PopSockets LLC v. RegC / Jack Motta
Claim Number: FA1907001850926
Complainant is PopSockets LLC (“Complainant”), represented by Gregory J. Chinlund of Marshall, Gerstein & Borun LLP, Illinois, USA. Respondent is RegC / Jack Motta (“Respondent”), Ohio, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <popsocketdecals.com> registered with 1&1 IONOS SE.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 3, 2019; the Forum received payment on July 3, 2019.
On July 4, 2019, 1&1 IONOS SE confirmed by e-mail to the Forum that the <popsocketdecals.com> domain name is registered with 1&1 IONOS SE and that Respondent is the current registrant of the name. 1&1 IONOS SE has verified that Respondent is bound by the 1&1 IONOS SE 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 15, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 5, 2019 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@popsocketdecals.com. Also on July 15, 2019, 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 August 7, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant, PopSockets LLC, is the United States’ leading providers of grip and mount accessories for handheld electronic devices. Complainant has rights in the POPSOCKETS mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,572,125 registered July 22, 2014). See Amend. Compl. Ex. C. Respondent’s <popsocketdecals.com> domain name is confusingly similar to Complainant’s POPSOCKETS mark because it incorporates the mark in its entirety, omits the letter “s,” and adds the generic term “decals” along with the “.com” generic top-level domain (“gTLD”).
ii) Respondent has no rights or legitimate interests in the disputed domain name as Respondent because Respondent is not commonly known by the disputed domain name and is not authorized or permitted to use Complainant’s mark in any fashion. Additionally, Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to pass itself off as Complainant and resolve to a website purporting to offer Complainant’s products for sale. Further, Respondent attempts to divert Internet users for commercial gain.
iii) Respondent registered and used the disputed domain name in bad faith for the purpose of disrupting Complainant’s business. Respondent also intentionally attempts to attract, for commercial gain, Internet users by creating a likelihood of confusion and passing off as Complainant. Lastly, Respondent had knowledge of Complainant’s POPSOCKETS mark.
B. Respondent
Respondent did not submit a response to this proceeding.
1. The disputed domain name was registered on December 27, 2017.
2. Complainant has established rights in the POPSOCKETS mark through its registration with the USPTO (e.g. Reg. No. 4,572,125 registered July 22, 2014).
3. The disputed domain name’s resolving webpage appears to feature Complainant’s POPSOCKETS mark and logo, displays photographs of Complainant’s products, and purports to offer Complainant’s products for purchase.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant claims rights in the POPSOCKETS mark through its registration with the USPTO. Registration of a mark with the USPTO is generally sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Here, Complainant has provided the Panel with a copy of its USPTO registration for the POPSOCKETS mark (e.g. Reg. No. 4,572,125 registered July 22, 2014). See Amend. Compl. Ex. C. Therefore, the Panel finds that Complainant has rights in the POPSOCKETS mark per Policy ¶ 4(a)(i).
