PopSockets LLC v. lin he
Claim Number: FA2001001880304
Complainant is PopSockets LLC (“Complainant”), represented by Benjamin T. Horton of Marshall, Gerstein & Borun LLP, Illinois, USA. Respondent is lin he (“Respondent”), represented by Chyrkin Dmitriy of 78 Semena Paliia, Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ninjapopgrip.com>, registered with Alibaba Cloud Computing (Beijing) Co., Ltd..
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.
Aaron B. Newell as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 23, 2020; the Forum received payment on January 23, 2020.
On February 2, 2020, Alibaba Cloud Computing (Beijing) Co., Ltd. confirmed by e-mail to the Forum that the <ninjapopgrip.com> domain name is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. and that Respondent is the current registrant of the name. Alibaba Cloud Computing (Beijing) Co., Ltd. has verified that Respondent is bound by the Alibaba Cloud Computing (Beijing) Co., Ltd. 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 February 4, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 24, 2020 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@ninjapopgrip.com. Also on February 4, 2020, 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.
A timely Response was received and determined to be complete on February 24, 2020.
On February 26, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Aaron B. Newell 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 asserts:
i) that it is a leading manufacturer of grip accessories for electronic devices, including mobile phones;
ii) that it has used the trade mark POPSOCKETS for mobile device grip accessories since 2011 and has protected this and other POP-formative marks including POPGRIP, including, inter alia, by way of United States Trademark registration no 5,757,735 POPGRIP in class 9, registered 21 May 2019;
iii) that the domain name <ninjapopgrip.com> is confusingly similar to, inter alia, its registered rights in POPGRIP;
iv) that the Respondent is in no way affiliated with Complainant and its business and has never authorized Respondent’s use of any of its trademarks;
v) that Respondent is using the domain name to market, promote and sell products that are similar to and/or counterfeit versions of Complainant’s, and is doing so by reference not only to the POPGRIP trademark, but also to its POPSOCKETS and POP trademarks, and does so in a way that gives the impression that its products are authentic POPSOCKETS products when they are not;
vi) that Respondent is not otherwise commonly known by the POPGRIP trade mark, that it is not using the domain name for a bona fide offering of goods or services, that it is not partaking in legitimate non-commercial activity and that it had a duty to register a non-infringing domain name and failed to discharge this duty;
vii) that Respondent was aware of Complainant’s trademarks before registering the domain name and that Respondent’s use of the domain name disrupts and competes with Complainant’s business and intentionally diverts consumers away from Complainant’s own website and authentic products;
viii) that despite the domain name’s Registration Agreement being in Chinese, the balance of convenience is with English being the language of the proceedings.
B. Respondent
Respondent asserts:
i) that the Complaint violates the UDRP Rules because it was filed in English and not Chinese;
ii) that the Complaint is an instance of reverse domain name hijacking because the Respondent does business as “Ninja Phone Stand” and uses the domain name lawfully to trade in phone stands, drinking straws and other products;
iii) the domain name is dissimilar from Complainant’s trademark rights because the terms “POP” and “GRIP” mean “popular grip” and “NINJA” is distinctive and distinguishes the domain name from Complainant’s trademarks;
iv) that Complainant’s allegations that the domain name is being used to sell inauthentic products that feature Complainant’s trademarks should not be taken into account by the Panel, nor should the content of the website;
v) that it has a legitimate interest in using “pop grip” descriptively alongside the name “ninja” and any disruption to Complainant’s business is owing only to Complainant’s decision to adopt descriptive or generic terms as its trademark;
vi) that the Respondent did not intend to create a likelihood of confusion.
i) Complainant is a US-based business specializing in grip devices for mobile phones. Complainant’s products are sold internationally.
ii) Complainant owns, inter alia, US trademark registration numbers:
a. 5757735 POPGRIP covering, inter alia Hand grips, stands, and mounts adapted for handheld electronic devices, namely, smartphones, tablet computers, cameras, and portable sound and video players;
b. 5486563 POPSOCKETS covering Hand grips, stands, and mounts adapted for handheld electronic devices, namely, smartphones, tablet computers, cameras, and portable sound and video players;
c. 5662835 POP covering Hand grips, stands, and mounts adapted for handheld electronic devices, namely, smartphones, tablet computers, cameras, and portable sound and video players.
iii) Complainant’s products include a round disc-shaped “grip” that adheres to a mobile phone making it easier to manipulate without dropping.
iv) The domain name was registered 16 May 2018 and loads a website that purports to sell round disc-shaped “grip” devices that adhere to mobile phones for ease of manipulation.
v) The website at the domain name features the term POPSOCKET in a promotional sense, i.e. “where can I buy a cheap popsocket – NinjaPhoneGrip.”
vi) Complainant alleges, and Respondent does not rebut, that the products sold at the noted website are not its own.
vii) No party has purported to submit evidence demonstrating that POP and/or SOCKET and/or the term POPGRIP are generic or non-distinctive terms, aside from Respondent’s bald, unsupported allegations that “pop” in the context of the domain name means “popular” and that POPGRIP is descriptive.
UDRP Rule 11 states that the language of the proceedings shall be the language of the Registration Agreement. This is subject to Rule 11(a) which gives the Panel authority to determine otherwise if the circumstances merit. The relevant Registration Agreement is in Chinese, however the parties have filed submissions in English. Panel must determine the appropriate language of the proceedings.
