Spectrum Brands, Inc. v. Wang Dongkun
Claim Number: FA2302002032004
Complainant is Spectrum Brands, Inc. (“Complainant”), represented by Emma K. Morehart of Vorys, Sater, Seymour and Pease LLP, Ohio, USA. Respondent is Wang Dongkun (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pfisteoutlet.com>, registered with Gname.com Pte. Ltd..
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to Forum electronically on February 15, 2023; Forum received payment on February 15, 2023.
On February 17, 2023, Gname.com Pte. Ltd. confirmed by e-mail to Forum that the <pfisteoutlet.com> domain name is registered with Gname.com Pte. Ltd. and that Respondent is the current registrant of the name. Gname.com Pte. Ltd. has verified that Respondent is bound by the Gname.com Pte. Ltd. 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 February 22, 2023, Forum served the Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of March 14, 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@pfisteoutlet.com. Also on February 22, 2023, the Chinese and English language 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.
On March 22, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Complainant markets and sells residential and commercial plumbing products.
Complainant has rights in the PFISTER mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <pfisteoutlet.com> domain name is identical or confusingly similar to Complainant’s PFISTER mark as it merely drops the letter “r”, adds the generic word “outlet” and the “.com” generic top-level-domain name ("gTLD").
Respondent lacks rights or legitimate interests in the <pfisteoutlet.com> domain name. Respondent is not commonly known by the at-issue domain name, nor has Respondent been authorized by Complainant to use the PFISTER mark. Respondent has not used the at-issue domain name in connection with a bona fide offering of goods or services as Respondent passes off as affiliated with, sponsored or approved by Complainant when it is not. Furthermore, Respondent passes off as Complainant and financially benefits from misleading users.
Respondent registered and uses the <pfisteoutlet.com> domain name in bad faith. Respondent’s <pfisteoutlet.com> website disrupts Complainant’s business as Respondent registered the at-issue domain name to pass itself off as Respondent and sell counterfeit or unauthorized products for Respondent’s financial gain. Additionally, Respondent is using the disputed domain name and Complainant’s marks to financially profit from Complainant’s reputation and goodwill.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the PFISTER mark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the <pfisteoutlet.com> trademark.
Respondent uses the <pfisteoutlet.com> domain name to impersonate Complainant and to attract internet users to its own competing website where it purports to sells counterfeit or unauthorized PFISTER related products.
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”).
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that Respondent is conversant and proficient in the English language. After considering the circumstance of the present case including Respondent’s failure to object to going forward in English, the Panel finds that the proceeding should be in English.
The at-issue domain name is confusingly similar to a mark in which Complainant has rights.
Complainant demonstrates rights in the PFISTER mark per Policy ¶ 4(a)(i) through its registration of such mark with the USPTO. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
Respondent’s <pfisteoutlet.com> domain name is confusingly similar to Complainant’s PFISTER mark. The domain name contains Complainant’s entire trademark less its letter “r”, followed by the suggestive term “outlet,” and with all followed by the “.com” top-level domain name. The differences between the at-issue <pfisteoutlet.com> domain name and Complainant’s PFISTER trademark are insufficient to distinguish the domain name from Complainant’s mark for the purposes of the Policy. Therefore, the Panel finds pursuant to Policy ¶ 4(a)(i) that Respondent’s <pfisteoutlet.com> domain name is confusingly similar to PFISTER. See Morgan Stanley v. Domain Admin / Whois Privacy Corp., FA 1783121 (Forum June 1, 2018) (“Respondent’s <morganstanle.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark as it wholly incorporates the mark, but for the omission of the letter ‘y’ and spacing within the mark, and appends the ‘.com’ gTLD.”); see also 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.”)
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and as discussed below there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name. See Charter Communications Holding Company, LLC v. Taha Shaikh / Tskdesigners, FA 1814475 (Forum Nov. 25, 2018) (finding no rights or legitimate interests in <spectrumfeature.com> because complainant never gave respondent permission to use the mark in any manner and “Panels may use these assertions as evidence that no rights or legitimate interests exist in a disputed domain name.”).
The WHOIS information for <pfisteoutlet.com> indicates that “Wang Dongkun” is the domain name’s registrant and there is nothing in the record before the Panel that tends to prove that Respondent is known by the <pfisteoutlet.com> domain name. As such, the Panel finds that Respondent is not commonly known by the at-issue domain name under Policy ¶ 4(c)(iii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent uses the confusingly similar <pfisteoutlet.com> domain name to address a website that mimics Complainant’s own website and there offers unauthorized or counterfeit versions of Complainant’s PFISTER products. Respondent’s use of <pfisteoutlet.com> to attempt to pass itself off as Complainant in this manner is not indicative of a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor of a non-commercial or fair use under Policy ¶4(c)(iii). 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 ¶ 4(c)(i) or for a legitimate noncommercial 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); see also, Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015) (finding no bona fide offering of goods or legitimate noncommercial or fair use existed where Respondent used the resolving website to sell products branded with Complainant’s MERRELL mark, and were either counterfeit products or legitimate products of Complainant being resold without authorization).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶ 4(a)(ii) and demonstrates Respondent’s lack of rights and lack of legitimate interests in respect of the at-issue domain name.
Respondent’s <pfisteoutlet.com> domain name was registered and used in bad faith. As discussed below without being exhaustive, bad faith circumstances are present which lead the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
Respondent’s at-issue domain name addresses Respondent’s <pfisteoutlet.com> website. The website mimics Complainant’s genuine website and is used to pass off as Complainant and deceive internet users into falsely believing that the domain name and its referenced website are sponsored by Complainant. Notably, Respondent’s <pfisteoutlet.com> website promotes and offers unauthorized or counterfeit PFISTER products for sale. Respondent’s use of the confusingly similar domain name is disruptive to Complainant’s business and designed to attract internet users so that Respondent may capitalize on the confusion Respondent created between its <pfisteoutlet.com> domain name and Complainant’s PFISTER trademark. Respondent’s use of the <pfisteoutlet.com> domain name demonstrates Respondent’s bad faith registration and use of the <pfisteoutlet.com> domain name under Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the at-issue domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)); See also, G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract internet users to its commercial website to sell the complainant’s products ); see also, See Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pfisteoutlet.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: March 22, 2023
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