STOCKX LLC v. Mike Oxlong
Claim Number: FA1807001796483
Complainant is STOCKX LLC ("Complainant"), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Mike Oxlong ("Respondent"), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <stockx.me>, registered with NameCheap, Inc.
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 July 12, 2018; the Forum received payment on July 12, 2018.
On July 13, 2018, NameCheap, Inc. confirmed by email to the Forum that the <stockx.me> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 July 16, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 6, 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@stockx.me. Also on July 16, 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 August 7, 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 operates what it describes as "the world's first online consumer 'stock market of things' for high-demand, limited edition products." Complainant authenticates each piece of merchandise sold through its marketplace, affixing a verification tag before forwarding the item to the buyer and releasing the buyer's funds to the seller. Complainant launched its marketplace in 2016 and closed a $6 million round of funding one year later. Complainant uses STOCKX in connection with this marketplace and owns two U.S. registrations for the mark, in the form of both a standard word mark and a design mark. Complainant states that it has attracted considerable media coverage, citing interviews and reports on CNBC, NPR, Sports Center, The Daily Show, The New York Times, Bloomberg, and Fortune Magazine.
Respondent registered the disputed domain name <stockx.me> in December 2017. The domain name is being used for a website that sells unauthorized, counterfeit copies of Complainant's confirmation emails and physical verification tags. The website was taken down by Respondent's hosting service provider after Complainant notified the provider of Respondent's fraudulent activities. Complainant states that it has not licensed or otherwise permitted Respondent to use its STOCKX mark.
Complainant contends on the above grounds that the disputed domain name <stockx.me> is confusingly similar to its STOCKX mark; that Respondent lacks 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 <stockx.me> merely appends the ".me" top-level domain to Complainant's registered STOCKX trademark. For purposes of the Policy, the domain name is identical to the mark. See, e.g., Certification Trendz, Ltd. v. IT SOL EXPERT / ITSOLEXPERT Limited, FA 1435237 (Forum Apr. 20, 2012) (finding <testking.me> identical to TEST KING and TESTKING); AOL Inc. v. John Michaels a/k/a 5050share, FA 1308890 (Forum Mar. 29, 2010) (finding <mapquest.me> identical to MAPQUEST). The Panel considers the disputed domain name to be identical to Complainant's registered mark.
Under the Policy, the 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 the 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 corresponds to Complainant's registered mark, and it is being used to promote the sale of materials that infringe Complainant's trademark and other intellectual property rights, presumably for the purpose of defrauding Complainant or third parties. Such use is unlikely to give rise to rights or legitimate interests. See, e.g., DG Premium Brands LLC v. Donald Knapp, FA 1746551 (Forum Sept. 25, 2017) (finding lack of rights or legitimate interests where domain name was used to promote the sale of counterfeit goods); Amazon Technologies, Inc. v. John Rood, FA 1705454 (Forum Jan. 12, 2017) (finding lack of rights or legitimate interests where domain name was used to promote fraudulent certification scheme).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the 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 are being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." 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 registered and is using a domain name that corresponds to Complainant's registered mark to promote the sale of materials that infringe Complainant's trademark and other intellectual property rights, presumably for the purpose of defrauding Complainant or third parties. This conduct is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv) of the Policy. See, e.g., DG Premium Brands LLC v. Donald Knapp, supra (finding bad faith where domain name incorporating trademark was used to promote the sale of counterfeit goods); Amazon Technologies, Inc. v. John Rood, FA 1705454 (Forum Jan. 12, 2017) (finding bad faith where domain name incorporating trademark was used to promote fraudulent certification scheme). 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 <stockx.me> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: August 8, 2018
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