Spyderco, Inc. v. ChenKejun
Claim Number: FA2305002043682
Complainant is Spyderco, Inc. (“Complainant”), represented by Julie S. Shursky of Sheridan Ross P.C., Colorado, USA. Respondent is ChenKejun (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <outletspyderco.com>, registered with OwnRegistrar, Inc..
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 May 9, 2023; Forum received payment on May 9, 2023.
On May 10, 2023, OwnRegistrar, Inc. confirmed by e-mail to Forum that the <outletspyderco.com> domain name is registered with OwnRegistrar, Inc. and that Respondent is the current registrant of the name. OwnRegistrar, Inc. has verified that Respondent is bound by the OwnRegistrar, 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 May 11, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 31, 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@outletspyderco.com. Also on May 11, 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 response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On June 6, 2023, 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 name be transferred from Respondent to Complainant.
A. Complainant
The Complainant is a designer, manufacturer, and retailer of knives and knife accessories. Complainant has rights in the SPYDERCO trademark through numerous trademark registrations, including with the United States Patent and Trademark Office (“USPTO”) (e.g., USPTO Reg. No. 1,965,458, which was registered on April 2, 1996). Respondent’s <outletspyderco.com> domain name is confusingly similar to the SPYDERCO trademark as it includes the entire trademark and merely adds the generic or descriptive term “outlet” and the “.com” generic top-level domain (“gTLD”) to form.
Respondent lacks rights or legitimate interests in the <outletspyderco.com> domain name since Respondent is not licensed or authorized to use Complainant’s SPYDERCO trademark and is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent is passing off as Complainant to advertise and sell counterfeit or authentic goods without authorization.
Respondent registered and uses the <outletspyderco.com> domain name in bad faith by seeking to cause consumer confusion through a confusingly similar domain name and site that impersonates Complainant. Respondent also registered the disputed domain name with a privacy service and actual knowledge of Complainant’s rights in the SPYDERCO trademark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registrations:
No. 1,965,458 SPYDERCO (word), registered April 2, 1996 for goods in Intl Class 8; and
No. 2,169,685 SPYDERCO (word), registered June 30, 1998 for services in Intl Class 35.
The Complainant also generally refers to a number of national registrations for SPYDERCO in other countries, but does not provide any evidence in the form of copies of certificates of registrations.
Further, the Complainant has provided evidence of clean figurative trademarks (with no letters/words). These will be further comment on below regarding bad faith use.
The disputed domain name <outletspyderco.com> was registered on February 16, 2023.
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 claims rights in the SPYDERCO trademark through multiple trademark registrations, including with the USPTO (e.g., USPTO Reg. No. 1,965,458, which was registered on April 2, 1996). Registration of a trademark with the USPTO is a valid showing of rights in a trademark under Policy ¶ 4(a)(i). See Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant’s ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Since Complainant provides evidence of registration of the SPYDERCO trademark with the USPTO, the Panel find that Complainant has demonstrated rights in the SPYDERCO trademark per Policy ¶ 4(a)(i).
Complainant argues the <outletspyderco.com> domain name is confusingly similar to its SPYDERCO trademark since it uses the entire trademark, simply adding the term “outlet” and the gTLD “.com.” When a disputed domain name wholly incorporates a complainant’s trademark, panels have found additional terms insufficient to defeat a finding of confusing similarity. See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”). Similarly, gTLDs are irrelevant for purposes of Policy ¶ 4(a)(i) analysis. See Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”). Given that Respondent only adds the term “outlet”, which is more of an indication that the goods related to the trademark is for sale, and gTLD to Complainant’s SPYDERCO trademark, the Panel find <outletspyderco.com> confusingly similar to the SPYDERCO 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 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 & 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 argues that Respondent has no rights or legitimate interests in the <outletspyderco.com> domain name because Respondent is not commonly known by the disputed domain name and Complainant has never licensed rights to or authorized Respondent to use the SPYDERCO trademark. In the absence of a response, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply”). In addition, where there is no evidence to indicate a complainant has authorized the use of a trademark, it may act as support that a respondent is not commonly known by the disputed domain name and thus lacks any rights or legitimate interest in the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA 1408001574905 (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 <outletspyderco.com> lists the registrant as “ChenKejun.” Further, there is no evidence to suggest that Respondent was authorized, licensed rights to, or otherwise permitted to use the SPYDERCO mark. Therefore, the Panel find that Respondent is not commonly known by, and lacks rights or legitimate interests in, the <outletspyderco.com> domain name per Policy ¶ 4(c)(ii).
