Wilson Electronics, LLC v. Mizuki Kirelser
Claim Number: FA1810001814317
Complainant is Wilson Electronics, LLC (“Complainant”), represented by Brett D. Ekins, Utah, USA. Respondent is Mizuki Kirelser (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <weboostoffer.com>, registered with NameCheap, Inc.
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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 30, 2018; the Forum received payment on October 30, 2018.
On October 31, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <weboostoffer.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 November 2, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 23, 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@weboostoffer.com. Also on November 2, 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 October 25, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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
Complainant sells equipment that amplifies cellular phone signals. Complainant has rights in the WEBOOST trademark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) which issued on April 14, 2015. Respondent’s <weboostoffer.com> domain name is identical or confusingly similar to Complainant’s mark as it simply adds the generic/descriptive term “offer” and the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <weboostoffer.com> domain name, as Complainant has never authorized or consented to Respondent’s use of the WEBOOST trademark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the domain name to sell WEBOOST brand products.
Respondent registered and uses the <weboostoffer.com> domain name in bad faith. Respondent intentionally attempts to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s competing website. Further, Respondent was fully aware of Complainant’s prior rights in the WEBOOST mark when it registered the infringing domain name given the fact that Complainant’s registration for the mark predates Respondent domain name (created on October 17, 2018) by over three years.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 rights in the WEBOOST trademark through its registration of the mark with the USPTO on April 14, 2015. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . 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).”). Accordingly, the Panel finds that Complainant has established rights in the WEBOOST mark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <weboostoffer.com> domain name is identical or confusingly similar to the WEBOOST mark as it simply adds the generic/descriptive term “offer” and the “.com” gTLD. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.). The Panel therefore finds that the <weboostoffer.com> domain name is confusingly similar to the WEBOOST mark under Policy ¶ 4(a)(i).
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). Should it succeed in that effort, the burden then shifts to Respondent to show that 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 contends that Respondent has no rights or legitimate interests in the <weboostoffer.com> domain name as it is not commonly known by that name as set out in Policy ¶ 4(c)(ii). Where a response is lacking, relevant information on this issue includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS record for the <weboostoffer.com> domain name identifies “Mizuki Kirelser” as the registrant. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the disputed domain name or the WEBOOST mark. Panels may use these assertions as evidence that rights or legitimate interests are lacking. See 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 alleges that Respondent has never been legitimately affiliated with Complainant, and Complainant has not given Respondent permission to use the mark in any manner. Accordingly, the Panel agrees that Respondent is not commonly known by the <weboostoffer.com> domain name under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent uses the domain name to sell WEBOOST brand products. Using a confusingly similar domain name that resolves in a webpage purporting to sell a complainant’s products without authorization may fail to indicate a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy when taking into account all of the circumstances of the situation. See The Lincoln Electric Company v. Privacy protection service - whoisproxy.ru, FA 1651493 (Forum Jan. 13, 2016) (noting that, as Respondent used the disputed domain to promote Complainant’s distributor without license to do so, Respondent did not demonstrate any bona fide offering of goods or services or any legitimate noncommercial or fair use). Complainant provides a screenshot of the <weboostoffer.com> to further its assertion. The Panel notes that this website features the WEBOOST product but contains no mention of the Respondent’s relationship (or lack thereof) with the Complainant, thus giving the impression that it is either an official website of the Complainant or at least one that it authorized thereby. This lack of any notice of a relationship fails the test for use of a trademark in a domain name for the purpose of distributing a complainant’s products. Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO, November 6, 2001). As such, the Panel agrees with Complainant’s contention and it holds that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) and/or (iii) and thus under Policy ¶ 4(a)(ii).
Complainant argues that Respondent had actual knowledge of Complainant’s rights in the WEBOOST trademark at the time of registering the <weboostoffer.com> domain name. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name can evince bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Complainant supports its contention by reference to the appearance of images of the WEBOOST trademark and Complainant’s product on the <weboostoffer.com> website combined with the fact that Complainant’s registration for its mark predates Respondent’s registration of the disputed domain name by over three years. The Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark, thus providing the foundation for a finding of bad faith under Policy ¶ 4(a)(iii).
Complainant further claims that Respondent intentionally attempts to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s WEBOOST mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s competing website. Using a disputed domain name to trade upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). The screenshot of the <weboostoffer.com> website submitted into evidence by Complainant confirms that Respondent is, indeed, using the WEBOOST mark to offer cellphone signal boosting products for sale. Complainant’s assertion that this is done without permission and based upon a likelihood of confusion as to source, sponsorship, affiliation, or endorsement has gone unopposed as the Respondent has not filed a Response or made any other submission in this case. As such, the Panel agrees with Complainant’s contention that Respondent attempted to commercially benefit from confusion with Complainant’s trademark in bad faith under Policy ¶ 4(b)(iv).
In light of the foregoing, the Panel finds that the <weboostoffer.com> domain name was registered and used in bad faith under 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 <weboostoffer.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: November 30, 2018
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