Etsy, Inc. v. chengxiaoxiao / cheng xiaoxiao / Xin A / dawei dawei / Repossessed by Go Daddy
Claim Number: FA2205001998208
Complainant is Etsy, Inc. (“Complainant”), represented by David A.W. Wong of Barnes & Thornburg LLP, Indiana. Respondent is chengxiaoxiao / cheng xiaoxiao / Xin A / dawei dawei / Repossessed by Go Daddy (“Respondent”), HK.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <etsy111.com>, <etsy22.com>, <etsy33.com>, <etsyapp8.com>, <etsy78.com>, <etsy93.com>, <etsy96.com>, <etsy83.com>, <etsy222.com>, <etsy333.com>, <etsy444.com>, <etsy000.com>, <etsy55.com>, <etsy555.com>, <etsy666.com>, <etsy777.com>, <etsy66.com>, <etsy888.com>, <etsy966.com>, and <etsy999.com>, registered with GoDaddy.com, LLC and NameSilo, LLC.
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 May 26, 2022; the Forum received payment on May 26, 2022.
On May 26, 2022, May 31, 2022, and June 03, 2022, GoDaddy.com, LLC and NameSilo, LLC confirmed by e-mail to the Forum that the <etsy111.com>, <etsy22.com>, <etsy33.com>, <etsyapp8.com>, <etsy78.com>, <etsy93.com>, <etsy96.com>, <etsy83.com>, <etsy222.com>, <etsy333.com>, <etsy444.com>, <etsy000.com>, <etsy55.com>, <etsy555.com>, <etsy666.com>, <etsy777.com>, <etsy66.com>, <etsy888.com>, <etsy966.com>, and <etsy999.com> domain names are registered with GoDaddy.com, LLC and NameSilo, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC and NameSilo, LLC has verified that Respondent is bound by the GoDaddy.com, LLC and NameSilo, LLC 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 6, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 27, 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@etsy111.com, postmaster@etsy22.com, postmaster@etsy33.com, postmaster@etsyapp8.com, postmaster@etsy78.com, postmaster@etsy93.com, postmaster@etsy96.com, postmaster@etsy83.com, postmaster@etsy222.com, postmaster@etsy333.com, postmaster@etsy444.com, postmaster@etsy000.com, postmaster@etsy55.com, postmaster@etsy555.com, postmaster@etsy666.com, postmaster@etsy777.com, postmaster@etsy66.com, postmaster@etsy888.com, postmaster@etsy966.com, postmaster@etsy999.com. Also on June 6, 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 July 6, 2022, 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 names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
Complainant alleges that notwithstanding differences in the domain registration records for the at-issue domain names the at issue domain names are nevertheless effectively controlled by the same person and/or entity. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
The domain names in the present dispute are similarly constructed as each domain name starts with Complainant’s trademark followed by a number or in one case by “app” and a number. The domain names’ creation dates and upload dates, registrars, website content and hosts, name servers, and privacy shields used for each of the domain names are the same. While it is possible that the domain names’ underlying registrants may or may not differ in the relevant WHOIS data, the at-issue domain names clearly appear to be related to, or controlled by, the same person, persons, or entity. Furthermore, Complainant’s request that the domain names’ registrants be treated as a single entity is unopposed. Therefore, the Panel will treat the domain names’ registrants as a single entity for the purposes of this proceeding. The named registrants will collectively be referred to as Respondent.
A. Complainant
Complainant contends as follows:
Complainant, Etsy, Inc., provides an online marketplace for the buying and selling of arts, crafts, handmade, and vintage goods.
Complainant has rights in the ETSY mark through its registration with multiple trademark offices (e.g. United States Patent and Trademark Office (“USPTO”); World Intellectual Property Organization (“WIPO”)).
Respondent’s <etsy111.com>, <etsy22.com>, <etsy33.com>, <etsyapp8.com>, <etsy78.com>, <etsy93.com>, <etsy96.com>, <etsy83.com>, <etsy222.com>, <etsy333.com>, <etsy444.com>, <etsy000.com>, <etsy55.com>, <etsy555.com>, <etsy666.com>, <etsy777.com>, <etsy66.com>, <etsy888.com>, <etsy966.com>, and <etsy999.com> domain names are identical or confusingly similar to Complainant’s mark as they incorporate the mark in its entirety and add various numbers, a generic term, and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the at-issue domain names. Respondent is not commonly known by the domain names, nor has Complainant authorized or licensed Respondent to use its ETSY mark in the at-issue domain names. Respondent does not use the at-issue domain names for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use, but instead impersonates or passes off as Complainant while phishing for Internet users’ personal and financial information.
Respondent registered and uses the at-issue domain name in bad faith. Respondent impersonates and passes itself off as Complainant while attracting internet users to the at-issue domain names for its own commercial gain. Additionally, Respondent uses the domain names to engage in phishing.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in the ETSY mark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the ETSY trademark.
