Woot LLC v. 猩 猩
Claim Number: FA2208002007177
Complainant is Woot LLC (“Complainant”), represented by David J. Diamond of Richard Law Group, Inc., Texas, USA. Respondent is 猩 猩 (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <woot11.com>, <woot12.com>, <woot13.com>, <woot15.com>, <woot16.com>, <woot18.com>, <woot19.com>, <woot26.com>, <woot33.com>, <woot55.com>, <woot58.com>, <woot63.com>, <woot66.com>, <woot77.com>, <woot87.com>, <woot88.com> and <woot99.com> registered with GoDaddy.com, 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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 4, 2022; the Forum received payment on August 4, 2022.
On August 5, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <woot11.com>, <woot12.com>, <woot13.com>, <woot15.com>, <woot16.com>, <woot18.com>, <woot19.com>, <woot26.com>, <woot33.com>, <woot55.com>, <woot58.com>, <woot63.com>, <woot66.com>, <woot77.com>, <woot87.com>, <woot88.com> and <woot99.com> domain names were registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 August 10, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 30, 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@woot11.com, postmaster@woot12.com, postmaster@woot13.com, postmaster@woot15.com, postmaster@woot16.com, postmaster@woot18.com, postmaster@woot19.com, postmaster@woot26.com, postmaster@woot33.com, postmaster@woot55.com, postmaster@woot58.com, postmaster@woot63.com, postmaster@woot66.com, postmaster@woot77.com, postmaster@woot87.com, postmaster@woot88.com, and postmaster@woot99.com. Also on August 10, 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 September 2, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho-Hyun Nahm, Esq. 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
i) Complainant, Woot LLC, offers online retail services. Complainant has rights in the WOOT mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., 3,012,788, registered November 8, 2005). The disputed domain names are confusingly similar to Complainant’s mark because the disputed domain names incorporate the mark in their entireties and add generic numbers and the “.com” generic top-level domain (“gTLD”).
ii) Respondent does not have rights or legitimate interests in the disputed domains because Respondent is not commonly known by the disputed domain names and is not authorized to use Complainant’s WOOT mark. Additionally, Respondent fails to use the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the disputed domains to pass off as affiliated with Complainant in furtherance of a phishing scheme. Lastly, Respondent also uses the disputed domain names to advertise competing third-party services.
iii) Respondent registered and uses the disputed domain names in bad faith because Respondent has a pattern of bad faith registration and use. In addition, Respondent uses the disputed domain names to create bad faith attraction for commercial gain and to disrupt Complainant’s business. Finally, Respondent had actual knowledge of Complainant’s rights in the WOOT mark prior to registering the disputed domain names and used a privacy service to register the domains.
B. Respondent
Respondent did not submit a response in this proceeding.
1. All disputed domains were registered between May 29, 2022 and July 2, 2022. 11 of the disputed domain names were registered on May 29, 2022.
2. Complainant has established rights in the WOOT mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., 3,012,788, registered November 8, 2005).
3. The disputed domains’ resolving webpages are all identical. The webpages display Complainant’s mark and logo and identify Amazon—Complainant’s parent company—as well as other unrelated third-party sites, as a “partner.”
4. Respondent requested by providing a document signed by Amazon’s former CEO that the consumer send payment and stated that Respondent would later be compensated.
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 asserts rights in the WOOT mark based on registration with the USPTO. Registration with the USPTO is generally sufficient to establish rights in a mark per Policy ¶ 4(a)(i). Complainant provides evidence of its registration with the USPTO for the WOOT mark (e.g., 3,012,788, registered November 8, 2005). Therefore, the Panel finds that Complainant has established rights in the WOOT mark under Policy ¶ 4(a)(i).
Complainant argues that the disputed domain names are confusingly similar to Complainant’s mark because the disputed domain names incorporate the entire mark and add generic numbers and the “.com” gTLD. Domain names which incorporate the entire mark are usually considered confusingly similar to the mark, while adding a gTLD generally creates no distinction between a complainant’s mark and a disputed domain name under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Further, adding generic numbers does not create a sufficient distinction between the domain name and the mark. See Pandora Media, Inc. v. MASATAMI KITA, FA 1622614 (Forum July 20, 2015) (holding the <pandora1.com> domain name confusingly similar to the PANDORA trademark because the only difference between the two was the addition of the numeral “1”). The Panel notes that the disputed domain names incorporate Complainant’s WOOT mark in their entireties and add numbers 11, 12, 13, 15, 16, 18, 19, 26, 33, 55, 58, 63, 66, 77, 87, 88 and 99 respectively. Therefore, the Panel finds that each of the disputed domain names is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
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”).
