Griffin Technology, Inc. v. Xiayu Zhi
Claim Number: FA1412001596600
Complainant is Griffin Technology, Inc. (“Complainant”), represented by Martha B. Allard of Bass, Berry & Sims PLC, Tennessee, USA. Respondent is Xiayu Zhi (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <griffinsurvivorstore.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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 22, 2014; the National Arbitration Forum received payment on December 22, 2014.
On December 23, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <griffinsurvivorstore.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 December 30, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 20, 2015 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@griffinsurvivorstore.com. Also on December 30, 2014, 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 January 22, 2015, 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
Complainant made the following contentions.
Complainant uses GRIFFIN and SURVIVOR to identify its brand of goods that concern electronic device accessories. The marks are both registered with the United States Patent and Trademark Office ("USPTO") (G GRIFFIN—Reg. No. 3,938,740, registered March 29, 2011; SURVIVOR—4,405,866, registered Sept. 24, 2013). The <griffinsurvivorstore.com> domain name is confusingly similar to the marks in that it combines elements of both trademarks and adds the generic term “store.”
Respondent has no right or legitimate interests in the <griffinsurvivorstore.com> domain name. Respondent is not known by this domain name. Further, the <griffinsurvivorstore.com> domain name is being used to host a website selling counterfeit SURVIVOR and GRIFFIN products. See Comp., at p. 8.
Respondent has registered and is using the <griffinsurvivorstore.com> domain name in bad faith. Respondent is capitalizing on a likelihood of confusion in Policy ¶ 4(b)(iv) bad faith by selling off these competing and counterfeit goods. Further, Respondent had to have actual knowledge when he registered and used a domain name dedicated to selling counterfeit goods.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that designs, manufactures and sells accessories for electronic devices.
2. Complainant is the registered proprietor of the G GRIFFIN and SURVIVOR marks, both registered with the United States Patent and Trademark Office ("USPTO"), namely Reg. No. 3,938,740, registered March 29, 2011 and Reg. No.4, 405,866, registered Sept. 24, 2013.
3. Respondent registered the disputed domain name on September 26, 2014. It is being used to host a website selling counterfeit G GRIFFIN and SURVIVOR and products.
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.”).
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant uses the G GRIFFIN and SURVIVOR marks to identify its brand of goods that concern electronic device accessories. Complainant claims that the marks are both registered with the USPTO (G GRIFFIN—Reg. No. 3,938,740, registered March 29, 2011; SURVIVOR—4,405,866, registered Sept. 24, 2013). The Panel agrees that these registrations sufficiently illustrate Complainant’s Policy ¶ 4(a)(i) rights in the trademark. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
The second issue that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s G GRIFFIN and SURVIVOR marks. Complainant alleges that the <griffinsurvivorstore.com> domain name is confusingly similar to the marks in that it combines elements of both trademarks and adds the generic term “store.” The Panel agrees that the removal of the first “G” in the G GRIFFIN mark, and the addition of the gTLD and the term “store” do little to defeat the Policy ¶ 4(a)(i) confusing similarity here. See 3M Co. v. Silva, FA 1429349 (Nat. Arb. Forum Mar. 30, 2012) (finding that the <littmanncardiologyiii.info> domain name is confusingly similar to the complainant’s LITTMANN and CARDIOLOGY III marks); 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).
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 G GRIFFIN and SURVIVOR marks and to use them its domain name and has simply deleted the first “G” in G GRIFFIN and added the generic word “store” which does not detract from the confusing similarity that is clearly present;
(b)Respondent registered the disputed domain name on September 26, 2014;
(c)Respondent has, without the permission or authority of Complainant, used the disputed domain name to host a website selling counterfeit GRIFFIN and SURVIVOR products;
(d) Complainant claims that Respondent is not known by the disputed domain name. The Panel notes that Respondent is listed as “Xiayu Zhi” in the WHOIS information. The Panel finds that the record does not contain evidence sufficient to support a finding for Respondent under Policy ¶ 4(c)(ii). See LawyerLocate.ca Inc v. J Kirby Inwood / CanLaw, FA 1496334 (Nat. Arb. Forum June 20, 2013) (“Respondent’s name is J Kirby Inwood and his organization’s name is CanLaw. There is no evidence Respondent is known by the Domain Names nor by the names Lawyerlocate or Lawyerlocate.ca.”);
(e) Complainant argues that the <griffinsurvivorstore.com> domain name is being used to host a website selling counterfeit SURVIVOR and GRIFFIN products. See Comp., at p. 8. The Panel agrees that this evidenced use of the domain name for purposes of promoting counterfeit goods is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Keihin Corp. v. Youli Ltd., FA 1106190 (Nat. Arb. Forum Dec. 18, 2007) (finding no rights and legitimate interests when the respondent sold counterfeit versions of the complainant’s products in competition with the complainant’s business).
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.
First, Complainant argues that Respondent is capitalizing on a likelihood of confusion in Policy ¶ 4(b)(iv) bad faith by selling competing and counterfeit G GRIFFIN and SURVIVOR goods. The Panel agrees that the domain name’s evident use is to sell counterfeits under the G GRIFFIN and SURVIVOR marks. See, e.g., Compl., at p. 8. In Affliction, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008), the panel held that there was an intimate likelihood for confusion when the domain name was used to sell off counterfeit goods under the complainant’s own trademarks. This Panel similarly agrees that Respondent’s sale of counterfeit goods is an act becoming of a Policy ¶ 4(b)(iv) bad faith scheme to profit through the likelihood of Internet user confusion.
Secondly, Complainant argues that Respondent had to have actual knowledge when he registered and used a domain name dedicated to selling counterfeit goods. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration").
Finally, having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration and use of the disputed domain name using elements of the G GRIFFIN and SURVIVOR marks, Respondent registered and used it 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 <griffinsurvivorstore.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: January 23, 2015
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