Urban Sophistication Ltd. v. Luke Donnelly / Puffer Case Store
Claim Number: FA2204001994161
Complainant is Urban Sophistication Ltd. (“Complainant”), represented by Mari-Elise Paul of Stites & Harbison, PLLC, Virginia, USA. Respondent is Luke Donnelly / Puffer Case Store (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <puffercasestore.shop>, registered with Tucows Domains Inc..
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 Honorable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 27, 2022; the Forum received payment on April 27, 2022.
On April 28, 2022, Tucows Domains Inc. confirmed by e-mail to the Forum that the <puffercasestore.shop> 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 May 2, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 23, 2022 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@puffercasestore.shop. Also on May 2, 2022, 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 May 31, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honorable 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant makes and sells a popular brand of iPhone cases. Complainant has common law rights in the THE PUFFER CASE mark. Respondent’s <puffercasestore.shop> domain name is identical or confusingly similar to Complainant’s mark as it incorporates a large portion of the mark, removing only the word “the” while adding the word “store” and the “.shop ” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <puffercasestore.shop> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use it’s the PUFFER CASE in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead passes off as Complainant and offers similar, competing products on the disputed domain name’s resolving website.
Respondent registered and uses the <puffercasestore.shop> domain name in bad faith. Respondent disrupts Complainant’s business for commercial gain by passing off as Complainant and offering competing products on the disputed domain name’s resolving website. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the THE PUFFER CASE mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is an Israeli company that makes and sells a popular brand of iPhone case.
2. Complainant has established its common law rights in the THE PUFFER CASE mark and that it has had those rights since June 2019.
3. Respondent registered the <puffercasestore.shop> domain name on February. 8, 2021.
4. Respondent passes itself off as Complainant and offers similar, competing products for sale on the disputed domain name’s resolving website.
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 claims common law rights in the THE PUFFER CASE mark. Under Policy ¶ 4(a)(i), common law rights in a mark may suffice in lieu of a registered trademark, and may be demonstrated through secondary meaning, or evidence of a variety of factors, including longstanding use of a mark, widespread media and public recognition of a mark, and evidence of significant investments in marketing/advertising a mark. See Marquette Golf Club v. Al Perkins, 1738263 (Forum July 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”). Complainant provides a variety of evidence that it submits demonstrates it rights in the mark dating back to 2019, including a sampling of news and magazine articles that reference its products (see Compl. p. 4), use of its product branded with the THE PUFFER CASE mark as seen in celebrity and influencer social media posts (Compl. pp. 5 – 6), USPTO applications for the THE PUFFER CASE mark that have a first use listed in June 2019 (see Compl. Ex. C), and a copy of its own website where it sells the mark branded product (see Compl. Ex. B). Therefore, as the Panel agrees, it finds Complainant has common law rights in the mark under Policy ¶ 4(a)(i) and that it has had those rights since June 2019.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s THE PUFFER CASE mark. Complainant argues that Respondent’s <puffercasestore.shop> domain name is identical or confusingly similar to Complainant’s THE PUFFER CASE mark. Under Policy ¶ 4(a)(i), incorporating most of a mark, except the word “the”, and adding a generic word and a gTLD is generally insufficient in differentiating a disputed domain name from the mark it incorporates. See The Pros Closet, Inc. v. Above.com Domain Privacy, FA 1616518 (Forum June 3, 2015) (finding confusing similarity where the <proscloset.com> domain name merely omitted the first term (“the”) from Complainant’s THE PROS CLOSET mark, eliminated spacing between words, and added the “.com” gTLD.); see also Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end). The disputed domain name incorporates the THE PUFFER CASE mark, deletes the word “the” from the beginning of the mark, and adds the “shop” gTLD. Therefore, as the Panel agrees, it finds Respondent’s domain name is confusingly similar to the 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 name 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 THE PUFFER CASE mark and to use it in its domain name omitting the definite article “the” and adding a generic word to the mark;
(b) Respondent registered the <puffercasestore.shop> domain name on February 8, 2021;
(c) Respondent passes itself off as Complainant and offers similar, competing products for sale on the disputed domain name’s resolving website;
(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 <puffercasestore.shop> domain name, nor has Complainant authorized or licensed Respondent to use its THE PUFFER CASE mark in the disputed domain name. Under Policy ¶ 4(c)(ii), relevant WHOIS INFORMATION may demonstrate that a Respondent is not commonly known by a disputed domain name. Furthermore, even where WHOIS Information appears to identify Respondent as a name identical or confusingly similar to the domain name, past panels have failed to find this as sufficient to demonstrate that Respondent is commonly known by the domain name in the absence of further affirmative evidence by Respondent. See Am. W. Airlines, Inc. v. Paik, FA 206396 (Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also Staples, Inc. and Staples the Opffice Superstors, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, this Panel finds that, although the registrant organization on the WHOIS record is listed as ‘DTAPLES.COM,’ the evidence on record is sufficient to find that Respondent is not commonly known by the <dtaples.com> domain name.”). The WHOIS of record identifies Respondent as “Luke Donnelly” of “The Puffer Case Store”, but Respondent provides no affirmative evidence of its identity. See Registrar Verification Email. Therefore, as the Panel agrees, it finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent does not use the <puffercasestore.shop> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to pass off as Complainant and offer Complainant’s products without authorization or counterfeits in competition with Complainant is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015) (finding no bona fide offering of goods or legitimate noncommercial or fair use existed where Respondent used the resolving website to sell products branded with Complainant’s MERRELL mark, and were either counterfeit products or legitimate products of Complainant being resold without authorization). Complainant provides screenshots of the disputed domain name’s resolving website, which features what are purported to be Complainant’s products with Complainant’s mark branded on them, as well as pictures from Complainant’s website. Those products are offered for sale. See Compl. Ex. D. 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).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
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 name was registered in bad faith and has 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 name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <puffercasestore.shop> domain name in bad faith. Under Policy ¶¶ 4(b)(iii) and (iv), using a disputed domain name to pass off as a Complainant and offer competing products for sale is evidence of bad faith disruption for commercial gain. See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business). The Panel notes Complainant’s screenshots of the disputed domain name’s resolving website, which features what are presented as Complainant’s products with Complainant’s mark branded on them. Those products are for sale. See Compl. Ex. D. Therefore, as the Panel agrees, it finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Secondly, Complainant argues that Respondent registered the <puffercasestore.shop> domain name with actual knowledge of Complainant’s rights in the THE PUFFER CASE mark. Under Policy ¶ 4(a)(iii), actual knowledge is generally sufficient in demonstrating bad faith, and may be established through Respondent’s incorporation of a mark into a disputed domain name, as well as its use of the domain name. See eBay, Inc v. Progressive Life Awareness Network, D2001-0068 (WIPO Mar. 16, 2001) (finding bad faith pursuant to Policy ¶ 4(b)(iv) where the respondent capitalized on the fame associated with the complainant’s EBAY mark and profited from it by diverting users seeking the complainant to the respondent’s website). The Panel notes Complainant’s screenshots of the disputed domain name’s resolving website, which features Complainant’s products or products branded as Complainant’s products that are for sale. Not only are the products for sale, but Respondent uses the entire trademark of Complainant and offers various payment options, all of which make this a particularly brazen example of bad faith. See Compl. Ex. D. Therefore, as the Panel agrees, it finds Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the THE PUFFER CASE mark under Policy ¶ 4(a)(iii), showing bad faith registration.
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the THE PUFFER CASE mark and in view of the conduct that Respondent has engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
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 <puffercasestore.shop> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown QC
Panelist
Dated: June 1, 2022
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