AfterShokz, LLC v. Client Care / Web Commerce Communications Limited
Claim Number: FA2111001974586
Complainant is AfterShokz, LLC (“Complainant”), represented by William C. Rava, Washington, USA. Respondent is Client Care / Web Commerce Communications Limited (“Respondent”), Malaysia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <aftershokzus.com> and <praftershokzus.com>, registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 23, 2021; the Forum received payment on November 23, 2021.
On November 26, 2021, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED confirmed by e-mail to the Forum that the <aftershokzus.com> and <praftershokzus.com> domain names are registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED and that Respondent is the current registrant of the names. ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED has verified that Respondent is bound by the ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE 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 November 30, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 20, 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@aftershokzus.com, postmaster@praftershokzus.com. Also on November 30, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On December 26, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant offers various electronics, specifically headphones. Complainant has rights in the AFTERSHOKZ marks through its registrations with the United States Patent and Trademark Office (“USPTO”) (Reg. 4,201,926, registered Sep. 4, 2012; Reg. 5,834,913, registered Aug. 13, 2019). See Compl. Ex. C. Respondent’s <aftershokzus.com> and <praftershokzus.com> domain names are identical or confusingly similar to Complainant’s mark as the incorporate the mark in its entirety and add random letters, along with the “us” geographic term and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <aftershokzus.com> and <praftershokzus.com> domain names. Respondent is not commonly known by the disputed domain names, nor has Complainant authorized or licensed Respondent to use its AFTERSHOKZ mark in the disputed domain names. Respondent does not use the disputed domain names for any bona fide offerings of goods or services, nor any legitimate noncommercial or fair uses, but instead passes off as Complainant or offers unrelated uses, in order to phish for user information.
Respondent registered and uses the <aftershokzus.com> and <praftershokzus.com> domain names in bad faith. Respondent disrupts Complainant’s business for commercial gain by passing itself off as Complainant or offering unrelated goods or services in order to phish for user information.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that offers various electronics, specifically headphones, in its business.
2. Complainant has established its trademark rights in the AFTERSHOKZ marks through its registrations with the United States Patent and Trademark Office (“USPTO”) (Reg. 4,201,926, registered Sep. 4, 2012; Reg. 5,834,913, registered Aug. 13, 2019).
3. Respondent registered the <aftershokzus.com> and <praftershokzus.com> domain names on August 13 and October 21, 2021.
4.Respondent does not use the disputed domain names for any bona fide offerings of goods or services, nor any legitimate noncommercial or fair uses, but instead passes itself off as Complainant or offers unrelated uses, in order to phish for user information.
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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the AFTERSHOKZ marks through its registrations with the USPTO (Reg. 4,201,926, registered Sep. 4, 2012; Reg. 5,834,913, registered Aug. 13, 2019). See Compl. Ex. C. Registration with the USPTO is generally sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i). See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). Therefore, as the Panel agrees, it finds Complainant has rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s AFTERSHOKZ marks. Complainant argues that Respondent’s <aftershokzus.com> and <praftershokzus.com> are identical or confusingly similar to Complainant’s AFTERSHOKZ mark. Under Policy ¶ 4(a)(i), adding letters and geographic terms such as “us”, along with the “.com” gTLD is generally considered insufficient in differentiating a disputed domain name from the mark it incorporates under Policy ¶ 4(a)(i). See Bittrex, Inc. v. Sergey Valerievich Kireev / Kireev, FA 1784651 (Forum June 5, 2018) (holding that the domain name consists of the BITTREX mark and adds “the letters ‘btc’ and the gTLD .com which do not distinguish the Domain Name from Complainant’s mark.”); see also Avaya Inc. v. Evelyn Dayda / Avaya Unlimited Sources LLC, FA 1611255 (Forum May 4, 2015) (finding that as “the ‘usa’ portion of the disputed domain name is a generic geographic term, the internet user will assume that the domain name deals with the activities of Complainant in the USA and that it will lead to a website dealing with that subject. The domain name is therefore confusingly similar to the AVAYA mark and the Panel so finds.”). The disputed domain names incorporate Complainant’s AFTERSHOKZ marks and add the geographic term “us” along with the “.com” gTLD. One of the domain names also adds the letters “pr”. Therefore, as the Panel agrees, it finds Respondent’s domain names are identical or confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
(a) Respondent has chosen to take Complainant’s trademark and to use it in its domain names, incorporating Complainant’s AFTERSHOKZ marks and adding the geographic term “us”, while one of the domain names also adds the letters “pr”, none of which negates the confusing similarity between the domain names and the trademark;
(b) Respondent registered the <aftershokzus.com> and <praftershokzus.com> domain names on August 13 and October 21, 2021;
(c) Respondent does not use the disputed domain names for any bona fide offerings of goods or services, nor any legitimate noncommercial or fair uses, but instead passes itself off as Complainant or offers unrelated uses, in order to phish for user information.
