Shopify Inc v. erf ergrewf
Claim Number: FA2010001915906
Complainant is Shopify Inc (“Complainant”), represented by Brandon Ress of King & Spalding LLP, Texas, USA. Respondent is erf ergrewf (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <shopify-service.com>, registered with Name.com, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 5, 2020; the Forum received payment on October 5, 2020.
On October 14, 2020, Name.com, Inc. confirmed by e-mail to the Forum that the <shopify-service.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, 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 October 15, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 4, 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-service.com. Also on October 15, 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 November 9, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant, Shopify Inc., operates an ecommerce platform for online and mobile retail stores. Complainant has rights in the SHOPIFY mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. 3,840,412, registered Aug. 31, 2010).
2. Respondent’s <shopify-service.com>[i] domain name is confusingly similar to Complainant’s SHOPIFY mark as it incorporates the mark in its entirety, merely adding the generic term “service” and the “.com” generic top-level domain (“gTLD”).
3. Respondent lacks rights and legitimate interests in the <shopify-service.com> domain name as it is not commonly known by the domain name and has not been licensed, authorized, or otherwise permitted to use the SHOPIFY mark.
4. Additionally, Respondent does not use the domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent passes off as Complainant.
5. Respondent registered and uses the <shopify-service.com> domain name in bad faith. Respondent uses the domain name to deceive Internet users and engage in email fraud.
6. Respondent registered the domain name with actual knowledge of Complainant’s rights in the SHOPIFY mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the SHOPIFY mark. Respondent’s domain name is confusingly similar to Complainant’s SHOPIFY mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <shopify-service.com> domain name and that Respondent registered and uses the domain name 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:
(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 asserts rights in the SHOPIFY mark through its registration with the USPTO. Registration of a mark with a trademark agency such as the USPTO is generally sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”). Complainant provides evidence of registration with the USPTO (e.g. Reg. 3,840,412, registered Aug. 31, 2010). Therefore, Complainant has rights in the SHOPIFY mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <shopify-service.com> domain name is confusingly similar to Complainant’s SHOPIFY mark as it incorporates the mark in its entirety, merely adding the generic term “service” and the “.com” gTLD. Addition of generic and/or descriptive terms and a gTLD does not necessarily negate confusing similarity between a domain name and a mark under Policy ¶ 4(a)(i). See 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.”). Therefore, the Panel holds that the <shopify-service.com> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <shopify-service.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent lacks rights and legitimate interests in the <shopify-service.com> domain name as it is not commonly known by the domain name and has not been licensed, authorized, or otherwise permitted to use the SHOPIFY mark. When no response is submitted, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a domain name under Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). Additionally, lack of authorization to use a mark further evidences that a respondent lacks rights and legitimate interests in the mark. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Here, the WHOIS information of record identifies the registrant as “Erf Ergrewf”, and nothing in the record rebuts Complainant’s assertion that it never authorized Respondent to use the SHOPIFY mark in the <shopify-service.com> domain name. Therefore, the Panel holds that Respondent is not commonly known by the <shopify-service.com> domain name under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent does not use the <shopify-service.com> domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use but rather passes off as Complainant. Impersonating a complainant through a domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See ShipChain, Inc. v. 谢东东 / 谢东东, FA 1785189 (Forum June 21, 2018) (“The resolving webpages between Complainant’s and Respondent’s websites are virtually the same. Respondent’s use of the disputed domain name does not confer rights and legitimate interests under Policy ¶¶4(c)(i) and (iii).”). Complainant provides a screenshot of Respondent’s webpage which displays a message regarding setting up the web address with Complainant’s logo displayed. Thus, the Panel agrees that Respondent lacks rights or legitimate interests in the <shopify-service.com> domain name under Policy ¶¶ 4(c)(i) or (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <shopify-service.com> domain name in bad faith because Respondent uses the domain name to deceive Internet users and engage in email fraud. Use of a domain name to pass off as a complainant in furtherance of fraud may be evidence of bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv). See Chevron Intellectual Property, LLC v. Jack Brooks, FA 1635967 (Forum Oct. 6, 2015) (finding that Respondent’s use of <chevron-corps.com> to impersonate an executive of Complainant in emails is in opposition to Complainant and is therefore in bad faith under Policy ¶ 4(b)(iii)); see also Monsanto Co. v. Decepticons, FA 101536 (Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith). Complainant has provided evidence that Respondent uses the <shopify-service.com> domain name to provide legitimacy to an email address used in connection with a large number of fraudulent online retail stores. Complainant provides screenshots of the email address being used in connection with multiple retail stores and also provides evidence identifying the retail stores as fraudulent. Thus, the Panel concludes that Respondent registered and uses the <shopify-service.com> domain name in bad faith under Policy ¶ 4(b)(iii) and/or (iv).
Additionally, Complainant claims that Respondent registered the <shopify-service.com> domain name with actual knowledge of Complainant’s rights in the SHOPIFY mark. Per Policy ¶ 4(a)(iii), actual knowledge of a Complainant’s trademark rights is sufficient to establish bad faith and can be demonstrated by the fame of the mark and the use the respondent makes of the domain name. See i AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”); see also Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”). Complainant argues that Respondent must have registered the <shopify-service.com> domain name with Complainant’s SHOPIFY mark in mind based on the notoriety of Complainant’s marks and the obvious connection between Respondent’s website and Complainant’s business. Accordingly, the Panel finds bad faith pursuant to Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied 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 <shopify-service.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: November 16, 2020
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