Complainant also argues that Respondent is using the <outletspyderco.com> domain name to confuse consumers and direct them to a site that impersonates the Complainant. Previous Panels have found use of a domain name to confuse and divert customers away from a complainant does not constitute either a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] 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).”). In addition, Panels have declined to find a bona fide offering of goods or services or a legitimate noncommercial or fair use of a domain name when a respondent diverts traffic to a site that imitates a complainant. See Dell Inc. v. Devesh Tyagi, FA 1785301 (Forum June 2, 2018) (“Respondent replicates Complainant’s website and displays Complainant’s products. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (iii).”). In this case, Complainant provides evidence of that <outletspyderco.com> resolves to a page prominently featuring the SPYDERCO trademark (and logo) in the header and elsewhere throughout the site, as well as Complainant’s identical product images, descriptions, and color scheme. Complainant notes the site favicons are also identical. Based on the evidence provided by the Complainant, the Panel agrees that Respondent appears to be passing off as the Complainant and misleading customers by mimicking Complainant’s website. The Panel therefore find that Respondent lacks a bona fide offering of goods or services and legitimate noncommercial or fair use of the <outletspyderco.com> domain name under Policy ¶¶ 4(c)(i) and (iii).
Lastly, Complainant claims Respondent is selling either counterfeit or authentic products without authorization with the <outletspyderco.com> domain name. A respondent’s use of a disputed domain name to sell a complainant’s genuine goods without permission or to sell counterfeit goods does not satisfy Policy ¶¶ 4(c)(i) and (iii). See 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). Respondent displays what purport to be Complainant’s SPYDERCO-branded knives for sale for a discounted price. The Panel determines that Respondent is selling counterfeit or at least unauthorized authentic products, and find that Respondent fails to make a bona fide offering of goods or services and legitimate noncommercial or fair use of the <outletspyderco.com> domain name under Policy ¶¶ 4(c)(i) and (iii).
Complainant argues that Respondent registered and uses the <outletspyderco.com> domain name in bad faith by registering and using a confusingly similar domain name to cause consumer confusion as to the source or affiliation of the domain name and resolving site. When a disputed domain name is found confusingly similar to a trademark, panels have presumed a respondent intends to deceive consumers, which may disrupt a complainant’s business. See EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Forum July 7, 2000) (finding the minor degree of variation from the complainant's marks suggests that the respondent, the complainant’s competitor, registered the names primarily for the purpose of disrupting the complainant's business). Moreover, panels have presumed a respondent seeks to attract confused consumers in bad faith for commercial gain, taking advantage of the confusing similarity between the domain name and the trademark. See Carey Int’l, Inc. v. Kogan, FA 486191 (Forum July 29, 2005) (“[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith under Policy ¶ 4(b)(iv).”). The Panel agrees with Complainant’s conclusion, and find bad faith under Policy ¶ 4(b)(iii) as well as Policy ¶ 4(b)(iv).
Complainant further argues Respondent is impersonating or falsely affiliating themselves with the Complainant. Previous panels have determined a respondent’s use of a domain name to attract Internet traffic to a site that passes itself off as a complainant evinces bad faith disruption of a complainant’s business pursuant to Policy ¶ 4(b)(iii). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)). Passing off has also been held as evidence of bad faith attraction for commercial gain pursuant to Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”). As noted, Respondent’s webpage displays the SPYDERCO registered trademark as well as registered logo and product images, purporting to be a retail shop for Complainant’s products. The Panel find it obvious the Respondent is passing off as Complainant, and thereby find further support for Respondent’s bad faith under Policy ¶ 4(b)(iii) and/or Policy ¶ 4(b)(iv).
Complainant also suggests that Respondent’s registration of the <outletspyderco.com> domain name with a privacy service shows bad faith. Panels have agreed that a respondent’s use of a privacy service in an attempt to conceal their identity may support finding bad faith. See Robert Half International Inc. v. robert arran, FA 1764367 (Forum Feb. 5. 2018) (“Respondent's use of a privacy registration service in an attempt to conceal his identity, though not itself dispositive, is a further indication of bad faith.”). The publicly available WHOIS information shows that Respondent registered the domain name with a privacy shield. The Panel therefore notes Respondent’s use of a privacy service as additional evidence of bad faith pursuant to Policy ¶ 4(a)(iii).
Finally, Complainant claims that Respondent had actual knowledge of Complainant’s rights in the SPYDERCO trademark when registering <outletspyderco.com>. Actual knowledge is sufficient to establish a respondent’s bad faith. See WordPress Foundation v. mich delorme / mich d dots tlds, FA 1410001584295 (Forum Nov. 25, 2014) (“Because Respondent here relies on the WORDPRESS trademark in the disputed domain name and also makes use of Complainant’s services at the resolving page, the Panel finds that Respondent had actual knowledge of Complainant’s mark, and that such knowledge evidences Policy ¶ 4(a)(iii) bad faith.”). To support this assertion, Complainant points to Respondent’s impersonation of Complainant on the resolving site - making use of the trademark (registered word), logo (registered figurative trademark), color scheme, and product images - and choosing the unique SPYDERCO trademark. The Panel therefore find that Respondent had actual knowledge, and 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 <outletspyderco.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: June 19, 2023
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page