Spike's Holding, LLC v. Ya Lei Zhu
Claim Number: FA2012001926021
Complainant is Spike's Holding, LLC (“Complainant”), represented by David A. W. Wong of Barnes & Thornburg LLP, Indiana, USA. Respondent is Ya Lei Zhu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <finishline.space>, registered with Chengdu West Dimension Digital Technology Co., Ltd..
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 December 22, 2020; the Forum received payment on December 22, 2020.
On December 23, 2020, Chengdu West Dimension Digital Technology Co., Ltd. confirmed by e-mail to the Forum that the <finishline.space> domain name is registered with Chengdu West Dimension Digital Technology Co., Ltd. and that Respondent is the current registrant of the name. Chengdu West Dimension Digital Technology Co., Ltd. has verified that Respondent is bound by the Chengdu West Dimension Digital Technology Co., Ltd. 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 December 29, 2020, the Forum served the Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of January 19, 2021 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@finishline.space. Also on December 29, 2020, the Chinese language 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 January 21, 2021, 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.
The Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese. Complainant did not submit a Chinese language complaint, but argues that the proceedings should continue in English, due to the time and expense Complainant would incur translating its complaint, even as Respondent has demonstrated proficiency in English through its registration of a domain name with English words, along with its use of English on the disputed domain name’s resolving website. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant sells sports apparel and footwear throughout the U.S. Complainant has rights in the FINISH LINE mark through its registrations with multiple trademark authorities throughout the world. (e.g. United States Patent and Trademark Office (“USPTO”) Reg. 1,960,882, registered Mar. 5, 1996; China’s State Administration for Industry and Commerce (“SAIC”) Reg. 4,354,392, registered May 28, 2008).
2. Respondent’s <finishline.space>[i] domain name is identical or confusingly similar to Complainant’s mark as it incorporates the mark in its entirety and adds the “.space” generic top-level domain name (“gTLD”).
3. Respondent lacks rights and legitimate interests in the <finishline.space> domain name. Respondent is not commonly known by the domain name. Respondent does not use the domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead attempts to pass off as Complainant or another company and sell counterfeit products or phish for user information on the domain name’s resolving website.
4. Respondent registered and uses the <finishline.space> domain name in bad faith. Respondent exhibits a pattern of bad faith registration of disputed domain names.
5. Respondent attracts internet users for commercial gain by passing off as Complainant or another footwear company and either selling counterfeit products or phishing for user information.
6. Respondent registered the domain name with actual or constructive knowledge of Complainant’s rights in the FINISH LINE mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the FINISH LINE mark. Respondent’s domain name is confusingly similar to Complainant’s FINISH LINE mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <finishline.space> 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 has rights in the FINISH LINE mark through its registrations with multiple trademark authorities throughout the world. (e.g. USPTO Reg. 1,960,882, registered Mar. 5, 1996; SAIC Reg. 4,354,392, registered May 28, 2008). Registration with multiple trademark agencies is sufficient in establishing rights in a mark under Policy ¶ 4(a)(i). See Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (determining that “Complainant has rights in the KOHLER mark through registration with USPTO and SAIC.”). Therefore, the Panel holds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <finishline.space> domain name is identical or confusingly similar to Complainant’s FINISH LINE mark. Under Policy ¶ 4(a)(i), adding a generic or descriptive gTLD is generally insufficient in differentiating a domain name from the mark it incorporates. See DD IP Holder LLC v. Phill Aspden, FA 1603215 (Forum Apr. 8, 2015) (finding that the disputed domain name <dunkin.coffee> is identical to Complainant's DUNKIN COFFEE registered mark, as gTLDs that reference goods or services offered under the registered mark may be taken into account); see also Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”). The <finishline.space> domain name incorporates Complainant’s FINISH LINE mark in its entirety and adds the “.space” generic or descriptive gTLD. Therefore, the Respondent’s <finishline.space> domain name is identical or confusingly similar to Complainant’s FINISH LINE 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 <finishline.space> 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 is not commonly known by the <finishline.space> domain name. Under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a domain name. See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”). The WHOIS information of record identifies Respondent as “Ya Lei Zhu”. Therefore, Respondent is not commonly known by the <finishline.space> domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent does not use the <finishline.space> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Under Policy ¶ 4(c)(i) or (iii), attempting to divert internet users to a domain name’s resolving website by passing off as a Complainant or another company, and either selling counterfeit products or phishing for internet user information on the domain name’s resolving website is generally not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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)); see also Enterprise Holdings, Inc. v. I S / Internet Consulting Services Inc., FA 1785242 (Forum June 5, 2018) (“On its face, the use of a domain name that is confusingly similar to the mark of another in order to facilitate a phishing scheme cannot be described as either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii).”). Complainant provides screenshots of the <finishline.space> domain name’s resolving website, which appears to feature an online store for a high-end brand of shoes. Complainant argues, without contrary evidence in the record, that the products sold are either counterfeits, or are not being sold at all, but simply used as a front to phish for internet user personal information. Thus, the Panel holds that Respondent does not use the <finishline.space> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use 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 <finishline.space> domain name in bad faith by attracting internet users for commercial gain. Under Policy ¶ 4(b)(iv), using a domain name incorporating the mark of another to pass off and divert internet users to a resolving website, where a Respondent sells counterfeit products is generally considered bad faith. See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website); see also Affliction, Inc. v. Chinasupply, FA 1223521 (Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain and thus demonstrating bad faith per Policy ¶ 4(b)(iv) by creating confusion as to the complainant’s connection with the website by selling counterfeit products). The record includes screenshots of the <finishline.space> domain name’s resolving website, which appears to mimic an online store for high end shoes. The record supports Complainant’s assertions that Respondent is either selling counterfeit products or is phishing for internet user information. Thus, the Panel holds that Respondent registered and uses the <finishline.space> domain name in bad faith under Policy ¶ 4(b)(iv).
Additionally, Complainant argues that Respondent registered the <finishline.space> domain name with actual knowledge of Complainant’s rights in the FINISH LINE mark. Under Policy ¶ 4(a)(iii), actual knowledge is sufficient, and may be demonstrated by a Respondent incorporating a well-known and registered mark into its registered domain name. See University of Rochester v. Park HyungJin, FA1410001587458 (Forum Dec. 9, 2014) (“. . .the Panel infers Respondent’s actual knowledge here based on Respondent’s complete use of the PERIFACTS mark in the <perifacts.com> domain name to promote links related to the field of obstetrics, where Complainant’s mark is used.”); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). Because Respondent’s domain name incorporates Complainant’s FINISH LINE mark in its entirety the Panel finds Respondent registered the <finishline.space> domain name with actual knowledge of Complainant’s rights in the mark under 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 <finishline.space> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: February 1, 2021
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