PopSockets LLC v. Albert Sung
Claim Number: FA1708001745934
Complainant is PopSockets LLC (“Complainant”), represented by Benjamin T. Horton of Marshall, Gerstein & Borun LLP, Illinois, USA. Respondent is Albert Sung (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <popsocketsonline.com> and <customizepopsockets.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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 23, 2017; the Forum received payment on August 23, 2017.
On August 24, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <popsocketsonline.com> and <customizepopsockets.com> domain names are 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 24, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 13, 2017 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@popsocketsonline.com, postmaster@customizepopsockets.com. Also on August 24, 2017, 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 14, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant, PopSockets LLC, is a leading provider of grip and clip accessories for handheld electronic devices. In connection with this business, Complainant uses the POPSOCKETS mark to brand its products, as well as promote its goods and services. Complainant has rights in the POPSOCKETS mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (i.e. Reg. No. 4,572,125, registered July 22, 2014).
2. Respondent’s <popsocketsonline.com> and <customizepopsockets.com>[1] domain names are confusingly similar to Complainant’s’ POPSOCKETS mark as each appends a generic term in “online” or “customize,” as well as the generic top-level-domain (“gTLD”) “.com” to Complainant’s wholly incorporated mark.
3. Respondent lacks rights and legitimate interests in the domain names. Respondent is not commonly known by the domain names nor has Complainant authorized Respondent’s use of the POPSOCKETS mark.
4. Respondent has failed to use <popsocketsonline.com> and <customizepopsockets.com> domain names in connection with a bona fide offer of goods and services or for a legitimate noncommercial or otherwise fair use. Instead, the domain names resolve to websites selling counterfeit versions of Complainant’s products and utilizing Complainant’s branding in an attempt to pass off as the Complainant.
5. Respondent registered and uses <popsocketsonline.com> and <customizepopsockets.com> in bad faith. Respondent disrupts Complainant’s business through the sale of counterfeit versions of Complainant’s products. Respondent attempts to pass off as Complainant for Respondent’s commercial gain through the creation of confusion for Internet users seeking Complainant’s business. Respondent had actual knowledge of Complainant’s rights in the POPSOCKETS marks prior to registration of the disputed domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the POPSOCKETS mark. Respondent’s domain names are confusingly similar to Complainant’s POPSOCKETS mark. Complainant has established Respondent lacks rights or legitimate interests in the use of the <popsocketsonline.com> and customizepopsockets.com> domain names and that Respondent registered and uses 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 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 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 (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.”).
Complainant has rights in the POPSOCKETS mark based upon registration with the USPTO (i.e. Reg. No. 4,572,125, registered July 22, 2014). Registration with a trademark authority such as the USPTO is sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (“Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”).
Next, Complainant argues Respondent’s <popsocketsonline.com> and <customizepopsockets.com> are confusingly similar to Complainant’s’ POPSOCKETS mark as each appends a generic term--“online” or “customize”--as well as the gTLD “.com” to Complainant’s mark. The addition of generic terms and gTLDs to a domain name containing a mark in which a complainant has rights is “confusingly similar” within the meaning of Policy ¶ 4(a)(i). See Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis.). The Panel finds Respondent’s domain names are confusingly similar to Complainant’s POPSOCKETS mark.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <popsocketsonline.com> and <customizepopsockets.com> domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends Respondent is not commonly known by the <popsocketsonline.com> and <customizepopsockets.com> domain names nor has Complainant authorized Respondent’s use of the POPSOCKETS mark. In lieu of a Response, WHOIS information can substantiate a finding that a respondent is not commonly known by a domain name; likewise, where a complainant has not authorized a respondent’s use of a mark, it has been found that the respondent is not commonly known by the domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also 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, the WHOIS information of record names “Albert Sung” as the registrant of both domain names. Further, there is no evidence the Complainant authorized Respondent to use Complainant’s mark. As such, the Panel finds Respondent is not commonly known by the <popsocketsonline.com> and <customizepopsockets.com> domain names.
Next, Complainant contends Respondent failed to use <popsocketsonline.com> and <customizepopsockets.com> in connection with a bona fide offer of goods and services or for a legitimate noncommercial or otherwise fair use as, instead, the evidence shows the domain names resolve to websites selling counterfeit versions of Complainant’s products and utilizing Complainant’s branding in an attempt to pass off as the Complainant. Use of a complainant’s marks in an effort to pass off as the complainant does not represent a bona fide use per Policy ¶¶ 4(c)(i) & (iii). See Kmart of Mich., Inc. v. Cone, FA 655014 (Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website). The Panel agrees with Complainant that Respondent has appropriated Complainant’s POPSOCKETS mark, website design, and product descriptions in creating its nearly identical website. As such, the Panel finds Respondent’s use is not bona fide and that Respondent lacks rights and legitimate interests in the domain names.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends Respondent disrupts Complainant’s business through the sale of counterfeit versions of Complainant’s products. The records supports this contention which establishes bad faith per Policy ¶ 4(b)(iii). See H-D U.S.A., LLC v. Linchunming / linchunming, FA1411001589214 (Forum Dec. 22, 2014) (“Respondent uses the domain name to promote counterfeit goods like those offered by Complainant. Doing so disrupts Complainant’s business and demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iii).”). The Panel agrees with Complainant and finds that Respondent used the <popsocketsonline.com> and <customizepopsockets.com> domain names in bad faith.
Next, Complainant asserts Respondent attempts to pass off as Complainant for Respondent’s commercial gain through the creation of confusion for Internet users seeking Complainant’s business. Complainant has provided evidence that Respondent offers counterfeit versions of Complainant’s products on a resolving website that copies Complainant’s own website. Use of a complainant’s marks to sell counterfeit versions of the complainant’s products demonstrates bad faith use per Policy ¶ 4(b)(iv). See Affliction, Inc. v. Chinasupply, FA 1223521 (Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain by creating confusion as to the complainant’s connection with the website by selling counterfeit products, and thus showed Policy ¶ 4(b)(iv) bad faith). The record shows that Respondent uses Complainant’s mark and design to sell counterfeit versions of Complainant’s products at a significantly lower price point, presumably confusing Internet users and diverting them away from Complainant’s official website. The Panel agrees with Complainant and finds Respondent used the <popsocketsonline.com> and <customizepopsockets.com> domain names in bad faith per Policy ¶ 4(b)(iv).
Last, Complainant asserts Respondent had actual knowledge of Complainant’s rights in the POPSOCKETS marks prior to registration of the domain names. Actual knowledge of a complainant’s rights in a mark can be determined by the domain name and the use made of it per Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“[T]he Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Here, Respondent has used Complainant’s mark in the domain names and resolving website to sell counterfeit versions of Complainant’s products for Respondent’s commercial gain. The Panel agrees with Complainant’s assertion and finds Respondent registered the <popsocketsonline.com> and <customizepopsockets.com> domain names 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 <popsocketsonline.com> and <customizepopsockets.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: September 25, 2017
[1] The <popsocketsonline.com> and <customizepopsockets.com> domain names were registered July 22, 2017 and August 2, 2017 respectively.
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page