PopSockets LLC v. CHRISTOPHER DERUYTER
Claim Number: FA1705001730649
Complainant is PopSockets LLC (“Complainant”), represented by Julianne M. Hartzell of Marshall, Gerstein & Borun LLP, Illinois, USA. Respondent is CHRISTOPHER DERUYTER (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <popgrips.com>, registered with Enom, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Daniel B. Banks, Jr., as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 8, 2017; the Forum received payment on May 8, 2017.
On May 9, 2017, Enom, Inc. confirmed by e-mail to the Forum that the <popgrips.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 May 11, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 31, 2017 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@popgrips.com. Also on May 11, 2017, 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 May 11, 2017.
On May 18, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Daniel B. Banks, Jr., 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, PopSockets LLC, is a leading provider of grips and clip accessories for handheld electronic devices. In connection with this business, Complainant has adopted and continuously used a family of POP marks—with POP as the family indicator—which includes POPCLIP and POPSOCKETS. Complainant claims rights in the POPCLIP and POPSOCKETS marks based upon multiple registrations with the United States Patent and Trademark Office (“USPTO”) (e.g. POPCLIP—Reg. No. 4,942,725, registered Apr. 19, 2016; POPSOCKETS—Reg. No. 4,572,125, registered July 22, 2014). The use of POP is distinctive such that Complainant has common law rights in the POP mark itself when it appears with other words to describe an accessory for a handheld electronic device. Respondent’s <popgrips.com> is confusingly similar to the POPCLIP and POPSOCKETS mark, as it merely combines POP—the dominant feature of both marks—with “grips,” a descriptive term used to describe one of the products sold under Complainant’s marks. The disputed domain name also includes the generic top-level domain name (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <popgrips.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the POP marks for any reason. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name and resolving website seeks in an attempt to mislead Internet users by including content from Complainant’s website and offering for sale counterfeit versions of Complainant’s products.
Respondent’s registration and use of the disputed domain is in bad faith under the Policy. Respondent is disrupting Complainant’s business by diverting potential customers of Complainant and attracting them for commercial gain. Further, Respondent clearly had actual knowledge of Complainant and Complainant’s rights in the POP marks at the time it registered and subsequently used the disputed domain name.
B. Respondent
Respondent's entire statement regarding Complainant's allegations is that he consents to immediately, and forever moving forward, discontinue use of the disputed domain name as of May 11, 2017.
The disputed domain name was created on December 14, 2016.
1 - The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
2 - Respondent has no rights or legitimate interests in respect of the domain name.
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.
Complainant claims rights in the POPCLIP and POPSOCKETS marks based upon registration of the marks with the USPTO (e.g. POPCLIP—Reg. No. 4,942,725, registered Apr. 19, 2016; POPSOCKETS—Reg. No. 4,572,125, registered July 22, 2014). Registration of a mark with the USPTO is sufficient to establish rights in that 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). The Panel finds that Complainant’s registration of the POP marks with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next claims that Respondent’s <popgrips.com> is confusingly similar to the POPCLIP and POPSOCKETS mark, as it merely combines POP—the dominant feature of both marks—with “grips,” a descriptive term used to describe one of the products sold under Complainant’s marks, and the gTLD “.com.” Neither omission of a descriptive term from a mark nor addition of a descriptive term are changes which distinguish a domain name from the mark for the purposes of Policy ¶ 4(a)(i). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Forum Feb. 13, 2007) (holding that “the Domain Name is confusingly similar to Complainant’s ‘TESCO PERSONAL FINANCE’ mark in that it merely omits the descriptive term ‘personal.’”); see also Am. Online, Inc. v. Karandish, FA 563833 (Forum Nov. 2, 2005) (finding that the addition of the descriptive term “talk” to a registered mark does not sufficiently distinguish a domain name under Policy ¶ 4(a)(i)). Also, the addition of a gTLD does not distinguish a domain name forma mark. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Complainant contends that the “POP” portion of its mark is the dominant feature, and that the public associates the use of “POP” in this market with Complainant. The Panel finds that the disputed domain name is confusingly similar to the POP marks per Policy ¶ 4(a)(i).
The Panel finds that Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Therefore, the burden shifts to Respondent to show it does have 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 argues that Respondent has no rights or legitimate interests in <popgrips.com> as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the POP marks in any way. WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. 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)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The Panel notes that a privacy service was used by Respondent, but was lifted as a result of the commencement of this proceeding. The Panel also notes that the WHOIS information of record identifies Respondent as “CHRISTOPHER DERUYTER.” Additionally, lack of evidence in the record to indicate that the respondent had been authorized to register a domain name using a complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in a disputed domain name. 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). The Panel therefore finds, under Policy ¶ 4(c)(ii), that Respondent has not been commonly known by the disputed domain name.
Complainant further argues Respondent’s lack of rights or legitimate interests in <popgrips.com> is evidenced by the failure to use the name for a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name and resolving website in an attempt to mislead Internet users by including content from Complainant’s website and offering for sale counterfeit versions of Complainant’s products. Such use is not indicative of rights or legitimate interests in a disputed domain name per Policy ¶¶ 4(c)(i) or (iii). See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Keihin Corp. v. Youli Ltd., FA 1106190 (Forum Dec. 18, 2007) (finding no rights and legitimate interests when the respondent sold counterfeit versions of the complainant’s products in competition with the complainant’s business). Complainant contends that Respondent’s inclusion of images and videos referring to Complainant’s products was done in an attempt to pass off as Complainant, and that the products offered are counterfeit. The Panel therefore finds that Respondent lacks rights and legitimate interests in the disputed domain name per Policy ¶¶ 4(c)(i) and (iii).
Complainant contends Respondent has registered and used the disputed domain name in bad faith as evidenced by Respondent’s effort to divert Internet users for Respondent’s personal gain. Use of a disputed domain name and resolving website to sell counterfeit products of complainant’s is evidence of bad faith per Policy ¶¶ 4(b)(iii) and (iv). See H-D U.S.A., LLC v. Linchunming / linchunming, FA1411001589214 (Forum December 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 Affliction, Inc. v. Chinasupply, FA 1223521 (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, and thus showed Policy ¶ 4(b)(iv) bad faith). Complainant also contends that Respondent’s use of images from Complainant’s legitimate webpage enhances the confusing similarity of the resolving webpage. The Panel finds that Respondent acted in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Complainant argues that Respondent had actual knowledge of Complainant's rights in the POP marks. Complainant argues that Respondent's offering of counterfeit products and misappropriated content from Complainant’s own website at the resolving website indicates that Respondent had actual knowledge of Complainant's mark and rights. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "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 <popgrips.com> domain name be TRANSFERRED FROM RESPONDENT TO COMPLAINANT.
Daniel B. Banks, Jr., Panelist
Dated: May 22, 2017
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