1147218 APL, registered April 24, 2012 for goods in Intl Class 25;
Mexican National trademark No. 1281333 APL, registered March 8, 2010 for services in Intl Class 35;
New Zealand National trademark No. 1064672 APL, registered October 17, 2017 for goods in Intl Class 25;
Norwegian National trademark No. 288489 APL, registered August 22, 2016 for goods in Intl Class 25;
Singapore National trademark No. 40201522844T APL, registered December 24, 2015 for goods in Intl Class 25;
Republic of Korea National trademark No. 45-33152 APL, registered December 7, 2010 for goods and services in Intl Classes 25 and 35;
Taiwan National trademark No. 01409675 APL, registered May 1, 2010 for goods and services in Intl Classes 25 and 35;
United Arab Emirates National trademark No. 271622 APL, registered June 28, 2018 for goods in Intl Class 25;
United Kingdom National trademark No. UK00908510869 APL, registered February 22, 2010 for goods in Intl Classes 25 and 35;
United States National trademark No. 3,884,381 APL, registered November 30, 2010 for goods in Intl Class 25;
United States National trademark No. 5,200,119 APL, registered May 9, 2017 for goods in Intl Class 25;
United States National trademark No. 4,317,372 APL, registered April 9, 2013 for goods and services in Intl Classes 25 and 35;
United States National trademark No. 4,313,286 APL, registered April 2, 2013 for goods in Intl Class 18; and
Vietnamese National trademark No. 178405 APL, registered January 13, 2012 for goods and services in Intl Classes 25 and 35.
The disputed domain names were registered on the following dates:
- <apl-philippines.com> - October 9, 2021
- <aplcolombia.com> - October 20, 2021
- <aplespana.com> - October 20, 2021
- <aplshoesnz.com> - January 19, 2022
- <athleticpropulsionlabsshoes.com> - February 25, 2022
- <aplshoes-southafrica.com> - June 28, 2022
- <apl-nederland.com> - June 28, 2022
- <apl-norge.com> - June 28, 2022
- <apl-sale.com> - June 30, 2022
- <aplshoes-uk.com> - June 30, 2022
- <aplshoes-nz.com> - August 19, 2022
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”).
The Complainant asserts rights in the APL trademark based upon registration with multiple international trademark authorities, including the USPTO (e.g., reg. no. 3,884,381, registered November 30, 2010). Registration of a trademark with multiple international trademark authorities is considered a valid showing of rights under Policy ¶ 4(a)(i). See Emerson Electric Co. v. Cai Jian Lin / Shen Zhen Shi colorsun Zi Dong Hua You Xian Gong Si, FA 1798802 (Forum Aug. 31, 2018) (“Registering a mark with multiple trademark agencies around the world is sufficient to establish rights in a mark for the purposes of Policy ¶ 4(a)(i).”). Since Complainant has provided evidence of registration of the APL trademarks with the USPTO and other authorities, the Panel find that Complainant has rights in the trademark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <aplshoesnz.com>, <aplcolombia.com>, <apl-sale.com>, <aplshoes-uk.com>, <aplshoes-southafrica.com>, <apl-nederland.com>, <apl-norge.com>, <aplespana.com>, <athleticpropulsionlabsshoes.com>, <apl-philippines.com>, and <aplshoes-nz.com> domain names are confusingly similar to Complainant’s trademark because they each contain one of the APL trademarks in its entirety, merely adding a secondary geographical term, the word “SHOES,” and/or the term “SALE,” together with the gTLD “.com” to form the disputed domain names. The addition of generic or descriptive terms and gTLDs to a trademark does not distinguish the disputed domain name from the trademark incorporated therein per Policy ¶ 4(a)(i). See Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)).
Likewise, the addition of geographical terms to a trademark does not distinguish the disputed domain name from the trademark incorporated therein per Policy ¶ 4(a)(i). See Franklin Covey Co. v. franklincoveykorea, FA 1774660 (Forum Apr. 11, 2018) (finding that the <franklincoveykorea.com> domain name is confusingly similar to the FRANKLIN COVEY mark, as “[t]he addition of a geographic term and a gTLD do not negate confusing similarity between a domain name and a mark per Policy ¶ 4(a)(i).”). Such addition rather indicates the origin of the trademark and/or where the related goods and services are sold.