Complainant argues that the disputed domain name is confusingly similar to Complainant’s mark as the disputed domain name incorporates the mark in its entirety, omits the letter “s” and adds the generic term “decals” along with the “.com” gTLD. Use of a disputed domain that wholly incorporates a mark and merely omits one letter, adds a generic term and a gTLD is insufficient to defeat a finding of confusing similarity per Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)); see also Klein Tools, Inc. v chenxinqi, FA 1617328 (Forum July 6, 2018) (finding that the <klentools.com> domain name is confusingly similar to the KLEIN TOOLS mark as it contains the entire KLEIN TOOLS mark and merely omits the letter “l” and adds the “.com” generic top-level domain (“gTLD”)). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s POPSOCKETS mark per Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that 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 does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
Complainant argues that Respondent has no rights or legitimate interests in the <popsocketdecals.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed or authorized by the Complainant to use Complainant’s mark. Where a response is lacking, relevant WHOIS information can be used as evidence to show a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). 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). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent lacks rights or legitimate interest in a disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The Panel notes the WHOIS of record identifies the Respondent as “RegC / Jack Motta” and no information in the record indicates that Respondent was authorized to use Complainant’s mark or was commonly known by the disputed domain name. Therefore, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name as Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Further, Complainant claims that Respondent uses the disputed domain name to pass itself off as Complainant and resolve to a website purporting to offer Complainant’s products for sale. Under Policy ¶¶ 4(c)(i) or (iii), use of a domain name to pass off as a complainant and offer a complainant’s products for sale at the resolving website may not be considered a bona fide offering of goods or services or legitimate noncommercial or fair use. See Nokia Corp. v. Eagle, FA 1125685 (Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)). Complainant provided screenshots of the disputed domain name’s resolving webpage which appears to feature Complainant’s POPSOCKETS mark and logo, display photographs of Complainant’s products, and purports to offer Complainant’s products for purchase. See Amend. Compl. Ex. F. As such, the Panel holds that Respondent failed to use the disputed domain name in connection with a bona fide offering or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Next, Complainant argues that Respondent fails to use the disputed domain name to make a bona fide offering or a legitimate noncommercial or fair use because Respondent is attempting to divert Internet users to sell unauthorized products. Using a disputed domain name to diverting Internet users for commercial gain may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Here, Complainant argues that Respondent fully incorporated the POPSOCKETS mark in an attempt to divert, for commercial gain, Internet users searching for Complainant. Complainant provides screenshots of the disputed domain name’s resolving webpage which appears to feature Complainant’s products for sale. See Amend. Compl. Ex. F. Therefore, the Panel holds that Respondent failed to use the disputed domain name in connection with a bona fide offering or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant argues that Respondent registered and uses the disputed domain name in bad faith as Respondent attempts to disrupt Complainant’s business by offering competing goods. Use of a disputed domain to disrupt a complainant’s business and offer competing goods evinces a finding of bad faith registration and use. See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum Jan. 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)). Here, Complainant argues that Respondent attempts to disrupt Complainant’s business by offering competing goods to those offered by Complainant. The Panel recalls that Complainant provided screenshots of the disputed domain name’s resolving webpage which appears to feature products similar to those offered by Complainant. See Amend. Compl. Ex. F. As such, the Panel holds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iii).
Further, Complainant argues that Respondent registered and uses the disputed domain name in bad faith as Respondent intentionally attempts to attract, for commercial gain, Internet users by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name. Use of a disputed domain name to create a likelihood of confusion while using a well-known mark may be evidence of bad faith per Policy ¶ 4(b)(iv). See BBY Solutions, Inc. v. Grant Ritzwoller, FA 1703389 (Forum Dec. 21, 2016) (finding bad faith because the <bestbuyus.com> domain name was obviously connected with the complainant’s well-known BEST BUY mark, thus creating a likelihood of confusion strictly for commercial gain). Here, Complainant argues that Respondent uses its well-known POPSOCKETS mark to confuse Internet users and imply some sort of affiliation exists between Complainant and Respondent. Complainant provides a screenshot of the disputed domain name’s resolving website in support of its contentions. See Amend. Compl. Ex. F. Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Lastly, Complainant argues that Respondent had knowledge of Complainant’s POPSOCKETS mark. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain name is adequate to find bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Use of a disputed domain name that shows Complainant’s mark and products may be evidence of bad faith per Policy ¶ 4(a)(iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (“Complainant contends Respondent’s appropriation of Complainant’s trademark was a clear intent to trade upon Complainant’s reputation and goodwill in order to confuse Internet users. Therefore, the Panel finds Respondent did have actual knowledge of Complainant’s mark prior to registration and this constitutes bad faith per Policy ¶ 4(a)(iii).”). Here, Complainant argues that Respondent offers Complainant’s POPSOCKETS products and displays its mark on its resolving webpage. See Amend. Compl. Ex. F. Therefore, the Panel infers that Respondent had actual knowledge of Complainant’s POPSOCKETS mark which constitutes bad faith per Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <popsocketdecals.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: August 15, 2019
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