Complainant claims that Respondent does not have rights or legitimate interests in the disputed domain names because Respondent is not commonly known by the names and is not associated with Complainant or authorized to use Complainant’s WOOT mark. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the guardair.com domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may demonstrate the respondent is not commonly known by the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Here, there is no evidence available in the WHOIS information to suggest that Respondent is known by the disputed domain names and no information suggests Complainant authorized Respondent to use the WOOT mark. Rather, the Registrar lists the registrant of the domain names as “猩 猩.” Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent does not use the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), past panels have found no bona fide offering of goods or services, nor any legitimate noncommercial or fair use where the respondent uses the domain name to pass itself off as affiliated with the complainant in furtherance of a phishing scheme. See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”). Complainant has provided screenshots of the disputed domains’ resolving webpages, which are all identical. The webpages display Complainant’s mark and logo and identify Amazon—Complainant’s parent company—as well as other unrelated third-party sites, as a “partner.” In addition, Complainant has provided screenshots of communications between a consumer and Respondent, where Respondent provided a document signed by Amazon’s former CEO. Respondent requested that the consumer send payment and stated that Respondent would later be compensated. Complainant contends that this is evidence that Respondent seeks to pass itself off as affiliated with Respondent in order to phish for consumers’ financial information or for other fraudulent purposes. Therefore, the Panel finds that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii).
Finally, Complainant argues that Respondent does not use the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the domain names to promote competing services. Use of a domain name which is confusingly similar to a complainant’s mark in order to promote the services of another is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Forum May 11, 2007) (Panelist Tyrus R. Atkinson, Jr., dissenting) (finding that the respondent’s use of a confusingly similar domain name to advertise real estate services which competed with the complainant’s business did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). The disputed domain names’ resolving webpages display third-party brands, such as Etsy, which offers similar, competing retail services as those offered by Complainant. Therefore, the Panel finds that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. 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 has no rights or legitimate interests in the disputed domain names.
Complainant argues that Respondent has registered and uses the disputed domains in bad faith because it has a history of bad faith registrations and uses. A respondent’s registration and use of multiple domain names incorporating the complainant’s mark is evidence of a pattern of bad faith under Policy ¶ 4(b)(ii). See United States Postal Service v. Yongkun Wang, FA 1788170 (Forum July 11, 2018) (“Complainant contends that Respondent is a serial cybersquatter as evidenced by its registering four separate domain names all incorporating Complainant’s USPS mark. Therefore, the Panel finds that the Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(ii).”). Complainant argues that Respondent has a pattern of bad faith registration and use given Respondent’s registration and use of the 17 domain names in the present case which all incorporate Complainant’s WOOT mark. The Panel agrees and finds Respondent’s bad faith registration and use per policy ¶ 4(b)(ii).
Second, Complainant argues that Respondent has registered and uses the disputed domains in bad faith because it registered the domains to create bad faith attraction for commercial gain. Registration and use of a disputed domain name to pass off as affiliated with the complainant in furtherance of a phishing scheme is evidence of bad faith per Policy ¶ 4(b)(iv). See 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). As referenced above, Complainant argues that Respondent attempts to pass itself off as affiliated with Complainant in furtherance of a phishing scheme. Therefore, the Panel finds that Respondent registered and uses the disputed domains in bad faith.
Third, Complainant asserts that Respondent has registered and uses the disputed domains in bad faith because it registered the disputed domain names to disrupt Complainant’s business, offering competing third-party links. Registration and use of a disputed domain name which is confusingly similar to a complainant’s domain name and mark, and using that domain name to promote competing third party services, is evidence of bad faith per Policy ¶ 4(b)(iii). See State Farm Mutual Automobile Insurance Company v. Niang, huai, FA1412001594788 (Forum Jan. 16, 2015) (“The at-issue domain name’s website includes advertisements for third parties, some which may sell insurance and banking services similar to those offered by Complainant. Using the at-issue domain name to display competing advertisements disrupts Complainant’s business and demonstrates Respondent’s bad faith registration and use under Policy ¶ 4(b)(iii)). The Panel notes that the disputed domain names’ resolving webpages advertise third party companies which offer services that compete with Complainant. Because the disputed domain names are confusingly similar to Complainant’s WOOT mark, unsuspecting consumers may reach the disputed domain names when they are in fact attempting to reach Complainant’s webpage, thereby disrupting Complainant’s business. Therefore, the Panel finds that Respondent registered and uses the disputed domain names in bad faith.
Finally, Complainant contends that Respondent registered the disputed domain names in bad faith because Respondent had actual knowledge of Complainant’s rights in the WOOT mark prior to registering the disputed domain names. The Panel infers, due to the notoriety of Complainant’s mark and the manner of use of the disputed domain names that Respondent had actual knowledge of Complainant’s rights in the mark at the time of registering the disputed domain names, which supports a finding of bad faith registration per Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <woot11.com>, <woot12.com>, <woot13.com>, <woot15.com>, <woot16.com>, <woot18.com>, <woot19.com>, <woot26.com>, <woot33.com>, <woot55.com>, <woot58.com>, <woot63.com>, <woot66.com>, <woot77.com>, <woot87.com>, <woot88.com> and <woot99.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: September 6, 2022
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page