Wolverine Outdoors, Inc. v. Dicksons Zedd
Claim Number: FA1905001842688
Complainant is Wolverine Outdoors, Inc. (“Complainant”), represented by Amber M. Underhill of Warner Norcross + Judd LLP, Michigan, USA. Respondent is Dicksons Zedd (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wvvwinc.com>, registered with Pdr Ltd. D/B/A Publicdomainregistry.Com.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 10, 2019; the Forum received payment on May 10, 2019.
On May 14, 2019, Pdr Ltd. D/B/A Publicdomainregistry.Com confirmed by e-mail to the Forum that the <wvvwinc.com> domain name is registered with Pdr Ltd. D/B/A Publicdomainregistry.Com and that Respondent is the current registrant of the name. Pdr Ltd. D/B/A Publicdomainregistry.Com has verified that Respondent is bound by the Pdr Ltd. D/B/A Publicdomainregistry.Com 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 16, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 5, 2019 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@wvvwinc.com. Also on May 16, 2019, 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, the Forum transmitted to the parties a Notification of Respondent Default.
On June 7, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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, the 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 made the following contentions.
Complainant is a clothing distributer. Complainant has rights in its WWW mark through registering the mark with the Canadian Intellectual Property Office (“CIPO”) (e.g. Reg. No. TMA461253, registered Aug. 16, 1996). See Amend. Compl. Annex. Renewal Certificate. Respondent’s <wvvwinc.com> domain name is confusingly similar to Complainant’s mark, as Respondent merely replaced a letter “w” with the letters “vv”, adds the generic term “inc” and a “.com” generic top-level domain.
Respondents has no rights or legitimate interests in the <wvvwinc.com> domain name as Respondent is not commonly known by the disputed domain name, nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark. Furthermore, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as the disputed domain name does not resolve to a webpage, and the Respondent is merely typosquatting on Complainant’s mark.
Finally, Respondent’s <wvvwinc.com> domain name was registered or used in bad faith. Respondent is taking advantage of Complainant’s famous mark to profit from being affiliated with Complainant. Respondent is typosquatting on Complainant’s mark. Additionally, Respondent’s <wvvwinc.com> domain name is confusingly similar to Complainant’s corporate email address, raising the possibility that Respondent may attempt to defraud Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a wholly owned subsidiary of Wolverine World Wide, Inc. the prominent clothing manufacturer and distributor.
2. Complainant has established it trademark rights in its WWW mark through registering the mark with the Canadian Intellectual Property Office (“CIPO”) (e.g. Reg. No. TMA461253, registered Aug. 16, 1996).
3. Respondent registered the <wvvwinc.com> domain name on October 26, 2018.
4. The disputed domain name does not resolve to a webpage, and the Respondent is merely typosquatting on Complainant’s mark raising the possibility that Respondent may attempt to defraud Complainant.
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”).
Identical and/or Confusingly Similar
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in its WWW mark through registering the mark with CIPO (e.g. Reg. No. TMA461253, registered Aug. 16, 1996). See Amend. Compl. Annex. Renewal Certificate. Registration of a mark with the CIPO is sufficient to establish rights in a mark, under Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. Reggie Rags, FA 1778853 (Forum Apr. 19, 2018) (“Registration of a mark with the CIPO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds that the Complainant has established its trademark rights in its WWW mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s WWW mark. Complainant argues that Respondent’s <wvvwinc.com> domain name is confusingly similar to Complainant’s mark, as Respondent merely replaced a letter “w” with the letters “vv”, adds the generic term “inc” and a “.com” generic top-level domain. Misspellings of a mark that visually deceive internet users are not sufficient to distinguish a disputed domain name from the complainant’s mark, under Policy ¶ 4(a)(i). See Acme Lift Company, L.L.C. v. VistaPrint Technologies Ltd, FA 1607039 (Forum Apr. 11, 2015) (stating, “Where a respondent has created a domain name in an effort to visually deceive Internet users via a simple misspelling (and when such misspellings are visually similar to the mark), a finding of confusing similarity under Policy ¶ 4(a)(i) is appropriate.”). Additionally, adding generic terms to a mark is not sufficient to distinguish a disputed domain name from the complainant’s mark, under Policy ¶ 4(a)(i). Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Svensson Viljae, FA 1784650 (Forum June 1, 2018) (finding confusing similarity where “[t]he disputed domain name <skechers-outlet.com> adds a hyphen and the generic term ‘outlet’ to Complainant's registered SKECHERS mark, and appends the ‘.com’ top-level domain.”). Therefore, the Panel finds that Respondent’s <wvvwinc.com> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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 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 & 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s WWW trademark and to use it in its domain name, and has replaced a letter “w” of the trademark with the letters “vv” and added the generic term “inc”;
(b) Respondent registered the <wvvwinc.com> domain name on October 26, 2018;
