My Pillow, Inc. v. Son Cao
Claim Number: FA1804001780102
Complainant is My Pillow, Inc. (“Complainant”), represented by David J. Simonelli, Birmingham, Michigan, USA. Respondent is Son Cao (“Respondent”), Ho Chi Minh, Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mypillowstore.com>, registered with GoDaddy.com, LLC.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Hon. Karl V. Fink (Ret). (Chair); Jonathan Agmon, and Douglas M. Isenberg, as Panelists.
Complainant submitted a Complaint to the Forum electronically on April 2, 2018; the Forum received payment on April 2, 2018.
On April 3, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <mypillowstore.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 April 4, 2018, the Forum issued a deficiency letter to Complainant, and Complainant submitted an amended Complaint properly addressing the issues in the deficiency letter on April 5, 2018.
On April 6, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 26, 2018 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@mypillowstore.com. Also on April 6, 2018, 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 April 30, 2018, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Hon. Karl V. Fink (Ret). (Chair); Jonathan Agmon, and Douglas M. Isenberg, as Panelists.
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
Complainant contends that it uses its MYPILLOW mark to promote its products and services. Complainant established rights in the MYPILLOW mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,410,314, registered Apr. 8, 2008). Complainant also uses the domain names <mypillow.com> and <mypillowshop.com> to promote its business. Respondent’s <mypillowstore.com> domain name is identical or confusingly similar to Complainant’s MYPILLOW mark as the domain name incorporates the entire MYPILLOW mark and merely adds the term “store.”
Complainant further contends that Respondent does not have rights or legitimate interests in the <mypillowstore.com> domain name. Complainant has not licensed or otherwise authorized Respondent to use its MYPILLOW mark in any fashion. Respondent is also not commonly known by the disputed domain name as the WHOIS information of record lists “Son Cao” as the registrant. Respondent is not using the <mypillowstore.com> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name to resolve to a website that mimics Complainant’s <mypillow.com> and <mypillowshop.com> homepages and purports to sell Complainant’s products.
Finally, Complainant contends that Respondent registered and is using the <mypillowstore.com> domain name in bad faith. Respondent registered the domain name with full knowledge of Complainant’s rights in the MYPILLOW mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <mypillowstore.com> domain name.
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 claims it established rights in its MYPILLOW mark through its registration with the USPTO (e.g., Reg. No. 3,410,314, registered Apr. 8, 2008) and in other countries. Registration of a mark with a trademark authority, such as the USPTO, confers rights in a mark. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). The Panel finds Complainant has rights in the MYPILLOW mark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <mypillowstore.com> domain name is identical or confusingly similar to Complainant’s MYPILLOW mark as the domain name incorporates the entire MYPILLOW mark and merely adds the term “store.” The addition of a generic term to a fully incorporated mark does not sufficiently distinguish a disputed domain name from a mark. See Abbott Laboratories v. Miles White, FA 1646590 (Forum Dec. 10, 2015) (holding that the addition of descriptive terms, particularly terms that pertain to complainant’s business, do not adequately distinguish a disputed domain name from complainant’s mark under Policy ¶ 4(a)(i).). Respondent’s <mypillowstore.com> domain name adds the generic top-level domain (“gTLD”) “.com” to the mark. The addition of a gTLD is usually irrelevant for purposes of Policy ¶ 4(a)(i) analysis, especially where it does not form a part of the relevant mark and where it does not relate to the complainant’s area of trade. 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). The Panel finds that Respondent’s <mypillowstore.com> domain name is confusingly similar to Complainant’s MYPILLOW mark per Policy ¶ 4(a)(i).
Complainant has proved this element.
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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant alleges that Respondent does not have rights or legitimate interests in the disputed domain name. Complainant claims it has not licensed or otherwise authorized Respondent to use its MYPILLOW mark in any fashion. Absent contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights and legitimate interests in the domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (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 that it is commonly known by the domain name). Under Policy ¶ 4(c)(ii), WHOIS information can be used to support a finding that a respondent is not commonly known by a disputed 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)). The WHOIS information of record for <mypillowstore.com> lists “Son Cao” as the registrant. The Panel finds that Respondent is not commonly known by the <mypillowstore.com> domain name.
Additionally, Complainant contends Respondent is not using the <mypillowstore.com> domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Complainant claims that Respondent uses the domain name to pass itself off as Complainant and sell Complainant’s goods at the resolving website. Use of a domain name to pass off as a complainant and sell a complainant’s products without permission is not considered a bona fide offering pursuant to Policy ¶ 4(c)(i) and (iii). See Nokia Corp. v. Eagle, FA 1125685 (Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of 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 of the disputed domain name pursuant to Policy ¶ 4(c)(iii)). Complainant alleges that screenshots indicate that Respondent’s <mypillowstore.com> website mimics Complainant’s <mypillow.com> and <mypillowshop.com> homepages and purports to sell Complainant’s products. The Panel finds that Respondent used the disputed domain name to pass itself off as Complainant and that Respondent failed to use the domain name for a bona fide offering or fair use. The Panel finds Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has proved this element.
While Complainant does not make any contentions that directly fall within the articulated provisions of Policy ¶ 4(b), these provisions are meant to be merely illustrative of bad faith, and Respondent’s bad faith may be demonstrated by ancillary allegations considered under the totality of the circumstances. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
Complainant alleges that Respondent registered the domain name with full knowledge of Complainant’s rights in the MYPILLOW mark because Respondent copied Complainant’s own websites. Registration of a domain name with actual knowledge of a Complainant’s rights in a mark may evidence bad faith pursuant to Policy ¶ 4(a)(iii). See WordPress Foundation v. mich delorme / mich d dots tlds, FA1410001584295 (Forum, Nov. 25, 2014) (“Because Respondent here relies on the WORDPRESS mark in the disputed domain name and also makes use of Complainant’s services at the resolving page, the Panel finds that Respondent had actual knowledge of Complainant’s mark, and that such knowledge evidences Policy ¶ 4(a)(iii) bad faith.”). Further, actual knowledge may be evidenced where a respondent makes use of a complainant’s mark and services at the disputed domain name’s resolving website. Id. As mentioned previously, Complainant argues that Respondent is using the <mypillowstore.com> domain name to resolve to a website that mimics Complainant’s own <mypillow.com> and <mypillowshop.com> websites and offers to sell Complainant’s products. The Panel finds Respondent had actual knowledge of Complainant’s rights in the MYPILLOW mark and that Respondent registered and used the domain name in bad faith.
Complainant has proved this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <mypillowstore.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret). (Chair); Jonathan Agmon, and Douglas M. Isenberg, as Panelists.
Hon. Karl V. Fink (Ret.), for the Panel
Dated: May 8 2018
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