Shopify Inc. v. Geoffrey Mweberi / shopifyacademy.com
Claim Number: FA2106001949281
Complainant is Shopify Inc. (“Complainant”), represented by Brandon M. Ress of King & Spalding LLP, Texas, USA. Respondent is Geoffrey Mweberi / shopifyacademy.com (“Respondent”), Delaware, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <shopifyacademy.com>, registered with Tucows Domains Inc..
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Luz Helena Villamil - Jimenez as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 1, 2021; the Forum received payment on June 1, 2021.
On June 2, 2021, Tucows Domains Inc. confirmed by e-mail to the Forum that the <shopifyacademy.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 June 4, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 24, 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@shopifyacademy.com. Also on June 4, 2021, 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.
A timely Response was received and determined to be complete on June 22, 2021.
In light of the statements made by Respondent in his Response, on June 25, 2021 an Additional Submission by Complainant was received in compliance with Supplemental Rule 7(a).
On June 28, 2021 an Additional Submission by Respondent was received. Although said Additional Submission does not comply with Supplemental Rule 7(b) (ii) and (iii), the statements therein contained will be taken into account by the Examiner to render a decision in the present case considering certain assertions made in the Additional Submission by the Respondent.
On June 25, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Luz HelenaVillamil-Jimenez 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that Shopify, Inc. is the owner of the famous SHOPIFY trademark. Shopify, Inc., through its predecessors in interest, commenced use of the trademark SHOPIFY at least as early as 2005 in connection with its ecommerce platform for the operation of online and mobile retail stores, and various products and services related thereto. Since that time, Shopify has continuously used the SHOPIFY Mark in commerce in the United States and abroad. In addition, Shopify has registered and uses the domain name shopify.com in connection with the advertising of its products and services on the Internet. Shopify first registered the shopify.com domain name in 2005 and has continuously maintained the registration for shopify.com since that time.
Complainant adds that today Shopify is a leading ecommerce company, with more than 1,000,000 businesses in 175 countries utilizing the SHOPIFY platform as of June 2019. The total gross merchandise volume for businesses using the SHOPIFY platform exceeded $100+ billion in 2019.
Complainant also argues that the domain <shopifyacademy.com> is confusingly similar to and incorporates in its entirety the SHOPIFY Mark, and that the addition of the generic word “academy” and the top-level domain “.com,” is irrelevant in determining similarity of the disputed domain with the SHOPIFY Mark. These minor differences are insufficient to distinguish <shopifyacademy.com> from the SHOPIFY Mark, particularly because Complainant provides its own courses through its SHOPIFY Partner Academy and SHOPIFY COMPASS services.
According to Complainant, Respondent does not have rights or legitimate interests in the <shopifyacademy.com> domain name because Respondent does not have authorization or permission to use Complainant’s mark and is not commonly known by the disputed domain name.
Lastly, Complainant states that Respondent registered and uses the <shopifyacademy.com> domain name in bad faith. The <shopifyacademy.com> domain name currently redirects to a page that displays a message “Website Expired” with the Squarespace logo in the bottom right corner. Complainant asserts that this passive holding of a domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name, especially because of the addition of the logo of a competitor.
B. Respondent
Respondent argues that he has rights and legitimate interests in the <shopifyacademy.com> domain name based on its relationship with Complainant because for the past 5 years he has subscribed to Shopify at least 7 business accounts.
Respondent also mentions that he did not register or use the <shopifyacademy.com> domain name in bad faith by passively holding the domain, but rather put its legitimate use on hold after being unable to initially activate its website for its intended use. Respondent also maintains that he registered the name through Square space in good faith or rather with no bad intentions because he was not aware that he could buy a domain name through Shopify.
C. Additional Submissions
Complainant contents in its Additional Submission in reply to one of the Respondent’s arguments stating that he is a customer of Shopify and once he created a partner account with Shopify the <shopifyacademy.com> domain name should remain in his possession, that in fact, by creating an account with Shopify’s Partner Program, Respondent explicitly agreed not to use “Shopify” in a business name and not to register or use a domain name incorporating the SHOPIFY Mark. Said specific requirement and prohibition appears in the Complainant’s Partner Program Agreement, a copy of which was submitted with the Additional Submission.
In turn, Respondent maintains in his Additional Submission that the statement that there is a violation of a license agreement “is not sincere or rather honest”. He adds that he only created an Account with Shopify partner and it was declined. The system did not allow him to go ahead and complete the application to get an affiliate link. Respondent wonders ¿how does the complainant consider to use the agreement in this administrative proceeding yet <shopifyacademy.com> was not qualified to be part of the program? ¿What is the agreement for in this case when both parties are not working together in any way whatsoever at this moment?
Complainant is the owner of the trademark SHOPIFY, Class 9, registered on August 31, 2010, the trademark SHOPIFY, Classes 9, 35, 36, 39 and 42 registered on June 20, 2017, and the trademark SHOPIFY and its corresponding logo (black & white) in International Classes 9 and 42 registered on February 13, 2007 among other registrations, as it is evidenced with the several trademark certificates submitted with the Complaint. The Examiner therefore finds that with such registrations Complainant has established rights in the mark SHOPIFY under Policy ¶ 4(a)(i).
As to the word “academy” contained in the disputed domain, the Examiner concurs with Complainant in that said word is irrelevant in determining similarity of <shopifyacademy.com> with the trademark SHOPIFY. Under Policy ¶ 4(a)(i), domain names registrants are required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that a given domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. Moreover, it is relevant in the present case that Complainant submitted evidence to demonstrate that Complainant provides its own courses through its SHOPIFY Partner Academy. Thus, the Examiner considers that the presence of the word academy in the disputed domain is not a coincidence, but rather a deliberate action by the Respondent.