Respondent uses the at-issue domain name to pass itself off as Complainant and defraud third-parties.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant shows that it has a USPTO registration along with multiple other national trademark registrations for its ETSY trademark. Any of such registrations is sufficient to demonstrate Complainant’s rights in the ETSY mark under Policy ¶ 4(a)(i). See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (“Complainant has rights in the GMAIL mark based upon its registration of the mark with numerous trademark agencies around the world.”); see also Bloomberg Finance L.P. v. Jimmy Yau, FA 1764034 (Forum Jan. 25, 2018) (“The Panel finds that complainant has rights in BLOOMBERG mark under Policy ¶ 4(a)(i) based upon its registration with multiple trademark agencies, including the USPTO.”).
Respondent’s <etsy111.com>, <etsy22.com>, <etsy33.com>, <etsyapp8.com>, <etsy78.com>, <etsy93.com>, <etsy96.com>, <etsy83.com>, <etsy222.com>, <etsy333.com>, <etsy444.com>, <etsy000.com>, <etsy55.com>, <etsy555.com>, <etsy666.com>, <etsy777.com>, <etsy66.com>, <etsy888.com>, <etsy966.com>, and <etsy999.com> domain names each consist of Complainant’s entire ETSY trademark followed by a number, and in one domain name the term “app” and a number, with all followed by the “.net” top-level domain name. The differences between any of Respondent’s domain names and Complainant’s trademark fail to distinguish any domain name from Complainant’s trademark for the purposes of the Policy. Therefore, the Panel concludes that Respondent’s <etsy111.com>, <etsy22.com>, <etsy33.com>, <etsyapp8.com>, <etsy78.com>, <etsy93.com>, <etsy96.com>, <etsy83.com>, <etsy222.com>, <etsy333.com>, <etsy444.com>, <etsy000.com>, <etsy55.com>, <etsy555.com>, <etsy666.com>, <etsy777.com>, <etsy66.com>, <etsy888.com>, <etsy966.com>, and <etsy999.com> domain names are each confusingly similar to ETSY pursuant to Policy ¶ 4(a)(i). See Twentieth Century Fox Film Corporation v Domain Admin / PrivacyProtect.org / Denis Ferulev, FA 1652313 (Forum Jan. 19, 2016) (“Complainant notes that the domain name contains the recognised acronym for its FAMILY GUY mark, along with the number ‘24’ … the Panel finds that the <fg24.biz> domain name is confusingly similar to the FAMILY GUY mark under Policy ¶ 4(a)(i).”); see also, MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”); 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.”).
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). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of each 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 any at‑issue domain name.
The WHOIS information for the at-issue domain names identifies their individual registrants as “Xin A / da wei da wei / chengxiaoxiao / Repossessed by Go Daddy” and the record before the Panel contains no evidence that otherwise tends to show that Respondent is commonly known by any of the at-issue domain names. The Panel therefore concludes that Respondent is not commonly known by any of the at-issue domain names nor by ETSY for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Furthermore, Respondent’s at-issue domain names address websites designed to falsely appear as if authorized by, or otherwise endorsed by, Complainant as the websites mimics the look and feel of Complainant’s official website. There, Respondent purports to sell goods under Complainant’s ETSY trademark. Respondent’s use of the domain name in this manner constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a non-commercial or fair use under Policy ¶ 4(c)(iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business).
Given the foregoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of each at-issue domain name pursuant to Policy ¶ 4(a)(ii).
Respondent’s <etsy111.com>, <etsy22.com>, <etsy33.com>, <etsyapp8.com>, <etsy78.com>, <etsy93.com>, <etsy96.com>, <etsy83.com>, <etsy222.com>, <etsy333.com>, <etsy444.com>, <etsy000.com>, <etsy55.com>, <etsy555.com>, <etsy666.com>, <etsy777.com>, <etsy66.com>, <etsy888.com>, <etsy966.com>, and <etsy999.com> domain names were each registered and used in bad faith. As discussed below without limitation, circumstances are present which compel the Panel to conclude that Respondent acted in bad faith regarding each at-issue domain name, pursuant to paragraph 4(a)(iii) of the Policy.
By misappropriating Complainant’s trademark and other intellectual property to use in its domain names and associated websites as well as by communicating with its third-party marks directly, Respondent attempts to pass itself off as Complainant and thereby trick unwitting consumers into purchasing products offered on Respondent’s websites. Respondent’s use of the at-issue domain names to deceive internet users in this manner shows Respondent’s bad faith registration and use of the at-issue domain names pursuant to Policy ¶ 4(b)(iv). See American Cheerleader Media, LLC. v. ilir shoshi / cheer, FA 1592319 (Forum, January 20, 2015) (“The Panel here finds that Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) as … Respondent utilizes a logo and stylized font identical to Complainant’s own, as well as Complainant’s copyrighted images and text in an attempt to pass itself off as Complainant.”); see also, Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <etsy111.com>, <etsy22.com>, <etsy33.com>, <etsyapp8.com>, <etsy78.com>, <etsy93.com>, <etsy96.com>, <etsy83.com>, <etsy222.com>, <etsy333.com>, <etsy444.com>, <etsy000.com>, <etsy55.com>, <etsy555.com>, <etsy666.com>, <etsy777.com>, <etsy66.com>, <etsy888.com>, <etsy966.com>, and <etsy999.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: July 6, 2022
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