Ontel Products Corporation v. Yassine Ouali
Claim Number: FA2005001897183
Complainant is Ontel Products Corporation (“Complainant”), represented by Jenny T. Slocum of Dickinson Wright PLLC, District of Columbia, USA. Respondent is Yassine Ouali (“Respondent”), Morocco.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mypillowpad.co>, registered with NameCheap, 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 20, 2020; the Forum received payment on May 20, 2020.
On May 21, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <mypillowpad.co> 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 May 26, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 15, 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@mypillowpad.co. Also on May 26, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 20, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name <mypillowpad.co> be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the PILLOWPAD trademark acquired through its ownership of a portfolio trademark registrations including those described below and its use of the mark in its computer accessory business.
Complainant submits that the disputed domain name is identical or confusingly similar to Complainant’s registered PILLOWPAD mark as it contains Complainant’s mark in its entirety and differs only from the mark by the addition of the descriptive term “my”.
Complainant submits that the addition of a descriptive term to a trademark mark is not sufficient to overcome a claim of confusing similarity. Magnum Piering, Inc. v. Mudjackers & Wilson, Case No. D2001-1525 (WIPO Feb. 1, 2007) (noting that confusing similarity under Policy paragraph 4(a)(i) is evaluated based on a comparison of complainant’s mark and the domain name alone).
Moreover, Complainant adds that the addition country code Top Level Domain extension <.co> does not distinguish the disputed domain name from the mark under Policy ¶ 4(a)(i). See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”).
Complainant submits that Respondent has no right or legitimate interest in the disputed domain name arguing that upon information and belief, Respondent is not commonly known by the disputed domain name or any name containing Complainant’s PILLOWPAD mark. Complainant adds that the WHOIS records for the disputed domain name make no mention of the disputed domain name or the PILLOWPAD mark as Respondent’s name or nickname. See Popular Enters., LLC v. Sung-a Jang, FA811921 (Forum Nov. 16, 2006) (“Respondent’s WHOIS information does not suggest that [r]espondent is commonly known by the <ntester.com> domain name”).
Complainant asserts that it has not authorized Respondent to use its PILLOWPAD mark in a domain name. See Kmart of Mich., Inc. v. Cone, FA655014 (Forum Apr. 25, 2006) (The panel held that respondent’s attempt to pass itself off as the complainant was not a bona fide offering of goods or services or a legitimate non-commercial or fair use).
Complainant argues that unlicensed, unauthorized use of a domain name incorporating a complainant’s trademark is strong evidence that a respondent has no rights or legitimate interest in a domain name at issue. See Time Warner Inc. v. MLM Capital LLC d/b/a Domains, FA1076561 (Forum Oct. 26, 2007).
Complainant asserts that despite having no affiliation with Complainant or authorization to use Complainant’s marks, Respondent is using the disputed domain name to resolve to a website that purports to be an online store for Complainant’s PILLOWPAD products.
Complainant refers to screenshots of the website to which the disputed domain name resolves which show images of tablet-stand products and Complainant’s PILLOWPAD mark, and alleges that these images illustrate that Respondent has misappropriated the PILLOWPAD trademark and images of Complainant’s authentic products for its website, in order to sell directly competing counterfeit products.
Complainant argues that Respondent is thereby clearly attempting to illegally benefit from Complainant’s PILLOWPAD mark. Moreover, by prominently displaying Complainant’s PILLOWPAD mark on his website in connection with unauthorized products, Respondent is attempting to pass its website off to unwary Internet users as an official retail site for the purchase of authentic PILLOWPAD products, when that is not the case.
Complainant argues that panels have consistently held that such unauthorized use of a complainant’s mark does not constitute use of a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain names under the Policy. See Andersen Corp. v. Design Price Buy Inc., FA1261838 (Forum June 16, 2009) (finding that respondent’s attempt to pass itself off as an authorized distributor of complainant’s products did not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the subject domain).
Complainant submits that the disputed domain name was registered and is being used in bad faith arguing that there is no rationale for Respondent’s registration and use of the disputed domain name other than to disrupt the business of Complainant by causing people to mistakenly believe they are visiting an authorized seller of Complainant’s authentic PILLOWPAD products, or to attract for commercial gain, people to Respondent, falsely believing it is Complainant’s online location, by creating a likelihood of confusion with Complainant’s PILLOWPAD marks to extract personal information and/or money from visitors to Respondent’s website.
Complainant argues that Respondent’s use of the disputed domain name in this diversionary manner is disruptive to Complainant’s business and is evidence of bad faith registration and use of the domain name under Policy ¶ 4(b)(iii). See Victoria's Secret Stores Brand Management, Inc. v. None c/o Marcias. Da Silva, FA1356205 (Forum Dec. 4, 2010) (finding respondent’s use of its domain name to divert Internet users to respondent’s website, which displayed, advertised and sold products that purported to be complainant’s goods, resulted in a loss of business and revenue to complainant and constituted evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii)).
Complainant adds that because the disputed domain name is virtually identical to Complainant’s famous mark, its unauthorized use strongly implies a direct relationship with Complainant, and shows opportunistic bad faith, especially as the content on the resolving website was copied from Complainant’s own website. See Chevron Intellectual Property LLC v. Matthew Janowitz FA 1745920 (Forum Sept. 20, 2017) (finding that the use of the domain name chevronhr.com to send unauthorized job solicitations via email constitutes bad faith).
