Ontel Products Corporation v. Jiahongnetwork Jiahongnetwork
Claim Number: FA2010001915986
Complainant is Ontel Products Corporation (“Complainant”), represented by Jenny T. Slocum of Dickinson Wright PLLC, District of Columbia, USA. Respondent is Jiahongnetwork Jiahongnetwork (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <arcticairofficial.com>, registered with NameSilo, LLC.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 6, 2020; the Forum received payment on October 6, 2020.
On October 6, 2020, NameSilo, LLC confirmed by e-mail to the Forum that the <arcticairofficial.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, LLC 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 13, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 2, 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@arcticairofficial.com. Also on October 13, 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 5, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant asserts that, for over 20 years, Complainant has been developing, marketing, and distributing some of the most innovative consumer products on the market, including popular toys, top-selling home fitness equipment, and ground-breaking household items including the ARCTIC AIR personal air cooler.
Complainant has rights in the ARCTIC AIR mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO.
Respondent’s <arcticairofficial.com> domain name is identical or confusingly similar to Complainant’s ARCTIC AIR mark as it merely adds the generic word “official” and the “.com” generic top-level-domain name ("gTLD").
Respondent lacks rights or legitimate interests in the <arcticairofficial.com> domain name. Respondent is not commonly known by the at-issue domain name, nor has Respondent been authorized by Complainant to use the ARCTIC AIR mark. Respondent has not used the domain name in connection with a bona fide offering of goods or services as Respondent passes off as Complainant by advertising unauthorized and/or counterfeit versions of Complainant’s products for sale. Respondent thus uses the at-issue domain name to compete with Complainant.
Respondent registered and uses the <arcticairofficial.com> domain name in bad faith. Respondent’s website disrupts Complainant’s business as Respondent registered the at-issue domain name to pass itself off as Respondent and sell unauthorized products for Respondent’s financial gain. Additionally, Respondent’s opportunistic bad faith is evidenced by Respondent the domain name that contains Complainant’s mark with the addition of the generic term “official.” Finally, Respondent had actual knowledge of Complainant’s rights to the ARCTIC AIR mark prior to registering the at-issue domain name as evidenced by Respondent’s use of the mark in addition to Respondent’s website directly copying images from Complainant’s website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in ARCTIC AIR.
Respondent is not affiliated with Complainant and is not authorized to use the ARCTIC AIR mark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired trademark rights in ARCTIC AIR.
Respondent uses the at-issue domain name to divert internet users to Respondent’s <arcticairofficial.com>website where it offers unauthorized and/or counterfeit ARCTIC AIR products for sale.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of the ARCTIC AIR mark with the USPTO sufficiently demonstrates Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Next, Respondent’s <arcticairofficial.com> domain name incorporates Complainant’s ARCTIC AIR trademark, less its domain name impermissible space, suffixed with the term “official” and with all followed by the generic top-level domain name “.com”. The differences between Complainant’s trademark and Respondent’s domain name do nothing to distinguish the at-issue domain name from Complainant’s trademark pursuant to Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <arcticairofficial.com> domain name is confusingly similar to Complainant’s ARCTIC AIR trademark. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
The WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Jiahongnetwork Jiahongnetwork” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by the <arcticairofficial.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the <arcticairofficial.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Moreover, Respondent uses the <arcticairofficial.com>domain name to pass itself off as Complainant and to offer unauthorized and/or counterfeit versions of Complainant’s product offerings for sale. Complainant shows that the at-issue domain name addresses a website that displays copyrighted content from Complainant’s genuine website while offering unauthorized and/or counterfeit ARCTIC AIR products for sale. Respondent’s use of the domain name in this manner falsely suggests that there is a relationship between Complainant and Respondent when there is not. Additionally, such use facilitates Respondent’s commercial exploitation of Complainant’s ARCTIC AIR trademark and promotes Respondent’s sale of unauthorized and/or counterfeit ARCTIC AIR products. Thus, Respondent’s use of the at-issue domain name indicates neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). 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).”); see also 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); see also, General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶ 4(a)(ii).
Respondent’s <arcticairofficial.com> domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, as mentioned above, Respondent’s confusingly similar domain is used to address a website displaying Complainant’s copyrighted content so that Respondent may pass itself off as being sponsored by, or affiliated with, Complainant, when it is not. Respondent further uses such website to offer unauthorized and/or counterfeit ARCTIC AIR products for sale. Using the at-issue domain name to create the false impression of affiliation with Complainant as well as using <arcticairofficial.com> to compete with Complainant disrupts Complainant’s business and shows Respondent’s bad faith registration and use of the <arcticairofficial.com> domain name per Policy ¶¶ 4(b)(iii) and (iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business): see also, G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”); see also Ontel Products Corporation v. waweru njoroge, FA1762229 (Forum December 22, 2017) (“Respondent’s primary offering seem to be counterfeits of Complainant’s toy car products. Respondent’s use of the <magictrackscars.com> domain name is thus disruptive to Complainant’s business per Policy ¶ 4(b)(iii)”).
Finally, Respondent registered <arcticairofficial.com> knowing that Complainant had trademark rights in the ARCTIC AIR mark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark, from Respondent’s use of Complainant’s copyrighted material on the <arcticairofficial.com>website, and from Respondent’s offering of unauthorized and/or counterfeit ARCTIC AIR products for sale on such website. It is thus clear that Respondent intentionally registered the at-issue domain name to improperly exploit its trademark value. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <arcticairofficial.com>domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <arcticairofficial.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: November 5, 2020
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