(c) The disputed domain name does not resolve to a webpage, and the Respondent is merely typosquatting on Complainant’s mark raising the possibility that Respondent may attempt to defraud Complainant;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interest in the <wvvwinc.com> domain name, as Respondent is not commonly known by the disputed domain name nor licensed or authorized by the Complainant to use Complainant’s mark. Relevant information, such as WHOIS information, can be used as evidence to show respondent is or is not commonly known by the disputed domain name, under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent lacks rights or legitimate interest in a disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). Here, the WHOIS information shows “Dickson Zedd” as the registrant of the disputed domain name and there is no evidence in the record to suggest Respondent was authorized to use the mark. Therefore, the Panel finds that Respondent has no rights or legitimate interests in the <wvvwinc.com> domain name, as Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent has no rights or legitimate interests in the <wvvwinc.com> domain name, as Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. Rather, Respondent is not using the domain name at all, as the webpage the domain name resolves to is empty. Non-use of a disputed domain name can be evidence that respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, under Policy ¶¶ 4(c)(i) and (iii). See Activision Blizzard, Inc. / Activision Publishing, Inc. / Blizzard Entertainment, Inc. v. Cimpress Schweiz GmbH, FA 1737429 (Forum Aug. 3, 2017) (“Complainant insists that Respondent has made no demonstrable preparations to use the disputed domain name. When Respondent is not using the disputed domain name in connection with an active website, the Panel may find that Respondent is not using the disputed domain name for a bona fide offering of goods or services… As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.”). Here, Complainant provides a screenshot of the webpage to which the disputed domain name resolves, showing a “File not found” error. See Compl. Annex. Ex. A. Therefore, the Panel finds that Respondent has no rights or legitimate interests in the <wvvwinc.com> domain name, as Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, under Policy ¶¶ 4(c)(i) and (iii);
(g) Complainant argues that Respondent has no rights or legitimate interest in the <wvvwinc.com> domain name, as Respondent is typosquatting on Complainant’s WWW mark. Intentional misspellings of a complainant’s mark is evidence of a lack of rights or legitimate interest in a disputed domain name, under Policy ¶ 4(a)(ii). See LTD Commodities LLC v. Party Night, Inc., FA 165155 (Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”). Here, Complainant contends that Respondent replaced the second “w” with the letters “vv”, which visually look similar to Complainant’s WWW mark. Therefore, the Panel finds that Respondent has no rights or legitimate interest in the <wvvwinc.com> domain name, as Respondent is typosquatting on Complainant’s WWW mark under Policy ¶ 4(a)(ii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
Registration and Use in Bad Faith
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent’s <wvvwinc.com> domain name was registered and used in bad faith, as Respondent is using the confusingly similar nature of the disputed domain name to the Complainant’s WWW mark to profit from association with the mark. Using a confusingly similar disputed domain name in an attempt to profit from association with complainant’s mark can be evidence of bad faith, under Policy ¶ 4(b)(iv). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”) Therefore, the Panel finds that Complainant argues that Respondent’s <wvvwinc.com> domain name was registered and used in bad faith, as Respondent is using the confusingly similar nature of the disputed domain name to the Complainant’s WWW mark to profit from association with the mark, under Policy ¶ 4(b)(iv).
Secondly, Complainant argues that Respondent’s <wvvwinc.com> domain name was registered and used in bad faith, as Respondent registered the disputed domain name potentially to phish for information or defraud the Complainant. Registration of a disputed domain name for the purposes of tricking the complainant or complainant’s customers into divulging personal information can be evidence of bad faith under Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Maniac State, FA 608239 (Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers). Here, Complainant provides a blog post about how email scams for wire transfers work, and contends that the Respondent could use the disputed domain name for similar tasks, as Complainant’s corporate email is very similar to the disputed domain name. Therefore, the Panel finds that Respondent’s <wvvwinc.com> domain name was registered and used in bad faith, as Respondent registered the disputed domain name potentially to phish for information or defraud the Complainant, under Policy ¶ 4(a)(iii).
Thirdly, Complainant argues that Respondent’s<wvvwinc.com> domain name was registered and used in bad faith, as Respondent is typosquatting on Complainant WWW mark. Intentional misspelling of a complainant’s mark to take advantage of common spelling errors is evidence of bad faith, under Policy ¶ 4(a)(iii). See Webster Financial Corporation and Webster Bank, National Association v. IS / ICS INC, FA 16070016833 (Forum Aug. 11, 2016) (“Typosquatting is a practice whereby a domain name registrant, such as Respondent, deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name. The conniving registrant wishes and hopes that Internet users will inadvertently type the malformed trademark or read the domain name and believe it is legitimately associated with the target trademark. In doing so, wayward Internet users are fraudulently directed to a web presence controlled by the confusingly similar domain name’s registrant.”). Here, Complainant contends that Respondent replaced the second “w” with the letters “vv”, which visually look similar to Complainant’s WWW mark. Therefore, the Panel finds that Respondent’s <wvvwinc.com> domain name was registered and used in bad faith, as Respondent is typosquatting on Complainant’s WWW mark under Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the WWW mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wvvwinc.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: June 8, 2019
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