The ERGO Baby Carrier, Inc. v. Georgia / lin jueming / zhanjianzong
Claim Number: FA1206001450728
Complainant is The ERGO Baby Carrier, Inc. (“Complainant”), represented by Stevan H. Lieberman of Greenberg & Lieberman, LLC, Washington, D.C., USA. Respondent is Georgia / lin jueming / zhanjianzong (“Respondent”), Georgia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <ergobabysale.com>, registered with Tucows, Inc.; <bestergobabycarriers.com>, registered with Web Commerce Communications Limited d/b/a Webnic.Cc, Tucows, Inc.; <buyergobabycarrier.org> and <ergobabybackpack.org>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically June 26, 2012; the National Arbitration Forum received payment June 26, 2012.
On June 27, 2012, Tucows, Inc., confirmed by e-mail to the National Arbitration Forum that the <ergobabysale.com> domain name is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. verified that Respondent is bound by the Tucows, Inc. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
Also on June 27, 2012, Web Commerce Communications Limited d/b/a Webnic.cc confirmed by e-mail to the National Arbitration Forum that the <bestergobabycarriers.com> domain name is registered with Web Commerce Communications Limited d/b/a Webnic.cc and that Respondent is the current registrant of the name. Web Commerce Communications Limited d/b/a Webnic.cc verified that Respondent is bound by the Web Commerce Communications Limited d/b/a Webnic.cc registration agreement and 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 28, 2012, Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <ergobabybackpack.org> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 15, 2012, Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <buyergobabycarrier.org> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 24, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 13, 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@ergobabysale.com, postmaster@bestergobabycarriers.com, postmaster@buyergobabycarrier.org, and postmaster@ergobabybackpack.org. Also on July 24, 2012, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 13, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 names be transferred from Respondent to Complainant.
i. THE ERGO BABY CARRIER & Design (Reg. No. 2,994,269 registered September 13, 2005) and
ii. THE ERGO BABY & Design (Reg. No. 3,200,914 registered January 23, 2007).
i. IP Australia (“IPA”) (Reg. No. 1,253,883 registered October 8, 2010);
ii. European Union Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 006047278 registered April 15, 2008); and
iii. World Intellectual Property Office (“WIPO”) (Reg. No. 980,705 registered May 6, 2008).
The Complainant established that it has rights in the marks contained in their entirety within the disputed domain names that Respondent registered.
Respondent has no known rights to or legitimate interests in the domain names containing Complainant’s protected marks.
While perhaps purporting to warn the public about dangers related to his own sites, Respondent registered and used the domain names in bad faith.
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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities that control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. 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.”
Complainant contends that a singular entity is controlling all of the disputed domain names. In order to support its arguments, Complainant enlisted the services of an expert, Charles Christopher, as to the underlying facts and circumstances involving the domain names. Complainant notes that the <buyergobabycarrier.org> and <ergobabybackpack.org> domain names are both registered to “zhanjianzong” with the same e-mail address of “3099606@qq.com.” Complainant further notes that “it is well known in the industry, that WHOIS records can be incorrect and may not be the most reliable source to determine the actual identity of the registrant of a domain name and/or whether several domain names are actually owned and/or operated by the same person/entity.” Complainant contends that the source code and software code for the disputed domain names all point to one entity having control over the disputed domain names. Complainant’s expert found that the “server response forwarding ‘footprint’ was the same for each domain name.” Complainant notes that this “footprint” includes general identifying information, but also specific information that identifies each domain name as being related.
The Panel finds that Complainant presented sufficient evidence that the disputed domain names are controlled by the same entity and thus chooses to proceed with the instant proceedings to a determination on the merits.
Complainant contends that it has worldwide trademark rights for its various ERGOBABY-related marks:
THE ERGO BABY CARRIER & Design USPTO Reg. No. 2,994,269 registered September 13, 2005;
THE ERGO BABY & Design USPTO Reg. No. 3,200,914 registered January 23, 2007;
ERGOBABY IPA Reg. No. 1,253,883 registered October 8, 2010;
ERGOBABY OHIM Reg. No. 006047278 registered April 15, 2008; &
ERGOBABY WIPO Reg. No. 980,705 registered May 6, 2008.
The Panel finds that Complainant’s multiple trademark registrations are sufficient for Complainant to establish rights in the marks above under Policy ¶ 4(a)(i). See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Complainant argues that the <ergobabysale.com>, <bestergobabycarriers.com>, <buyergobabycarrier.org>, and <ergobabybackpack.org> domain names are confusingly similar to the ERGOBABY family of marks. The Panel notes that each domain name contains Complainant’s entire ERGOBABY mark while adding one or more of the following generic or descriptive terms: “sale,” “best,” “carriers,” “buy,” “carrier,” and/or “backpack.” The Panel also notes that each domain name adds the generic top-level domain (“gTLD”) “.com” or “.org.” The Panel finds that addition of generic and/or descriptive terms and a gTLD to Complainant’s ERGOBABY mark does not distinguish the domain names from being confusing similar to Complainant’s protected marks. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain names are confusingly similar to marks in which Complainant has protected rights; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden of proof shifts to Respondent to show it does have such 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.”).
Complainant argues that Respondent is not commonly known by the disputed domain names and has not been authorized or granted permission to use Complainant’s marks. Complainant notes that the WHOIS information for the disputed domain names does not provide support for an assertion that Respondent is commonly known by the disputed domain names as the registrants are identified as “Georgia, “lin jueming” and “zhanjianzong.” The Panel agrees and finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii), based upon the WHOIS information and all other evidence on record. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. 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 known by the disputed domain name).
Complainant contends that Respondent is using the disputed domain names to defraud consumers of their personal and credit card information. Complainant argues that the disputed domain names resolve to websites that feature copyrighted information obtained from Complainant’s websites. Complainant argues that Respondent is attempting to pass itself off as the seller of Complainant’s goods in order to phish for the credit card information of Internet users that attempt to buy products from the resolving websites. Complainant provides examples of the resolving websites in Exhibit F. Upon review of the evidence submitted by Complainant the Panel finds that Respondent is not using the disputed domain names for 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). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also 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).
Respondent did not address the elements of ICANN Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the the disputed domain names; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
The Panel notes that the bad faith factors enumerated under Policy ¶ 4(b) are meant to be merely illustrative rather than an exhaustive listing of bad faith factors and that the Panel may find bad faith by looking at the totality of the circumstances under Policy ¶ 4(a)(iii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”).
Complainant contends that Respondent is not authorized, licensed, or permitted to use Complainant’s mark or its copyrighted material. Complainant notes that the disputed domain names host a website that consists of the “stolen content from Complainant’s own website…” while using Complainant’s marks. Complainant argues that Respondent is attempting to collect Internet user’s personal and credit card information by posing as Complainant and purportedly selling Complainant’s goods. Complainant argues that such use is a phishing scam and is evidence of bad faith registration and use. The Panel agrees and finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (“The domain name <billing-juno.com> was registered and used in bad faith by using the name for fraudulent purposes.”); see also Juno Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (concluding that using a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients” is evidence of bad faith registration and use).
Respondent makes no contentions relative to ICANN Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain names in bad faith; Complainant satisfied the elements of ICANN 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 <ergobabysale.com>, <bestergobabycarriers.com>, <buyergobabycarrier.org>, and <ergobabybackpack.org> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: August 29, 2012.
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