SCG Power Rangers, LLC v. hongyan yao
Claim Number: FA1612001705455
Complainant is SCG Power Rangers, LLC (“Complainant”), California, USA. Respondent is hongyan yao (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <power-ranger.us>, registered with GoDaddy.com, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 1, 2016; the Forum received payment on December 1, 2016.
On December 2, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <power-ranger.us> 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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On December 2, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 22, 2016 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@power-ranger.us. Also on December 2, 2016, 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 December 30, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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.
Complainant requests the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant owns numerous trademark registrations for its famous POWER RANGERS trademarks in the United States and throughout the world, including those United States Trademark Registrations listed in the chart below.
Since the marks have achieved incontestable status, the trademark registrations are conclusive evidence of the validity of the registered marks and of the registration of the marks, of Complainant’s ownership of the marks, and of Complainant’s exclusive right to use the registered marks in commerce on or in connection with the goods and services specified in the certificates. 15 U.S.C. §1115(b).
Complainant has made widespread use of its POWER RANGERS marks in connection with a live action television series, films, and related merchandising including costumes, toys, clothing, and so forth. Complainant’s POWER RANGERS franchise first launched in 1993. It became the most-watched children’s television program in the U.S. and remains one of the top rated and longest running kids live action series in TV history.
With more than two decades of continuous success, the iconic POWER RANGERS franchise has become a global phenomenon with fans of all ages.
Complainant makes extensive use of its POWER RANGERS mark including on its website at the domain name <powerrangers.com>. Costumes are among the numerous products and services that Complainant sells under its POWER RANGERS mark.
FACTUAL AND LEGAL GROUNDS
A. Complainant
The domain name is virtually identical to Complainant’s POWER RANGERS mark.
The domain name <power-ranger.us> consists of the identical POWER RANGERS mark, except that it deletes the “s” at the end, making the word singular, and it adds a dash instead of a space in between “power” and “ranger.”
Many panels have found that domain names that are nearly identical to the Complainant’s trademark are confusingly similar for purposes of this analysis. See, e.g., The Hershey Company, Hershey Chocolate & Confectionery Corporation and Hershey Canada Inc. v. R Reaves, FA0704000967818 (Forum June 8, 2007) (ordering transfer of chocolatekiss.com, singular version of KISSES trademark); Capital One Financial Corp. v. Above.com Domain Privacy / Above.com Domain Privacy, FA 1584216 (Nat. Arb. Forum November 11, 2014) (confusing similarity where “domain name contains the entire mark, with only the elimination of the space between its terms and the addition of a generic Top Level Domain (‘gTLD’)”).
In sum, the domain name is confusingly similar to Complainant’s POWER RANGERS trademark.
Respondent has no rights or legitimate interests in respect of the domain name.
As discussed in detail in section [c] below, Respondent uses the domain name for a website where it sells counterfeit POWER RANGERS costumes.
Respondent has made no use or demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services.
Respondent has not been commonly known by the domain name.
Respondent is not making a legitimate noncommercial or fair use of the domain name. Rather, Respondent’s use of the domain name is with the intent to misleadingly divert consumers to the websites at the domain name for commercial gain. On the website at the domain name, Respondent offers for sale counterfeit versions of Complainant’s POWER RANGERS costumes. The WHOIS record for the domain name is attached.
It is well established that a respondent’s use of a domain to sell counterfeit versions of a complainant’s products does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See eLuxury.com Inc. v. WangJunJie, FA 1075554 (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).
In sum, Respondent has no rights or legitimate interests in respect of the domain name.
Respondent registered and uses the domain name in bad faith. Respondent uses the domain name for websites where it is selling counterfeit versions of Complainant’s POWER RANGERS costumes.
This demonstrates bad faith under Policy ¶4(b)(iv) because, by using the domain name, Respondent has intentionally attempted 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, and/or endorsement of its website and of products on its website.
Specifically, Internet users who arrive at the website at the domain name <power-ranger.us> are likely to be confused that the website belongs to Complainant, the owner of the POWER RANGERS trademark. Internet users are likely to experience initial interest confusion based on the domain name’s inclusion of the POWER RANGERS trademark. Once Internet users view the website, they are likely to remain confused that the website belong to Complainant, or that the website are authorized by, affiliated with and/or endorsed by Complainant, since the website makes prominent use of Complainant’s registered POWER RANGERS trademark and the website offers for sale counterfeit versions of Complainant’s POWER RANGERS branded costumes. The website also uses a copyright symbol “© 2009-2013 Power-Ranger.us All rights reserved,” which only furthers the false appearance that it is Complainant or is authorized to use the copyrights and trademarks belonging to Complainant. In short, Respondent is passing itself off as Complainant in bad faith.
