Puppies.com, LLC v. dieudonne
Claim Number: FA1910001867840
Complainant is Puppies.com, LLC (“Complainant”), represented by J. Damon Ashcraft of SNELL & WILMER L.L.P, Arizona, USA. Respondent is dieudonne (“Respondent”), Cameroon.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <puppyfinds.info>, registered with Shinjiru Technology Sdn Bhd.
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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 21, 2019; the Forum received payment on October 21, 2019.
On October 22, 2019, Shinjiru Technology Sdn Bhd confirmed by e-mail to the Forum that the <puppyfinds.info> domain name is registered with Shinjiru Technology Sdn Bhd and that Respondent is the current registrant of the name. Shinjiru Technology Sdn Bhd has verified that Respondent is bound by the Shinjiru Technology Sdn Bhd 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 October 23, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 12, 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@puppyfinds.info. Also on October 23, 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 November 14, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, 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
Complainant has provided a worldwide pet selection service since 2002. Complainant has rights in the trademark PUPPYFIND.COM through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) dating back 2006. Respondent’s <puppyfinds.info> domain name, registered on September 16, 2019, is identical or confusingly similar to Complainant’s mark as it includes the entirety of the mark, adds an “s,” and changes the “.com” generic top-level domain (gTLD) to the “.info” gTLD.
Respondent lacks rights or legitimate interests in the <puppyfinds.info> domain name. Respondent is not sponsored by or affiliated with Complainant in any way, and Complainant has never authorized or licensed to Respondent any rights regarding Complainant's PUPPYFIND.COM marks. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the Respondent uses the disputed domain name to deliberately mislead consumers and trade off the goodwill of Complainant’s mark. The disputed domain name resolves to a website that includes a screenshot of Complainant’s login page and which attempts to collect Internet users login and password information.
Respondent registered and uses the <puppyfinds.info> domain name in bad faith. Respondent uses the disputed domain name to capitalize off the goodwill of Complainant and defraud consumers by tricking them into entering user login and password information. In addition, Respondent had at least constructive knowledge of Complainant’s rights in the PUPPYFIND.COM mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent 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 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 asserts rights in the PUPPYFIND.COM mark based on registration with the USPTO. Complainant also claims that it “has accumulated significant worldwide goodwill in the PUPPYFIND.COM Marks”. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Complainant provides copies of its registrations of the PUPPYFIND.COM mark with the USPTO although it does not submit any evidence to support its claim of “significant worldwide goodwill”. In view of the evidence submitted, the Panel finds that Complainant has established rights in the PUPPYFIND.COM mark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <puppyfinds.info> domain name is identical or confusingly similar to Complainant’s mark as it “contains complainant's PUPPYFIND.COM Marks in their entirety”. The Panel notes that the “.com” portion of Complainant’s mark does not appear in the disputed domain name but this should not significantly impact the present analysis. See Huron Consulting Group Inc. v. David White, FA 1701395 (Forum Dec. 6, 2016) (finding that Respondent’s <huroninc.net> domain name is confusingly similar to the HURON CONSULTING GROUP and HURON HEALTHCARE marks under Policy ¶ 4(a)(i) because in creating the domain name, the respondent contains the dominant portion of the marks and appends the term “inc” and a gTLD). Further, the disputed domain name adds the letter “s,” and uses the “.info” gTLD. The addition of an “s” to the most dominant portion of a complainant’s mark does not distinguish a domain name from a mark for the purposes of Policy ¶4(a)(i). See Paperless Inc. v. ICS Inc, FA 1629515 (Forum Aug. 17, 2015) (establishing a confusing similarity between the <paperlessspost.com> domain name and the PAPERLESS POST trademark in part because the domain name contained the entire mark and added an additional “s”). Additionally, the top-level domain “.info” is most often disregarded in an analysis under Policy ¶ 4(a)(i). See Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs.”) The Panel therefore finds that the disputed domain name is confusingly similar to the PUPPYFIND.COM mark under 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). Should it succeed in that effort, the burden then shifts to Respondent to show that 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 contends that Respondent lacks rights or legitimate interests in the <puppyfinds.info> domain name. Complainant argues that Respondent is not licensed or authorized to use Complainant’s mark. While the Complainant does not specifically mention Policy ¶ 4(c)(ii), the Panel views its contention as best fitting within this section. In considering the question of whether a respondent is commonly known by a disputed domain name, the WHOIS information may provide some insight. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the 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 WHOIS information for the disputed domain name lists the registrant as “Dieudonne,” and there is no other evidence to suggest that Respondent is known otherwise or that it is authorized to use the PUPPYFIND.COM mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per ¶ 4(c)(ii).
