Spike's Holding, LLC v. 黄林可
Claim Number: FA2111001974074
Complainant is Spike's Holding, LLC (“Complainant”), represented by David A. W. Wong of Barnes & Thornburg LLP, Indiana, USA. Respondent is 黄林可 (“Respondent”), International.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <finishlineshoes.net>, registered with NICENIC INTERNATIONAL GROUP CO., LIMITED.
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 November 19, 2021; the Forum received payment on November 19, 2021.
On November 30, 2021, NICENIC INTERNATIONAL GROUP CO., LIMITED confirmed by e-mail to the Forum that the <finishlineshoes.net> domain name is registered with NICENIC INTERNATIONAL GROUP CO., LIMITED and that Respondent is the current registrant of the name. NICENIC INTERNATIONAL GROUP CO., LIMITED has verified that Respondent is bound by the NICENIC INTERNATIONAL GROUP CO., LIMITED 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 1, 2021, the Forum served the Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of December 21, 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@finishlineshoes.net. Also on December 1, 2021, the Chinese and English 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 December 27, 2021, 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.
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case and the fact that Respondent has failed to object to proceeding in English, the Panel decides that the proceeding should be in English.
A. Complainant
Complainant contends as follows:
Complainant is a footwear retailer.
Complainant has rights in the FINISH LINE mark through its registrations with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <finishlineshoes.net> domain name is identical or confusingly similar to Complainant’s mark as it incorporates the domain name in its entirety and adds the word “shoes” along with the “.net” gTLD.
Respondent lacks rights and legitimate interests in the <finishlineshoes.net> domain name. Respondent is not commonly known by the at-issue domain name, nor has Complainant authorized or licensed Respondent to use its FINISH LINE mark in 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 passes itself off as Complainant on the at-issue domain name’s resolving website.
Respondent registered the <finishlineshoes.net> domain name in bad faith. Respondent passes off as Complainant on the at-issue domain name’s resolving website. Respondent has knowledge of Complainant’s rights in the FINISH LINE mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the FINISH LINE mark.
Complainant’s rights in FINISH LINE existed prior to Respondent’s registration of the at-issue domain name.
Respondent is not authorized to use Complainant’s trademarks.
Respondent uses the at-issue domain name to pass itself off as Complainant on a website mimicking Complainant’s official website where Respondent purports to offer products similar to those offered by Complainant.
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 shows that it has multiple national trademark registrations for its FINISH LINE trademark including registrations with the USPTO. Any one of such registrations is sufficient to demonstrate Complainant’s rights in the FINISH LINE mark under Policy ¶ 4(a)(i). See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sept. 4, 2018) (“Complainant has rights in the GMAIL mark based upon its registration of the mark with numerous trademark agencies around the world.”).
Respondent’s <finishlineshoes.net> domain name contains Complainant’s FINISH LINE trademark less its space, followed by the suggestive term “shoes,” with all followed by the top-level domain name “.net.” The differences between Respondent’s domain name and Complainant’s trademark are insufficient to distinguish Respondent’s <finishlineshoes.net> domain name from the FINISH LINE trademark for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <finishlineshoes.net> domain name is confusingly similar to Complainant’s FINISH LINE trademark. See YETI Coolers, LLC v. Randall Bearden, FA 16060016880755 (Forum Aug. 10, 2016) (finding that the words “powder coating” in the <yetipowdercoating.com> domain name are “merely explicative and directly refer to some of the services rendered by the Complainant” and, therefore, create an “irrefutable confusing similarity” to complainant’s YETI mark); see also Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Forum Sept. 7, 2005) (“[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.”).
Rights or Legitimate Interests
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).
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. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).
The WHOIS information for <finishlineshoes.net> identifies the domain name’s registrant as “中国广东省广州市天河区天河北体育东路116号” without a translation, and the record before the Panel contains no evidence showing that Respondent is commonly known by FINISH LINE or by <finishlineshoes.net>. The Panel therefore concludes that Respondent is not commonly known by the <finishlineshoes.net> domain name for the purposes of Policy ¶ 4(c)(ii). See PragmaticPlay Limited v. Robert Chris, FA2102001932464 (Forum Mar. 23, 2021) (“The WHOIS information of record lists the registrant as “Robert Chris,” and no other information of record suggests Respondent is commonly known by the domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”).
Respondent uses <finishlineshoes.net> to address a website that resembles Complainant’s official website in content and design. Likewise, Respondent’s imposter website purports to offer products similar to those products offered by Complainant. Respondent’s use of the domain name in this manner is 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).”).
Given the forgoing, Complainant satisfies its initial burden and absent evidence to the contrary shows Respondent’s lack of rights and legitimate interests in the at-issue domain name under Policy ¶ 4(a)(ii).
The at-issue domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present from which the Panel concludes that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
First, Complainant previously prevailed in a UDRP domain dispute where the at-issue domain name incorporated its FINISH LINE trademark. In that dispute the <finishlinepro.com> domain name was used in connection with a website identical to the website associated with Respondent’s confusingly similar <finishlineshoes.net> domain name. See Spike's Holding, LLC v. huang lin ke, FA2110001968789 (Forum Nov. 18, 2021). The currently at-issue domain name was registered days after Complainant filed its UDRP dispute seeking transfer of the <finishline.pro> domain to Complainant. Considering the forgoing, it appears that Respondent in-fact was also the registrant/respondent regarding <finishline.pro>. The prior adverse finding against <finishline.pro> thus shows a pattern of domain abuse by Respondent and suggests Respondent’s bad faith in the instant case pursuant to Policy ¶ 4(b)(ii). See Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum Nov. 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)).
As mentioned above regarding rights and legitimate interests, Respondent uses the confusingly similar <finishlineshoes.net> domain name to address a website mimicking Complainant’s official website that offers products similar to those products offered by Complainant. Using a confusingly similar domain name in such manner falsely indicates that there is a sanctioned relationship between Complainant and Respondent when there is no such relationship and demonstrates Respondent’s bad faith under Policy ¶¶ 4(b)(iii) and (iv). See Bittrex, Inc. v. Caroline Alves Maia, FA 1796113 (Forum Aug. 6, 2018) (finding the respondent registered and used the domain name in bad faith per Policy ¶ 4(b)(iv) because the respondent used the disputed domain name to present users with a website that was “virtually identical, with the same color scheme, the same layout and the same substantive content” and used the website to gain access to users’ cryptocurrency accounts); see also, Twitter v. Domain Admin, FA 1607451 (Forum April 2, 2015) (“Respondent’s use of the domain name disrupted Complainant’s business and misappropriated the trademark value of Complainant’s mark to wrangle visitors to its website thereby demonstrating Respondent’s bad faith registration and use of the name pursuant to Policy ¶ 4(b)(iii).”).
Furthermore, Respondent had actual knowledge of Complainant’s rights in the FINISH LINE mark when it registered <finishlineshoes.net> as a domain name. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark and from Respondent’s mimicry of Complainant’s official website on the website addressed by <finishlineshoes.net>. Registering and using a confusingly similar domain name with knowledge of Complainant’s rights in such domain name further shows Respondent’s bad faith registration and use of <finishlineshoes.net> 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); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION 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 <finishlineshoes.net> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: December 29, 2021
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