The ERGO Baby Carrier, Inc. v. zhang gaofei / gaofei zhang
Claim Number: FA1203001435910
Complainant is The ERGO Baby Carrier, Inc. (“Complainant”), represented by Stevan H. Lieberman of Greenberg & Lieberman, LLC, Washington D.C., USA. Respondent is zhang gaofei / gaofei zhang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ergobabystore.com>, registered with BIZCN.com, 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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 22, 2012; the National Arbitration Forum received payment on March 22, 2012. The Complainant was submitted in both Chinese and English.
On March 25, 2012, BIZCN.com, INC confirmed by e-mail to the National Arbitration Forum that the <ergobabystore.com> domain name is registered with BIZCN.com, INC and that Respondent is the current registrant of the name. BIZCN.com, INC has verified that Respondent is bound by the BIZCN.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 March 27, 2012, the Forum served the Chinese languge Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of April 16, 2012 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@ergobabystore.com. Also on March 27, 2012, the Chinese language 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
OnApril 23, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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
1.Complainant has registered the THE ERGO BABY CARRIER mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,994,269 registered September 13, 2005);
2. Respondent’s <ergobabystore.com> domain name is confusingly similar to Respondent’s THE ERGO BABY CARRIER mark;
3. Respondent resolves the disputed domain name to a website offering a credit card portal purporting to sell Complainant’s goods;
4. Respondent has engaged in phishing by using the disputed domain name in such a manner;
5. Respondent is not commonly known by the disputed domain name;
6. Respondent has no rights or legitimate interests in the disputed domain name;
7. Complainant has never authorized Respondent to use its mark in any way;
8. Respondent has registered and is using the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company and is one of the largest manufacturer, wholesaler and retailer of baby wearing products and accessories found in the United States and around the world.
2. Complainant has registered the THE ERGO BABY CARRIER mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,994,269 registered September 13, 2005).
3. Respondent registered the disputed domain name on June 24, 2011. It resolves to a website offering a credit card portal purporting to sell Complainant’s goods and where Respondent engages in phishing.
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Preliminary Issue : language requirement
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
The first question that arises is whether Complainant has rights in a trademark or service mark. In that regard Complainant claims that it has established its rights in the THE ERGO BABY CARRIER mark by registering it with the USPTO (Reg. No. 2,994,269 registered September 13, 2005) and the Panel agrees with that submission. Complainant submits the trademark certificates issued by the USPTO for the mark, as well as other closely associated marks. The Panel determines that Complainant has established its rights in the THE ERGO BABY CARRIER mark under Policy ¶ 4(a) (i). See Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
The second issue is whether Respondent’s <ergobabystore.com> domain name is confusingly similar Complainant’s THE ERGO BABY CARRIER mark and Complainant submits that it is. Complainant states that the disputed domain name includes the entire distinctive portion of the mark, removing the terms “the” and “carrier,” while adding the generic top-level domain “.com” and the generic term “store.” The Panel notes that the spaces between the terms of the mark were also removed. The Panel concludes that Respondent’s disputed domain name is confusingly similar to Complainant’s THE ERGO BABY CARRIER mark under Policy ¶ 4(a) (i). In particular, it is now well established that the addition of a word, as in the present case, such as “store” cannot negate confusing similarity that is otherwise present, as a store is naturally associated with any business engaged in sales and internet users would interpret the disputed domain name to mean a store where Complainant carried on its business. Likewise, internet users would continue to believe that the disputed domain name related to Complainant despite the omission of the word CARRIER, as the dominant word in the trademark, ERGO, remains and is incorporated in the domain name. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element); see also WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to the complainant’s mark, where the complainant holds the WEST JET AIR CENTER mark). 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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a) (ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s THE ERGO BABY CARRIER trademark and to use it in its domain name by deleting the words “the” and “carrier” and adding the word “store”, creating the likelihood that internet users would assume that it related to a store operated by Complainant.
(b) Respondent has then made the domain name resolve to a website offering a credit card portal purporting to sell Complainant’s goods and by that means has engaged in phishing;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) In addition, Complainant has submitted that Respondent is not commonly known by the disputed domain name. The Panel notes that Respondent has not offered any evidence to show that it may be commonly known by the domain names. Complainant states that the WHOIS information identifies the registrant of the disputed domain name as “zhang gaofei / gaofei zhang.” Based upon the available evidence, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c) (ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute);
(e) Complainant also submits that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Complainant states that Respondent has made the disputed domain name resolve to a phishing website, where Internet users are asked to purchase goods from Respondent in return for entering in their credit card information. Complainant has included in Exhibit F what are apparently printouts from the website to which the disputed domain name resolves and, based on the evidence, the Panel determines on the balance of probabilities that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c) (i) and Policy ¶ 4(c) (iii), respectively. See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
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 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.
Complainant contends that Respondent is engaging in phishing, which clearly demonstrates bad faith registration and use. Complainant states that the disputed domain name resolves to a website ostensibly offering Complainant’s own products for sale in return for Internet users’ credit card information. Complainant claims that the purpose of this scheme is to steal Internet users’ personal and financial information, which constitutes phishing. The Panel finds that Respondent has engaged in phishing and thus concludes that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(a) (iii). See Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to acquire the personal and financial information of the complainant’s customers fraudulently).
Secondly, in addition and having regard to the totality of the evidence and the submissions of Complainant, the Panel finds that, in view of Respondent’s registration of the domain name using the THE ERGO BABY CARRIER mark and in view of the conduct that Respondent engaged in by using the domain name in the manner described, Respondent registered and used the disputed domain name 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 <ergobabystore.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: April 24, 2012
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