Therefore, the Panel find that all the disputed domain names are confusingly similar to the APL trademark under Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See 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.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Complainant argues that Respondent lacks rights or legitimate interests in the <aplshoesnz.com>, <aplcolombia.com>, <apl-sale.com>, <aplshoes-uk.com>, <aplshoes-southafrica.com>, <apl-nederland.com>, <apl-norge.com>, <aplespana.com>, <athleticpropulsionlabsshoes.com>, <apl-philippines.com>, and <aplshoes-nz.com> domain names because Respondent is not licensed or authorized to use Complainant’s APL trademark and is not commonly known by the disputed domain names. 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 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)). Additionally, lack of authorization to use a complainant’s trademark may indicate that the respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The WHOIS information for the disputed domain name lists the registrant as “Client Care / Web Commerce Communications Limited.” Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii).
The Complainant contends that Respondent does not use the disputed domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain names to engage in a phishing scheme. Use of a disputed domain name to engage in phishing is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See United States Postal Service v. Kehinde Okunola / Genuine ICT Centre, FA 1785420 (Forum June 6, 2018) (“Respondent uses the <uspscouriers.com> domain name both to sell services competing with the business of Complainant and to phish for personal identification information from Internet users. Neither of these uses of the domain name constitutes 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) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy.”). The Panel notes that this statement is made by the Complainant “upon information and belief”, without providing any specific evidence. However, what is clear in this case, is that the Respondent does not use the disputed domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use.
Complainant argues that Respondent registered and uses the <aplshoesnz.com>, <aplcolombia.com>, <apl-sale.com>, <aplshoes-uk.com>, <aplshoes-southafrica.com>, <apl-nederland.com>, <apl-norge.com>, <aplespana.com>, <athleticpropulsionlabsshoes.com>, <apl-philippines.com>, and <aplshoes-nz.com> domain names in bad faith because Respondent uses the disputed domain names in furtherance of a phishing scheme. Use of a disputed domain name to engage in phishing demonstrates bad faith under Policy ¶ 4(a)(iii). See Morgan Stanley v. Bruce Pu, FA 1764120 (Forum Feb. 2, 2018) (“[T]he screenshot of the resolving webpage allows users to input their name and email address, which Complainant claims Respondent uses that to fraudulently phish for information. Thus, the Panel agrees that Respondent phishes for information and finds that Respondent does so in bad faith under Policy ¶ 4(a)(iii).”). Here, as noted above, the Complainant has provided no evidence to support this assertion. However, non-use of a domain name does not prevent a finding of bad faith under the doctrine of passive holding. Factors that have been considered in previous cases to be considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s trademark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details, and (iv) the implausibility of any good faith use to which the domain name may be put.
In the present case, it is noted that (i) the Respondent has registered no less than eleven domain names built on the Complainant’s trademark, (ii) the Complainant has a distinctive and well-known trademark, registered around the world, (iii) the Respondent has not replied to the Complaint, and (iv) the Respondent is hiding its real identity.
Therefore, the Panel agrees with the Complainant’s conclusion, and find that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(a)(iii).
Complainant contends that Respondent registered the disputed domain names with actual or constructive knowledge of Complainant’s rights in the APL trademark. The Panel disregards arguments of bad faith based on constructive notice as UDRP case precedent declines to find bad faith as a result of constructive knowledge. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). The Panel instead chooses to determine whether Respondent had actual knowledge of Complainant's rights in the trademark prior to registering the disputed domain names, as actual knowledge can adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”) see also iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum January 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). To support this assertion, Complainant points to its trademark registrations as well as its commercial presence and reputation. Based again on the number of registered domain names, and their descriptive additions - together with the Complainant’s trademark, clearly indicate that the Respondent did have actual knowledge of Complainant’s right in its trademark, and the Panel therefore find bad faith under 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 <aplshoesnz.com>, <aplcolombia.com>, <apl-sale.com>, <aplshoes-uk.com>, <aplshoes-southafrica.com>, <apl-nederland.com>, <apl-norge.com>, <aplespana.com>, <athleticpropulsionlabsshoes.com>, <apl-philippines.com>, and <aplshoes-nz.com> domain names be TRANSFERRED from Respondent to Complaint.
Petter Rindforth, Panelist
Dated: November 11, 2022
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