Shopify Inc. v. Pavel Hlinisty
Claim Number: FA2002001886309
Complainant is Shopify Inc. (“Complainant”), represented by Richard J. Groos of King & Spalding LLP, Texas, USA. Respondent is Pavel Hlinisty (“Respondent”), Belarus.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <shopify.link>, registered with NameCheap, Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 28, 2020; the Forum received payment on February 28, 2020.
On March 2, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <shopify.link> 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 3, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 23, 2020 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@shopify.link. Also on March 3, 2020, 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.
A timely Response was received and found to be complete on March 23, 2020.
On March 27, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, operating under the SHOPIFY mark, is a leading e-commerce company, with more than 1,000,000 businesses in 175 countries using its online platform as of June 2019.
Complainant holds a registration for the SHOPIFY trademark and service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 5,225,833, registered June 20, 2017.
Respondent registered the domain name <shopify.link> on January 8, 2020.
The domain name is confusingly similar to Complainant’s SHOPIFY mark.
Respondent has not been commonly known by the domain name.
Respondent has not been licensed or otherwise permitted by Complainant to use Complainant’s SHOPIFY mark.
Respondent is not making a bona fide offering of goods or services by means of the domain name, nor a legitimate noncommercial or fair use of it.
Instead, Respondent uses the domain name to host pay-per-click hyperlinks that resolve to the websites of enterprises operating in competition with the business of Complainant.
Respondents has no rights to or legitimate interests in the domain name.
Respondent’s use of the domain name disrupts Complainant’s business.
Respondent knew of Complainant’s rights in the SHOPIFY mark at the time of its registration of the domain name.
Respondent registered and uses the domain name in bad faith.
B. Respondent
Respondent intends to use the <shopify.link> domain name to facilitate the operation of a personal blog.
The blog is still under development, so the domain name was temporarily parked, and advertisements linked to it were generated by the service hosting the domain name.
Respondent is willing to sell the domain name to Complainant.
(1) the domain name registered by Respondent is substantively identical and confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the domain name was registered and is being used by Respondent in bad faith.
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
Complainant has rights in the SHOPIFY trademark sufficient for purposes of Policy ¶ 4(a)(i), by reason of its registration of the mark with a national trademark authority, the USPTO. See, for example, DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum December 30, 2018):
Complainant’s ownership of a USPTO registration for … [its mark] … demonstrate[s] its rights in such mark for the purposes of Policy ¶ 4(a)(i).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Belarus). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <shopify.link> domain name is substantively identical and confusingly similar to Complainant’s SHOPIFY trademark and service mark. The domain name incorporates the mark in its entirety, with only the addition of the generic Top Level Domain (“gTLD”) “.link.” This alteration of the mark, made in forming the domain name, does not save it from the realm of confusing similarity under the standards of the Policy. See, for example, Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum September 27, 2002):
[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
This is because every domain name requires a gTLD or other TLD.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to and legitimate interests in the <shopify.link> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. We will therefore examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <shopify.link> domain name, and that Complainant has not licensed or otherwise authorized Respondent to use the SHOPIFY mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Pavel Hlinisty,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner). See also Navistar International Corporation v. N Rahmany, FA 620789 (Forum June 8, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the <shopify.link> domain name to host pay-per-click hyperlinks that resolve to the websites of enterprises operating in competition with the business of Complainant. This use is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it 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. See, for example, Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1626253 (Forum July 29, 2015):
Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering [of goods or services] or a legitimate noncommercial or fair use [of the domain name].
The Panel therefore finds that Complainant has adequately satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s use of the contested <shopify.link> domain name, as alleged in the Complaint, disrupts Complainant’s business. Under Policy ¶ 4(b)(iii), this stands as proof of Respondent’s bad faith in registering and using the domain name. See, for example, block.one v. Negalize Interactive Things, FA 1798280 (Forum August 21, 2018):
Offering links to competing products or services can demonstrate bad faith under Policy ¶ 4(b)(iii) where a respondent registers a domain name that is confusingly similar to the mark of another.
Respondent suggests that its hosting service, rather than Respondent, is responsible for placement and operation of the hyperlinks appearing on the page resolving from the domain name. Respondent is mistaken. Under the Policy, Respondent, as registrant of the domain name, is responsible for the behavior of its hosting service, which functions as its agent in placing and managing links resolving from the domain name. See, for example, Get Away Today.Com Inc. v. Warren Gilbert, DCO2010-0021 (WIPO November 12, 2010):
Respondent’s website links to a significant number of competitors of Complainant. Respondent might not be directly benefiting financially from using a … link farm parking page, but … [its hosting agent] … is financially benefiting from the sponsored links on Respondent’s website, and … [that agent] … is acting on behalf of Respondent. Respondent must accept the consequences of the actions of its agent,…. The Panel determines that Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to source, sponsorship, affiliation, or endorsement of Respondent’s website. Respondent registered and has used the disputed domain name in bad faith within the meaning of paragraph 4(b) of the Policy.
We are also convinced by the evidence that Respondent knew of Complainant and its rights in the SHOPIFY mark when it registered the <shopify.link> domain name. This further demonstrates Respondent’s bad faith in registering it. See, for example, Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum February 6, 2014):
The Panel … here finds actual knowledge [of the rights of a mark holder by a respondent domain name registrant at the time it registered a confusingly similar domain name, and, therefore, that respondent’s bad faith in registering it] through the name used for the domain and the use made of it.
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <shopify.link> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 30, 2020
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