Shopify Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2010001916861
Complainant is Shopify Inc. (“Complainant”), represented by Brandon M. Ress of King & Spalding LLP, Texas, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <helpshopify.com>, registered with GoDaddy.com, 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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 14, 2020; the Forum received payment on October 14, 2020.
On October 15, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <helpshopify.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 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@helpshopify.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 Petter Rindforth as Panelist.
On November 15, 2020, due to the fact that an exhibit (Exhibit D), referred to by the Complainant was missing in the Complaint documentation, the Panelist made a Request for supplementation. On November 16, 2020, the Complainant replied to the Request by submitting the required Exhibit.
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
The Complainant, Shopify Inc., operates an ecommerce platform for online and mobile retail stores. Complainant has rights in the SHOPIFY trademark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. 3,840,412, registered Aug. 31, 2010). Respondent’s domain name <helpshopify.com> is confusingly similar to Complainant’s SHOPIFY trademark, only differing by the addition the generic term “help” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <helpshopify.com> domain name as it is not commonly known by the disputed domain name and has not been licensed, authorized, or otherwise permitted to use the SHOPIFY trademark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent diverts Internet traffic to a website that offers services in direct competition with Complainant.
Respondent registered and uses the <helpshopify.com> domain name in bad faith. Respondent attempts to attract users to a competing website for commercial gain. Additionally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the SHOPIFY trademark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registrations:
No. 3,840,412 SHOPIFY (word), registered August 31, 2010 for goods in class 9;
No. 5,225,833 SHOPIFY (word), registered June 20, 2017 for goods and services in classes 9, 35, 36, 39 and 42;
No. 3,208,463 S SHOPIFY (fig), registered February 13, 2007 for goods and services in classes 9 and 42;
No. 5,326,574 S SHOPIFY (fig), registered November 7, 2017 for goods and services in classes 9, 16, 18, 25, 35, 36, 39 and 42; and
No. 5,337,842 S SHOPIFY (fig), registered November 21, 2017 for goods and services in classes 9, 16, 18, 25, 35, 36, 39 and 42.
The Complainant is also the owner of the following national and regional trademark registrations:
National Canadian trademark registration No. 1287868 S SHOPIFY (fig), registered November 13, 2017 for services in class 35; and
European Union Trade Mark (EUTM) registration No. 008727083 SHOPIFY (word), registered July 29, 2010 for goods and services in classes 9, 35, 38 and 42.
The disputed domain name <helpshopify.com> was registered on March 20, 2019.
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 Complainant asserts rights in the SHOPIFY trademark through its registration with the USPTO, as well as other national and regional registrations (Canada and EU). Registration of a trademark 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, the Panel find that Complainant has rights in the trademark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <helpshopify.com> domain name is confusingly similar to Complainant’s SHOPIFY trademark, differing only by the addition the generic term “help” 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 trademark 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 find that the disputed domain name is confusingly similar to Complainant’s trademark under Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first 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, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
The Complainant argues that Respondent lacks rights and legitimate interests in the <helpshopify.com> domain name as the Respondent is not commonly known by the disputed domain name and has not been licensed, authorized, or otherwise permitted to use the SHOPIFY trademark. When no response is submitted, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed 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 trademark 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 “Carolina Rodrigues / Fundacion Comercio Electronico”, and there is no other evidence to suggest that Respondent was authorized to use the SHOPIFY trademark. Therefore, the Panel find that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
The Complainant also argues that Respondent does not use the <helpshopify.com> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use but rather diverts Internet traffic to a website that offers services in direct competition with the Complainant. Use of a disputed domain name to redirect Internet users to a competing webpage is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Invesco Ltd. v. Premanshu Rana, FA 1733167 (Forum July 10, 2017) (“Use of a domain name to divert Internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”). Complainant provides a screenshot of the resolving webpage at the disputed domain name, noting that it is a page to set up a website, provided by Complainant’s competitor. Thus, the Panel agree that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) or (iii).
The Complainant claims that Respondent registered and uses the <helpshopify.com> domain name in bad faith because Respondent attempts to attract users to a competing website for commercial gain. Use of a confusingly similar domain name to redirect users to a competing website is considered bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See OneWest Bank N.A. v. Matthew Foglia, FA1503001611449 (Forum Apr. 26, 2015) (holding that the respondent’s use of the disputed domain name to direct Internet users to a website which competed with the complainant was evidence of bad faith pursuant to Policy ¶ 4(b)(iv)). As previously noted, Complainant provides a screenshot of the resolving webpage at the disputed domain, noting that it is a page to set up a website, provided by Complainant’s competitor. The Panel therefore find that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Additionally, Complainant claims that Respondent registered the <helpshopify.com> domain name with actual knowledge of Complainant’s rights in the SHOPIFY trademark. 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 iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Complainant argues that Respondent must have registered the disputed domain name with Complainant’s SHOPIFY trademark in mind based on the notoriety of Complainant’s trademarks and the obvious conneciton between Respondent’s website and Complainant’s business. The Panel find it likely that actual knowledge is present, and therefore also find bad faith pursuant to 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 <helpshopify.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: November 23, 2020
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