Otter Products, LLC v. robot flower
Claim Number: FA1802001771989
Complainant is Otter Products, LLC ("Complainant"), represented by Daniel Greenberg of Lexsynergy Limited, United Kingdom. Respondent is robot flower ("Respondent"), Taiwan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <otterbox.shop>, registered with GoDaddy.com, LLC.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 15, 2018; the Forum received payment on February 15, 2018.
On February 15, 2018, GoDaddy.com, LLC confirmed by email to the Forum that the <otterbox.shop> 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 ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On February 15, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 7, 2018 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@otterbox.shop. Also on February 15, 2018, the Written Notice of the Complaint, notifying Respondent of the email 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 March 13, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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 manufactures protective cases for smartphones and other electronic devices. Complainant has used OTTER BOX and OTTERBOX in connection with its products since 1998. Complainant owns registrations for these and related marks in the United States and other jurisdictions. Complainant states it had gross turnover exceeding $4 billion from 2012 to 2016, and marketing expenses of $150 million from 2008 to 2016. Complainant claims that its OTTERBOX mark is well-known internationally, and that it has acquired common law trademark rights arising from its extensive trading and marketing activities.
Respondent registered the disputed domain name <otterbox.shop> domain name in September 2016. The domain name resolves to a website that states only "website coming soon! Please check back soon to see if the site is available." Complainant states that it has no association with Respondent and has never authorized or licensed Respondent to use its marks, and that Respondent is not commonly known by the domain name. Complainant notes that Respondent has also registered several other domain names that correspond to trademarks used by other manufacturers of phone cases (<casetify.shop>, <incipio.shop>, <spigen.shop>, and others), and asserts that Respondent is targeting this market. Complainant further notes that its OTTERBOX mark is registered with ICANN's Trademark Clearinghouse, and that Respondent therefore would have been notified of Complainant's trademark rights when it applied to register the disputed domain name.
Complainant contends on the above grounds that the disputed domain name <otterbox.shop> is identical to Complainant's OTTERBOX and OTTER BOX marks; that Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is identical to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was 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.").
The disputed domain name <otterbox.shop> corresponds to Complainant's registered OTTERBOX and OTTER BOX marks (omitting the space in the latter), adding only the ".shop" top-level domain. For purposes of paragraph 4(a)(i) of the Policy, the domain name is identical to Complainant's marks. See, e.g., Tommy Hilfiger Licensing, LLC; Deckers Outdoor Corp.; Otter Products LLC v. 曾燕 (Zeng Yan); 赵兴明 (Zhao Xing Ming), D2017-2384 (WIPO Feb. 5, 2018) (finding <otterbox.info> identical or confusingly similar to OTTERBOX); Aston Martin Lagonda Ltd v. Shinichi Wanikawa, Wanikawa Shinichi, D2017-2017 (WIPO Dec. 5, 2017) (finding <astonmartin.shop> identical to ASTON MARTIN); Edgewell Personal Care Brands, LLC v. Frans Noordermeer, D2016-2440 (WIPO Jan. 30, 2017) (finding <wilkinsonsword.shop> identical to WILKINSON SWORD). The Panel therefore considers the disputed domain name to be identical to a mark in which Complainant has rights.
Under the Policy, Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization, and there is no indication that Respondent has made any active use of the domain name. See, e.g., Margaritaville Enterprises, LLC v. Domain Administrator / China Capital Investments Ltd., FA 1769115 (Forum Feb. 23, 2018) (finding lack of rights or legitimate interests where domain name was used solely to display "coming soon" web page).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith. Under paragraph 4(b)(i) of the Policy, bad faith may be shown by evidence that a domain name was acquired "primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent's] documented out-of-pocket costs directly related to the domain name." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent does not appear to have made any active use of the disputed domain name. In the absence of any explanation from Respondent, the Panel considers it reasonable to infer that Respondent registered the domain name intending to use it in a manner calculated to create and exploit confusion with Complainant's well-known mark, most likely either by selling the domain name or by using it to attract Internet users seeking Complainant, and that Respondent is maintaining the domain name for that purpose. See, e.g., Kohler Co. v. Alberto Campos / Campos, FA 1745463 (Forum Sept. 14, 2017) (finding bad faith registration and use in similar circumstances). Respondent had actual knowledge of Complainant's trademark rights when it registered the domain name. See, e.g., Pierre Balmain S.A. v. Nashan, D2017-1552 (WIPO Sept. 26, 2017) (finding that respondent must have been aware of trademark rights at time of domain name registration based upon Trademark Clearinghouse notification); Carlsberg A/S v. Xu Guo Xing, D2017-0301 (WIPO Apr. 17, 2017) (same). Respondent's registration of other domain names corresponding to trademarks of other companies in the same industry lends yet further support to the inference of bad faith. Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <otterbox.shop> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: March 13, 2018
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