Preliminary Issue: Respondent’s Language Submissions
Respondent is an individual based in China. Respondent has engaged a law firm based in Ukraine to represent it in these proceedings. Respondent’s counsel files submissions on behalf of Respondent in English with no perceptible difficulty communicating in that language. Respondent’s counsel has no obvious connection to China and no obvious dependency on Chinese. Rather, it asserts that Respondent has used a translator to help it “communicate with its attorney”. Respondent’s counsel accordingly does not appear to be fluent in Chinese. It nonetheless asks that the Panel “issue a Procedural Order requiring the Complainant to translate the Complaint and attached documents into Chinese” for the benefit of the Respondent.
Complainant’s counsel has filed submissions in English, states that Complainant does not understand Chinese and makes no submission as to its own level of comprehension of Chinese.
The domain name at issue is in Roman characters and as at the time of decision loads a commercial website that is entirely in English and offers prices in USD.
Complainant alleges and Respondent does not deny that the website is operated by the Respondent.
English appears to be a common language between the parties – both appear to be able to conduct business in English.
If the Panel is wrong about that, Respondent’s counsel communicates well in English and does not appear to understand Chinese. Respondent would have had the option to engage Chinese-speaking counsel but did not. By its submission, Respondent appears to have engaged a translator in order to accommodate its choice of counsel. That counsel is competent to conduct the proceedings in English.
On balance there appears to be no or limited prejudice to Respondent for the proceedings to be in English. Rather, it would appear that Respondent itself would be disadvantaged by this given that it has engaged English-speaking counsel based in Ukraine with no apparent capacity to operate in Chinese, and who would have to translate its submissions into Chinese if that were the language of the proceedings. Chinese as language of proceedings would also delay the resolution of the matter and unduly prejudice Complainant who also has no obvious capacity to proceed in Chinese. Respondent also appears to be able to conduct business in English and target English-speaking consumers with this business. It therefore appears to have some capacity to communicate in English at a reasonable level in any event. Panel notes that, despite being represented in the proceedings, Respondent (and not its representative) signed its English-language Response.
Panel determines that the language of the proceedings shall be English. For that reason, and because Respondent appears to understand the Complaint and the nature of the proceedings, there is no basis for the requested Procedural Order which accordingly is denied.
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.
The Panel considers that the name POPGRIP is sufficiently inherently distinctive to operate as a trademark in respect of the relevant business activities.
The domain name is <ninjapopgrip.com>. POPGRIP is the Complainant’s registered trademark. The Panel does not accept that “POP” will be taken to mean “popular” as alleged by Respondent. That may be so when the term is used as an adjective modifying the words “music” or “culture”, but that is not the case here.
Respondent asserts that it trades as “Ninja Phone Stands” and that “NINJA” distinguishes the domain name from Complainant’s trademark rights.
The Panel does not accept this argument. Rather, in that context, the combination of the term “NINJA” with Complainant’s trademark can create the impression that there is an association between the two businesses, that the POPGRIP trademark is licensed to Respondent, that Respondent is an authorized or “official” seller of Complainant’s products and/or that Complainant has made bespoke products for sale by Respondent.
In each case any such impression is confusing and misleading. Complainant succeeds under Policy Paragraph 4(a)(i).
Before registering the domain name Respondent was not known as “Ninja Pop Grip” or by any name incorporating the term “POPGRIP”. Respondent by its own admission trades as “Ninja Phone Stands.”
Respondent’s website has used the terms “Phone Grip”, “Pop Grip”, “Socket Grip”/”PHONE SOCKET GRIP” and “Pop Socket” to refer to and to sell a pedestaled disc that adheres to a mobile phone enabling the user to handle the phone more securely, similar and nearly-identical to Complainant’s product.
Insofar as Respondent has used the terms POPGRIP or POPSOCKET, this is use of Complainant’s trademark rights in order to sell identical products to those offered by Complainant in competition with Complainant. Further, Respondent has used the page title “Where can i buy a cheap popsocket” on a page that links to and features pricing for its own products, which are not made by or related to those of Complainant.
The impression given is that Respondent is selling Complainant’s products. It is not.
Complainant has asserted and Respondent has not rebutted that Respondent is not authorized by Complainant to use Complainant’s trademark rights.
On this basis, the Panel finds that Respondent is using the domain name to create a likelihood of confusion with Complainant and/or its products for the purpose of commercial gain and, accordingly, also to disrupt Complainant’s business.
This conduct does not amount to a legitimate interest within the meaning of the Policy. It is clearly not legitimate non-commercial use, nor use of a name by which Respondent has been known, nor a bona fide offering of goods.
Complainant succeeds under Policy Paragraph 4(a)(ii).
On the basis that Respondent registered the domain incorporating words that refer to the Complainant’s business, and then used the domain name to misleadingly create the impression that the products retailed on its website are those of the Complainant, the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to [its] web site by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [its] web site [and] of [products] on [its] web site.
Accordingly the Panel finds that the domain name was registered and used in bad faith.
Complainant succeeds under Policy Paragraph 4(a)(iii).
Reverse Domain Name Hijacking
Respondent seeks a determination that Complainant has engaged in reverse domain name hijacking.
Given the foregoing determinations under Policy Paragraphs 4(a)(i) through (iii), Respondent’s request is denied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ninjapopgrip.com> domain name be TRANSFERRED from Respondent to Complainant.
Aaron B. Newell, Panelist
Dated: March 12, 2020
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