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent is not commonly known by the <aftershokzus.com> and <praftershokzus.com> domain names. Under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by the disputed domain name, while a lack of evidence demonstrating otherwise may affirm a Complainant’s assertion that it never authorized or licensed Respondent to use its mark in a disputed domain name. See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1502001605239 (Forum Mar. 22, 2015) (“WHOIS information for the at-issue domain name lists ‘Domain Admin / Whois Privacy Corp.’ as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <google-status.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii).”). The WHOIS of record identifies Respondent as “Web Commerce Communications Limited”, and nothing in the record rebuts Complainant’s submission that it never authorized or licensed Respondent to use its AFTERSHOKZ mark in the disputed domain names. See Registrar Verification Email. Therefore, as the Panel agrees, it finds Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent does not use the <aftershokzus.com> and <praftershokzus.com> domain names for any bona fide offerings of goods or services, nor any legitimate noncommercial or fair uses. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to pass off as a Complainant and/or unrelated products or services are not considered bona fide offerings of goods or services, nor legitimate noncommercial or fair uses. See ShipChain, Inc. v. 谢东东 / 谢东东, FA 1785189 (Forum June 21, 2018) (“The resolving webpages between Complainant’s and Respondent’s websites are virtually the same. Respondent’s use of the disputed domain name does not confer rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii).”); see also Haru Holding Corporation v. AI Matusita, FA 1679867 (Forum Aug. 11, 2016) (holding that “unrelated use [of a disputed domain name] by a respondent consists of neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use”). Complainant provides screenshots of the disputed domain names’ resolving websites, which appear to show Complainant’s website copied exactly or similarly, as well as a website selling goods unrelated to Complainant’s goods. See Compl. Exs. D – G. Therefore, as the Panel agrees, it finds Respondent does not use the disputed domain names for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii);
(g) Complainant argues that Respondent lacks rights and legitimate interests in the <aftershokzus.com> and <praftershokzus.com> domain names as it uses them for phishing. Under Policy ¶ 4(a)(iii), using a disputed domain name for phishing is generally not considered evidence of a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Complainant argues that the use of the website to offer goods for online order, especially under the guise of Complainant by passing off, demonstrates that Respondent uses the disputed domain names to phish for information when users input payment details on the site. See Compl. Exs. E – G. Complainant also provides customer complaints from users who have ordered products through the disputed domain names. See Compl. Ex. H. Therefore, as the Panel agrees, it finds Respondent does not use the disputed domain names for any bona fide offerings of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <aftershokzus.com> and <praftershokzus.com> domain names in bad faith. Under Policy ¶¶ 4(b)(iii) and (iv), using a disputed domain name to pass off as a Complainant and phish for user information, and/or offer unrelated products or services on a domain name’s resolving website is generally considered evidence of bad faith disruption for commercial gain. See PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)); see additionally Amazon Technologies, Inc. v. jaskima smith, FA 1750160 (Forum Oct. 26, 2017) (finding the respondent registered and used the disputed domain name in bad faith to pass off as the complainant in an attempt to gain personal information from users who mistakenly access the website). The Panel recalls Complainant’s screenshots of the disputed domain names’ resolving websites, which feature similar resolving pages as Complainant’s own website, and/or a website displaying products unrelated to Complainant’s business, to be used in what Complainant claims is a phishing scheme. See Compl. Exs. D – H. Therefore, as the Panel agrees, it finds Respondent registered and uses the disputed domain names in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aftershokzus.com> and <praftershokzus.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: December 27, 2021
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