Fox Factory, Inc. v. Hhfed Ybdw
Claim Number: FA2208002007796
Complainant is Fox Factory, Inc. (“Complainant”), represented by W. Bruce Patterson of Patterson + Sheridan, LLP, Texas, USA. Respondent is Hhfed Ybdw (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <racefacesale.com>, registered with Name.com, Inc.
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge has no known conflict in serving as Panelist in this proceeding.
Jonathan Agmon (Presiding Panelist), Paul M. DeCicco and Paddy Tam as Panelists.
Complainant submitted a Complaint to the Forum electronically on August 9, 2022; the Forum received payment on August 9, 2022.
On August 11, 2022, Name.com, Inc. confirmed by e-mail to the Forum that the <racefacesale.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, 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 August 16, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 6, 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@racefacesale.com. Also on August 16, 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 15, 2022, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Jonathan Agmon (Presiding Panelist), Paul M. DeCicco and Paddy Tam as Panelists.
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 argues that the disputed domain name is confusingly similar to Complainant’s registered RACEFACE mark as the disputed domain name comprises Complainant’s mark and the addition of the generic word “sale” and generic Top-Level Domain (“gTLD”) “.com”.
Complainant also argues that Respondent has no rights or legitimate interests in respect of the disputed domain name as it has not licensed or permitted Respondent to use any of its trademarks or register the disputed domain name. Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services and is not making a legitimate noncommercial or fair use of the disputed domain name.
Complainant further argues that the disputed domain name was registered and is being used in bad faith as Respondent is disrupting Complainant’s business and/or attracting Internet users so its website for illegitimate gain by creating and exploiting confusion between the disputed domain name and Complainant’s registered trademarks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Fox Factory, Inc., sells goods including bicycle components, clothing and protective gear under its registered trademarks. Complainant operates its own website at <raceface.com> and at other domain names to market and provide information about its goods.
Complainant is the registered owner of trademarks around the world, including the following in the United States:
- United States Trademark Registration No. 6,768,005 for “RACEFACE”, registered on June 21, 2022;
- United States Trademark Registration No. 6,579,839 for “RACEFACE”, registered on December 7, 2021;
- United States Trademark Registration No. 5,605,351 for “RACE FACE”, registered on November 13, 2018;
- United States Trademark Registration No. 6,396,587 for “[IMAGE OF MARK OMITTED]”, registered on June 22, 2021; and
- United States Trademark Registration No. 6,393,797 for “[IMAGE OF MARK OMITTED]”, registered on June 22, 2021.
The disputed domain name was registered on June 17, 2022 and resolved to an active webpage which appeared to impersonate Complainant and sell counterfeit goods under Complainant’s trademark.
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”).
Paragraph 4(a)(i) of the Policy requires the complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. Complainant has provided evidence that it owns the RACEFACE mark.
The disputed domain name comprises Complainant’s RACEFACE trademark in its entirety and the addition of the generic term “sale” which does not prevent a finding of confusing similarity.
The addition of a gTLD and a generic term fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)).
Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which Complainant has rights and the element under paragraph 4(a)(i) of the Policy is satisfied.
Paragraph 4(a)(ii) of the Policy requires the complainant to show that the respondent has no rights or interests in respect of the disputed domain name. Once the complainant establishes a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the respondent to show that it has rights or legitimate interests in respect to the disputed domain name (WIPO Overview 3.0, section 2.1).
In the present case, Complainant has demonstrated prima facie that Respondent lacks rights or legitimate interests in respect of the disputed domain name and Respondent has failed to assert any such rights or legitimate interests.
Complainant provided evidence that it owns trademark registrations of the RACEFACE mark before the date that the disputed domain name was registered, and that it is not affiliated with nor has it licensed or otherwise permitted the Respondent to use Complainant’s trademarks. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly know by the disputed domain name).
