Spectrum Brands, Inc. v. san mao
Claim Number: FA1710001752444
Complainant is Spectrum Brands, Inc. (“Complainant”), represented by William Schultz of Merchant & Gould, P.C., Minnesota, USA. Respondent is san mao (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <furminatorpet.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 5, 2017; the Forum received payment on October 5, 2017.
On October 09, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <furminatorpet.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 October 10, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 30, 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@furminatorpet.com. Also on October 10, 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 November 2, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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 name be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <furminatorpet.com> domain name is confusingly similar to Complainant’s FURMINATOR mark.
2. Respondent does not have any rights or legitimate interests in the <furminatorpet.com> domain name.
3. Respondent registered and uses the <furminatorpet.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Spectrum Brands, uses the FURMINATOR mark for pet related products and services. Complainant holds a registration for the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,238,141, registered May 1, 2007).
Respondent registered the<furminatorpet.com> domain name on September 25, 2017, and fails to make an active use of the disputed domain name. Respondent uses an email address associated with the disputed domain name to perpetrate fraud.
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.”).
The Panel finds that Complainant has rights in the FURMINATOR mark under Policy ¶ 4(a)(i) based upon its registration with the USPTO. See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Respondent’s <furminatorpet.com> domain name contains Complainant’s entire FURMINATOR mark and adds the descriptive term “pet” along with the gTLD “.com.” Panels have consistently found that minor differences between domain names and registered marks, such as the addition of descriptive words, do not distinguish the domain name from the mark incorporated therein. See Traditional Medicinals, Inc. v. Flippa Chick FA 1006001328702 (Nat. Arb. Forum July 15, 2010) (“Respondent’s disputed domain name contains Complainant’s SMOOTH MOVE mark in its entirety after removing the space separating the terms of the mark, adds the descriptive terms “herbal tea” and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of descriptive terms creates a confusing similarity between the disputed domain name and Complainant’s mark.”) Similarly, the addition of a gTLD is irrelevant in determining whether the disputed domain name is confusingly similar. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Thus, the Panel finds that Respondent’s <furminatorpet.com> domain name is confusingly similar to Complainant’s FURMINATOR mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 (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 (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 has no rights or legitimate interests in <furminatorpet.com> and is not commonly known by the disputed domain name. Complainant has not authorized Respondent to use the FURMINATOR mark in any way. The WHOIS information of record identifies Respondent as “san mao.” The Panel thus finds under Policy ¶ 4(c)(ii) that Respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.); 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).
Complainant further argues Respondent has failed to use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant shows that Respondent’s <furminatorpet.com> domain name is being used to pass itself off as Complainant by using an email address to remove legitimate sellers from selling products on Amazon. The Panel finds that this is not a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(ii) & (iv). See PopSockets LLC. V. san mao, FA1740903 (Forum Aug. 27, 2017) (holding Respondent failed to establish a bona fide offering of goods or services under Policy ¶ 4(c)(i) or legitimate noncommercial fair use per Policy ¶ 4(c)(iii) where it impersonated the brand owner to fraudulently file complaints on Amazon.com in an attempt to shut down authorized resellers of the brand owner’s products).
Complainant also argues that Respondent fails to make an active use of the website in connection with the disputed domain name, and provides a screenshot of Respondent’s website contains nothing other than a “coming soon” graphic. The Panel finds that this does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <kohler-corporation.com> resolves to an inactive webpage displaying the message “website coming soon!”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the disputed domain in bad faith because Respondent has engaged in a pattern of bad faith registrations. Bad faith is shown per Policy ¶ 4(b)(ii) where the respondent engaged in the practice of registering domain names of others. Stevens v. Modern Ltd.-Cayman Web Dev., FA 250005 (Forum May 17, 2004) (finding bad faith where Respondent engaged in the practice of registering domain names containing the marks of others); see also Maurice Sporting Goods, Inc. v. Xiaodong Peng, FA1506001625928 (Forum Aug. 1, 2015) (finding that the respondent had engaged in bad faith pursuant to Policy ¶ 4(b)(ii) where the respondent had been unsuccessful in three previous UDRP cases). Here, Complainant provides evidence of Respondent’s prior adverse UDRP holdings. Thus, the Panel finds that Respondent’s prior history shows a pattern of bad faith registration and indicates Respondent’s bad faith in registering the <furminatorpet.com> domain name.
Complainant argues that Respondent attempts to pass itself off as Complainant in order to disrupt Complainant’s business. The Panel agrees and finds that bad faith under Policy ¶ 4(b)(iii). See PopSockets LLC. V. san mao, FA1740903 (Forum Aug. 27, 2017) (holding respondent constituted a competitor and acted in bad faith by attempting to pass itself off as the brand owner and shut down authorized resellers of the brand owner’s products who sold on Amazon.com).
The Panel finds that Complainant has satisfied 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 <furminatorpet.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: November 3, 2017
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