Griffin Technology, Inc. v. fengwubiao
Claim Number: FA1412001592567
Complainant is Griffin Technology, Inc. (“Complainant”), represented by Martha B. Allard of Bass, Berry & Sims PLC, Tennessee, USA. Respondent is fengwubiao (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <griffin-survivor.com>, registered with HANGZHOU AIMING NETWORK 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 1, 2014; the National Arbitration Forum received payment on December 1, 2014. The Complaint was submitted in both Chinese and English.
On December 1, 2014, HANGZHOU AIMING NETWORK CO.,LTD confirmed by e-mail to the National Arbitration Forum that the <griffin-survivor.com> domain name is registered with HANGZHOU AIMING NETWORK CO.,LTD and that Respondent is the current registrant of the name. HANGZHOU AIMING NETWORK CO.,LTD has verified that Respondent is bound by the HANGZHOU AIMING NETWORK 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 December 9, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 29, 2014 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@griffin-survivor.com. Also on December 9, 2014, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 7, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant owns the GRIFFIN TECHNOLOGY mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,556,211, registered January 6, 2009).
Complainant also owns a trademark for SURVIVOR mark through its registration with the USPTO (Reg. No. 4,405,866, registered September 24, 2013, filed Oct. 9, 2012).
Complainant uses the marks in connection with its business in designing, manufacturing and selling consumer electronics and accessories for computers, smartphones, tablets, mobile devices and wearable technology. Complainant operates online through a variety of domain names, including <griffinsurvivorcase.com>.
The <griffin-survivor.com> domain name is confusingly similar, because Respondent has simply added the descriptive term “survivor” to the GRIFFIN mark and added a hyphen between the words.
Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not commonly known by the <griffin-survivor.com> domain name. Complainant has not licensed or authorized Respondent to use the GRIFFIN marks. Respondent does not provide any bona fide offering of goods or services, or make a legitimate noncommercial or fair use of the disputed domain name.
Respondent uses the disputed domain name to offer counterfeit goods. Respondent uses the disputed domain name to intentionally divert consumers from Complainant to the websites associated with Respondent for its own personal gain. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the GRIFFIN marks. There is an obvious link between Respondent’s website and Complainant’s website. Respondent offers counterfeit versions of Complainant’s goods.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the GRIFFIN TECHNOLOGY and SURVIVOR marks through the registration of such marks with the USPTO.
Respondent is not affiliated with Complainant and is not authorized to use Complainant’s trademarks in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired rights in its relevant trademarks.
Respondent uses the disputed domain name to address a website offering counterfeit goods.
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(e), 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 (Nat. Arb. 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 at-issue domain name is confusingly similar to a trademarks in which Complainant has rights.
Complainant’s ownership of USPTO registrations for the GRIFFIN and SURVIVOR trademarks demonstrates its rights in such marks for the purposes of Policy ¶4(a)(i). Complainant’s rights exist notwithstanding that Respondent may operate outside the jurisdiction of the trademarks’ registrar. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also, Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
The at-issue domain name may be described as: Complainant’s GRIFFIN TECHNOLOGY trademark less its space, with its second term substituted with Complainant’s SURVIVOR trademark separated from the first term by a hyphen and with the top-level domain “.com” appended to the resulting string. These differences between the at-issue domain name and Complainant’s trademarks are insufficient to distinguish one from the other for the purposes of Policy ¶4(a)(i). Therefore the Panel finds the <griffin-survivor.com> domain name to be confusingly similar to Complainant’s GRIFFIN TECHNOLOGY and SURVIVOR marks pursuant to Policy ¶ 4(a)(i). See Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005) (finding the <americaneaglestores.com> domain name to be confusingly similar to the complainant’s AMERICAN EAGLE OUTFITTERS mark); see also McGraw-Hill Co., Inc. v. Umbeke Membe, FA 1223759 (Nat. Arb. Forum Oct. 29, 2008) (finding confusing similarity where Respondent combined Complainant’s GLENCOE and MCGRAW-HILL marks to form the <glencoemcgrawhill.com> domain name); see also, Easyjet Airline Co. Ltd. v. Harding, D2000-0398 (WIPO June 22, 2000) (finding it obvious that the domain name <easy-jet.net> was virtually identical to the complainant's EASYJET mark and therefore that they are confusingly similar).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademarks in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
WHOIS information for the at-issue domain name lists “Fengwubiao” as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <griffin-survivor.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(iii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Respondent uses the at-issue domain name to offer counterfeit versions of Complainant’s products. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See eLuxury.com Inc. v. WangJunJie, FA 1075554 (Nat. Arb. Forum Nov. 30, 2007) (concluding that the sale of counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
The domain name was registered and used in bad faith. As discussed below, Policy ¶4(b) specific bad faith circumstances as well as other circumstance are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, Respondent’s use of the <griffin-survivor.com> domain name to offer counterfeit goods suggests Respondent intent to employs the confusingly similar domain name to divert Internet users to its website for commercial gain by creating a likelihood of confusion as to the website’s relationship with Complainant. Such use of the domain name indicates bad faith under Policy ¶ 4(b)(iv). See Affliction, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. 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). Moreover, such use of the domain appears disruptive to Complainant’s business and demonstrates Respondent’s bad faith registration and use of the domain name under Policy ¶4(b)(iii). See Juicy Couture, Inc. v. Chinasupply, FA 1222544 (Nat. Arb. Forum Oct. 13, 2008)(holding that the selling of counterfeit versions of a complainant’s products disrupted the complainant’s business and is evidence of bad faith registration and use).
Finally, Respondent registered the <griffin-survivor.com> domain name knowing that Complainant had trademark rights in the GRIFFIN TECHNOLOGY and SURVIVOR trademarks. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark, from Respondent’s combination of two of Complainant’s marks in forming the at-issue domain name and from Respondent’s brash offering of counterfeit goods on the <griffin-survivor.com> website. Given the forgoing, it is clear that Respondent intentionally registered the at-issue domain name precisely to improperly exploit its trademark value, rather than for some benign reason. Significantly, Respondent’s prior knowledge of Complainant's trademarks further indicates that Respondent registered and used the <griffin-survivor.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <griffin-survivor.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: January 15, 2015
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