Further, Complainant submits that by attempting to pass itself off to consumers as if owned, affiliated or sponsored by Complainant, Respondent is taking advantage of the goodwill established in Complainant’s PILLOW PAD mark in bad faith for commercial gain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant manufactures and sells computer accessories for laptops and tablets using the PILLOWPAD trademark and has provided evidence of its ownership of the following trademark registrations:
· United States registered trademark PILLOWPAD, registration number 4932696, registered on April 5, 2016 on the Principal Register for goods in international class 9;
· European Union Trade Mark PILLOW PAD, registration number 18081086, registered on October 30, 2019 for goods in for PILLOWPAD in class 9; and
· United Kingdom trademark PILL-O-PAD registration number UK00003421674 registered on November 8, 2019 for goods in class 9.
The disputed domain name was registered on October 27, 2019. It is presently registered in the name of Respondent who avails of a privacy service to conceal his identity and resolves to the website that offers for sale computer tablet stand products under the product names “My PillowPad” and “Pillow Pad.”
There is no information available about Respondent except for that which is provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar, including disclosure of Respondent’s name and details, in response to the Forum’s request for verification of the registration details of the disputed domain name in the course of this proceeding.
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”).
Complainant has adduced uncontested convincing evidence of its rights in the PILLOWPAD trademark acquired through its ownership of the trademark registrations, details of which are provided above, and through the goodwill that it has acquired in the mark by its use in its computer accessory business.
The disputed domain name is composed of Complainant’s PILLOWPAD mark in its entirety preceded by the descriptive term “my” in combination with ccTLD <.co> extension.
Complainant’s trademark is the dominant and only distinctive element in the disputed domain name. Neither the descriptive term “my” nor the <.co> domain extension add any distinctive characteristic in the context of this Complaint.
This Panel finds therefore that the disputed domain name is confusingly similar to the PILLOWPAD mark in which Complainant has rights and Complainant has succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interest in the disputed domain name arguing that upon information and belief, Respondent is not commonly known by the disputed domain name or any name containing Complainant’s PILLOWPAD mark; that the WHOIS records for the disputed domain name make no mention of the disputed domain name or the PILLOWPAD mark as Respondent’s name or nickname; that Complainant has not authorized Respondent to use its PILLOWPAD mark in a domain name; that Respondent’s unlicensed, unauthorized use of a domain name incorporating a complainant’s trademark is strong evidence that a respondent has no rights or legitimate interest in a domain name at issue; that despite having no affiliation with Complainant or authorization to use Complainant’s marks, Respondent is using the disputed domain name to resolve to a website that purports to be an online store for Complainant’s PILLOWPAD products; that the website to which the disputed domain name resolves prominently displays Complainant’s mark without authorization and offers unauthorized or counterfeit products and that such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name.
Notwithstanding Respondent’s failure to file a Response or provide any defense in this proceeding, upon consideration of the record and viewing the website to which the disputed domain name resolves, it could be argued that Complainant has alleged but has not adduced evidence that Respondent is not a bona fide reseller of Complainant’s goods and that the goods presented on Respondent’s website are counterfeit.
Since 2001, the decision in Oki Data Americas, Inc. v. ASD, Inc. Case No. D2001-0903 has provided accepted guidance to panelists as to whether a reseller has rights or legitimate interests in a disputed domain name. In Oki Data the panel decided that to be “bona fide,” the offering must meet several requirement including that a respondent must actually be offering the goods or services at issue and must use the website to which the disputed domain name resolves to sell only the trademarked goods; that the site must accurately disclose the registrant's relationship with the trademark owner; and that the respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
In this proceeding, the website to which the disputed domain name resolves purports to create the impression that genuine branded goods are offered for sale. In places the goods on offer are branded PILLOW PAD and elsewhere branded MY PILLOWPAD. Complainant’s mark is prominently displayed without license or authority. The text and other content however misrepresent to the public that the website is owned by, has a connection with, or is endorsed by Complainant and therefore it does not accurately disclose Respondent’s relationship with Complainant. Additionally, some of the goods are branded MY PILLOWPAD which is arguably a competing product.
Furthermore, Respondent has not responded to these allegations.
In these circumstances Respondent therefore could not avail of a defense based on the Oki Data principles.
It is well established that if Complainant makes out a prima facie case, the burden of production shifts to Respondent to prove his rights or legitimate interests in the disputed domain name. Respondent has failed to file any Response to the Complaint or provide any defense to Complainant’s allegations and so has not discharged the burden. In the circumstances this Panel must find that on the balance of probabilities Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Complainant’s earliest trademark registration is dated April 5, 2016. The disputed domain name was registered on October 27, 2019. Having considered that Complainant’s rights were established years before the disputed domain name was registered; the distinctive character of the PILLOWPAD mark which is the distinctive element of the disputed domain name; and the content of the website to which the disputed domain name resolves, this Panel finds that it is implausible that the disputed domain name was registered without the registrant being aware of Complainant and its PILLOW PAD mark.
On the balance of probabilities, the disputed domain name was registered in bad faith in order to take predatory advantage of the goodwill that Complainant has established in its PILLOW PAD mark in order to divert Internet traffic away from Complainant.
Respondent’s use of the disputed domain name in this diversionary manner must be disruptive of Complainant’s business as it strongly implies a direct relationship between Complainant and Respondent’s website.
This Panel finds therefore that on the balance of probabilities, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his web site by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship ,affiliation, or endorsement of his web site and is therefore using the disputed domain name in bad faith.
As this Panel finds that the disputed domain name was registered and is being used in bad faith, Complainant has therefore succeeded in the third element of the test in Policy ¶ 4(a)(iii) and is entitled to the reliefs sought.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mypillowpad.co> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: June 20, 2020
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