Indeed, pursuant to his assertions both in his Response and in his Additional Submission, it is clear that he had knowledge of the SHOPIFY name and that he decided to go ahead with an analog business on the internet using said name together with the word academy, a word that he could not have ignored since he specifically stated in his Response that “For the past 5 years I have subscribed to Shopify at least 7 business accounts.”
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.
The first requirement of the Policy in Paragraph 4(a)(i) for the Complainant to meet is to demonstrate its rights over a trademark identical or confusingly similar to a domain name registered by the Respondent.
In the present case, Complainant demonstrated with the trademark registration copies submitted with the Complaint that it is the exclusive owner of the trademarks SHOPIFY and SHOPIFY and design. Moreover, it was demonstrated that the trademark SHOPIFY is widely used and promoted to an extent that it is not possible for anyone to argue that it did not know the existence of said mark.
The similarities between the trademark SHOPIFY and the domain <shopifyacademy.com> are undeniable. SHOPIFY is a coined word which if it transmits any information to internet users, this is because of the actual importance of the Shopify.com website. Respondent’s <shopifyacademy.com> domain name is confusingly similar to Complainant’s mark because it incorporates the SHOPIFY mark in its entirety, merely adding the generic word “academy” and the “.com” gTLD. The addition of generic or descriptive terms and a gTLD is generally insufficient to overcome the confusing similarity between a domain name and a mark under Policy ¶ 4(a)(i). See Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Svensson Viljae, FA 1784650 (Forum June 1, 2018) (finding confusing similarity where “[t]he disputed domain name <skechers-outlet.com> adds a hyphen and the generic term ‘outlet’ to Complainant's registered SKECHERS mark, and appends the ‘.com’ top-level domain.”).
In light of the foregoing, there is no doubt for the Examiner that the Policy requirement in Paragraph 4(a)(i) is met as to the fact that the disputed domain name <shopifyacademy.com> is confusingly similar to the trademark SHOPIFY owned by the Complainant.
Once again, the Panel concurs with Complainant’s assertion that the mere fact that Respondent is a customer of Shopify does not authorize Respondent to use the SHOPIFY Mark or register a domain name incorporating the mark. Complainant demonstrated that Shopify’s Partner Program, requires Partners to agree not to use “Shopify” in a business name and not to register or use a domain name incorporating the SHOPIFY Mark.
On the other hand, Respondent intends to make believe that he does not have any idea of how an internet business works. He pretends to have acted in complete good faith because he was convinced that since he is a customer of Shopify and once created a partner account with Shopify, he could use the SHOPIFY name to create and conduct a business of his own, totally ignoring that there are certain conditions to meet when a domain name is registered, when a program is joined, and in the end, when anyone subscribes to a website to satisfy any particular need.
For the Examiner it is therefore unfathomable the Respondent’s attitude described above, because such level of unawareness of the internet business is not compatible with the Respondent’s assertion that for the past 5 years he has subscribed to Shopify at least 7 business accounts, and that he has 2 active accounts. If Respondent has been conducting business for 5 years as a customer of Shopify, it is quite difficult to convince that the Respondent does not even understand the wording of the Complaint, as he pretends to make believe. But even if such were the case, the fact that the Respondent is not careful or even prepared to conduct or understand internet business does not entitle him to register a domain name containing a third party’s trademark, and definitely, it does not grant him any right against the real owner of a trademark and a domain name that identifies a widely known ecommerce platform.
In light of the foregoing, the Examiner establishes that the Policy requirement in Paragraph 4(a)(ii) is met inasmuch as the Respondent has no rights or legitimate interests in respect of the domain name <shopifyacademy.com>.
Complainant notes that Respondent fails to make an active use of the <shopifyacademy.com> domain name. Passive holding of a disputed domain name may be evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
In the present case, Complainant claims as well that Respondent registered and uses the <shopifyacademy.com> domain name in bad faith as Respondent creates confusion by displaying the logo of Complainant’s competitor on the resolving webpage. In this respect, the statement of the Respondent in his response is again astonishing. In Respondent’s words “I registered the name through Square space in good faith or rather with no bad intentions because at the time I was not aware that I could buy a domain name through shopify and I sincerely apologise.” Assuming that this assertion is true, registering the domain name <shopifyacademy.com> through Squarespace (a direct and the biggest competitor of Complainant) does not mean that he must necessarily include the Squarespace trademark and logo in his website, and on the contrary, doing so does lead to suspicion.
Finally, the Examiner also concurs with Complainant in that Respondent’s registration and use of the disputed domain name in violation of its agreement with Complainant is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). Respondent stated that he has been a Shopify customer for 5 years, and Complainant submitted evidence of the fact that by creating an account with Shopify’s Partner Program, Respondent explicitly agreed not to use “Shopify” in a business name and not to register or use a domain name incorporating the SHOPIFY Mark. Therefore, going ahead with the registration of a domain name incorporating said trademark in spite of such a specific prevention is an act of bad faith, because the Respondent was made aware of the specific prohibition not to do it.
In light of the foregoing, the Examiner concludes that the domain name was registered and is being used in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <shopifyacademy.com> domain name be TRANSFERRED from Respondent to Complainant.
Luz Helena Villamil-Jimenez, Panelist
Dated: July 9, 2021
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