It is well established that the use of a domain name for a website to sell counterfeit versions of complainant’s products constitutes bad faith under Policy ¶4(b)(iv). See, e.g., Gilead Sciences, Inc. and Gilead Sciences Ireland UC v. Bernou Bom, FA1609001695322 (FORUM Oct. 31, 2016) (finding bad faith under Policy ¶4(b)(iv) where Respondent is selling counterfeit products and passing itself off as Complainant).
Additionally, Respondent’s use and registration of the domain name amounts to bad faith under Policy ¶4(b)(iii) because Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor.
Specifically, Respondent is using the domain name for a website to sell counterfeit POWER RANGERS branded costumes in direct competition with Complainant’s sales of its authentic POWER RANGERS branded costumes.
It is well established that the use of a domain name for a website to sell counterfeit versions of complainant’s products constitutes bad faith under Policy ¶4(b)(iii). See H-D U.S.A., LLC v. Linchunming / linchunming, FA1411001589214 (FORUM Dec. 22, 2014) (“As mentioned above, Respondent uses the domain name to promote counterfeit goods like those offered by Complainant. Doing so disrupts Complainant’s business and demonstrates Respondent’s bad faith under Policy ¶4(b)(iii).”).
Respondent’s bad faith is undeniable given its registration and use of the domain name.
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 or 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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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 POWER RANGERS mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,893,768, registered May 9, 1995). Registration of a mark with a governmental authority (such as the USPTO) is normally sufficient to establish rights in the mark. See Paisley Park Enters. v. Lawson, FA 384834 (Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶4(a)(i) through registration of the mark with the USPTO). Complainant’s registration of the POWER RANGERS mark with the USPTO is sufficient to establish rights in the mark under Policy ¶4(a)(i).
Complainant claims Respondent’s <power-ranger.us> is confusingly similar to the POWER RANGERS mark because it contains the entire mark, merely differing by the omission of the space and the final “s,” and addition of the ccTLD “.us.” A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. Likewise, a space is a prohibited character in a domain name and its omission must be disregarded under a Policy ¶4(a)(i) analysis. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶4(a)(i)); see also Allied Bldg. Prods. Corp. v. Henkel, FA 827652 (Forum Dec. 11, 2006) (holding that “it is well established that the top-level domain, here “.us,” is insignificant with regard to UDRP analysis” when determining confusing similarity). Omitting an “s” is not material under a Policy ¶4(a)(i) analysis, de minimis non curat lex. See Lockheed Martin Corporation v. toyosei maruyama, FA 1620489 (Forum July 7, 2015) (“Simply removing the letter ‘s’ from a mark in the creation of a domain name still creates a confusingly similar domain name.”). The <power-ranger.us> domain name is confusingly similar to Complainant’s POWER RANGERS mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case 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 has 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 claims Respondent has no rights or legitimate interests in <power-ranger.us> because it is not commonly known by the disputed domain name. Where there is no response, the WHOIS information alone supports a finding the respondent is not commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS information of record identifies Respondent as “hongyan yao.” There is no obvious relationship between Respondent’s name and the domain name. Respondent has not been commonly known by the disputed domain name under Policy ¶4(c)(ii).
Complainant claims Respondent uses the disputed domain name to sell counterfeit costumes, which is not a bona fide offering of goods or services or legitimate noncommercial or fair use. Selling counterfeit goods on a domain evidences a lack of rights or legitimate interests in the domain under Policy ¶¶4(c)(i) & (iii). See eLuxury.com Inc. v. WangJunJie, FA 1075554 (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). It seems clear Respondent intends to divert Internet users to its website for commercial gain. Respondent’s <power-ranger.us> resolves to a website selling counterfeit versions of Complainant’s POWER RANGERS costumes. Respondent’s use of the disputed domain name amounts to neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶4(c)(i) & (iii).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent’s registration and use of <power-ranger.us> is in bad faith because Respondent sells counterfeit costumes, which attracts and confuses Internet users for the purpose of Respondent making a profit. Using a domain to sell counterfeit goods is evidence of bad faith under Policy ¶¶4(b)(iii) and (iv). See H-D U.S.A., LLC v. Linchunming / linchunming, FA1411001589214 (Forum Dec. 22, 2014) (“As mentioned above, Respondent uses the domain name to promote counterfeit goods like those offered by Complainant. Doing so disrupts Complainant’s business and demonstrates Respondent’s bad faith under Policy ¶4(b)(iii).”); see also H-D Michigan, LLC v. Ross, FA 1250712 (Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion). Respondent uses the website’s text to further increase confusion in the minds of Internet users about the source, sponsorship, affiliation, and/or endorsement of its websites and of products thereon. Specifically, Respondent essentially passes itself off as Complainant when it describes the POWER RANGERS brand as “a long-running American entertainment and merchandising franchise built around a live action children's television series featuring teams of costumed heroes.” Respondent has engaged in bad faith registration and use of the disputed domain pursuant to Policy ¶¶4(b)(iii) and (iv).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the usTLD Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <power-ranger.us> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Friday, January 6, 2017
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