Complainant also provided evidence that Respondent is not commonly known by the disputed domain name. See WIPO Overview 3.0, section 2.3); See also Foot Locker Retail, Inc. v. Gibson, FA 139693 (Forum Feb. 4, 2003) (“Due to the fame of Complainant’s FOOT LOCKER family of marks . . . and the fact that Respondent’s WHOIS information reveals its name to be ‘Bruce Gibson,’ the Panel infers that Respondent was not ‘commonly known by’ any of the disputed domain names prior to their registration, and concludes that Policy ¶ 4(c)(ii) does not apply to Respondent.”)).
Complainant further submitted evidence that the disputed domain name resolved to a website which appeared to impersonate Complainant and sold counterfeit goods at a discount which past UDRP panels have found is not a bona fide offering of goods or services or legitimate noncommercial or fair use of the disputed domain name. See Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).”); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).
Respondent did not submit a Response in the present case and did not provide any explanation or evidence to show rights or legitimate interests in the disputed domain name sufficient to rebut Complainant’s prima facie case. In the particular circumstances of the present case, Respondent’s use of the disputed domain name to pass off as Complainant and sell counterfeit goods does not represent a bona fide offering of goods or services.
The Panel is therefore of the view that Respondent has no rights or legitimate interests in respect of the disputed domain name and accordingly, paragraph 4(a)(ii) of the Policy is satisfied.
The complainant must also show that the respondent registered and is using the disputed domain names in bad faith. See Policy, paragraph 4(a)(iii)).
Complainant has submitted evidence, which shows that Respondent registered the disputed domain name after Complainant registered its RACEFACE trademark. The disputed domain name incorporates Complainant’s RACEFACE trademark in its entirety with an additional term “sale”, which the Panel finds is an attempt by Respondent to confuse and/or mislead Internet users seeking or expecting Complainant. Previous UDRP panels have ruled that in such circumstances “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site”. See EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Forum July 7, 2000) (finding bad faith where Respondent’s sites pass users through to Respondent’s competing business)).
The disputed domain name which resolved to a website attempting to pass off as Complainant by featuring prominent use of the Complainant’s RACEFACE mark and images of Complainant’s products being sold at discounted prices, cannot but be considered to have been registered and used in bad faith. See Crocs, Inc. v. jing dian, Case No. FA1410001587214 (Forum Dec. 12, 2014) (finding bad faith where the respondent used the disputed domain name to display the complainant’s marks to sell unauthorized goods); see also Swarovski Aktiengesellschaft v. ailong c ailong xiong, Case No. FA1407001571172 (Forum Sept. 5, 2014) (finding bad faith where respondent used the disputed domain name in connection with a website purportedly offering unauthorized goods of Complainant and stating that the respondent’s bad faith was “apparent in that [r]espondent is profiting from the likelihood Internet users will mistakenly believe the goods sold through the domain name’s website are legitimate…”); see also H-D Michigan, LLC v. Ross, FA 1250712 (Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion and thus demonstrates bad faith per Policy ¶ 4(b)(iv)); see also Affliction, Inc. v. Chinasupply, FA 1223521 (Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain and thus demonstrating bad faith per Policy ¶ 4(b)(iv) by creating confusion as to the complainant’s connection with the website by selling counterfeit products). Finally, Respondent did not submit a Response in this proceeding, which is a further indication of Respondent’s bad faith, which was considered by the Panel.
Based on the evidence presented to the Panel, including the confusing similarity between the disputed domain name and Complainant’s mark, the fact that the disputed domain name is being used to pass off as Complainant to sell counterfeit goods under Complainant’s mark and the fact that no Response was submitted by Respondent to Complaint, and that any good faith use of the disputed domain name is implausible, the Panel draws the interference that the disputed domain name was registered and is being used in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <racefacesale.com> domain name be TRANSFERRED from Respondent to Complainant.
Jonathan Agmon (Presiding Panelist), Paul M. DeCicco and Paddy Tam as Panelists
Dated: September 26, 2022
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