Complainant further argues that Respondent fails to use the <puppyfinds.info> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use as Respondent uses the disputed domain name to deliberately mislead consumers and trade off the goodwill of Complainant’s mark. In Complainant’s factual assertions, it contends that Respondent uses the disputed domain name in connection with a website that displays a screenshot of Complainant’s own login page. Intent to divert Internet users by creating the impression of affiliation between a respondent and complainant may not be a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”) Complainant provides a screenshot of the resolving webpage of the disputed domain name that uses the Complainant’s mark and displays what appears to be a login page. As Complainant has not submitted into evidence a copy of its own login page the Panel cannot conclude that Respondent has copied the same. However, while the screenshot of Respondent’s website that Complainant has submitted is grainy and of rather poor quality, it does appear that the site contains login fields. The Respondent has not refuted this claim or otherwise participated in this case. Therefore, upon a preponderance of the limited evidence before it, the Panel finds that Complainant has made a prima facie case that Respondent fails to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
Complainant argues that the Respondent had at least constructive knowledge of Complainant’s rights in the mark at the time of registration of the <puppyfinds.info> domain name. Generally, constructive knowledge is not sufficient for a finding of bad faith, however, actual knowledge of Complainant’s mark prior to registering 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.”) Actual knowledge of another’s trademark rights can be inferred from the notoriety of the Complainant’s trademark under Policy ¶ 4(a)(iii). See Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000) (finding that the respondent had actual and constructive knowledge of the complainant’s EXXON mark given the worldwide prominence of the mark and thus the respondent registered the domain name in bad faith).
Complainant asserts that it “has spent years building its pet selection and pet information services and developing the PUPPYFIND.COM Marks…” It goes on to claim that it's PUPPYFIND.COM Marks “are celebrated internationally, evidenced by their popularity, success, and registered trademark rights.” However, apart from copies of its US trademark registrations, Complainant submits no evidence to support these claims and assertions. As such, the Panel has insufficient information upon which to determine the scope or reputation of Complainant’s business or its mark.
Nevertheless, Respondent’s use of the PUPPYFIND.COM mark on the website that resolves from the <puppyfinds.info> domain name demonstrates that it had actual knowledge of Complainant’s mark prior to registering the disputed domain name.
Complainant argues that Respondent registered and uses the domain name <puppyfinds.info> in bad faith as the name capitalizes on the goodwill of Complainant in an attempt to defraud consumers by tricking them into entering user login and password information. Passing oneself off as a complainant in order to phish for users’ personal information can demonstrate bad faith registration and use per Policy ¶ 4(b)(iv). See Jones Lang LaSalle IP, Inc. v. Name Redacted, D2019-1677 (WIPO Sep. 9, 2019) (bad faith found where the disputed domain name was used for “a website that pretends to be an official Internet presence of Complainant by showing the official JLL logo in a manner likely to confuse Internet users and, thus, allowing Respondent to capture sensitive Internet users’ personal data such as, e.g., email addresses, User IDs and/or passwords…”) As noted above, Complainant does not submit into evidence a copy of its own login page. However, the resolving webpage of the disputed domain name displays the Complainant’s mark and a login form that appears likely to confuse Internet users into providing login information. Therefore, as the Respondent has made no submission or otherwise participated in this case to rebut Complainant’s assertions, the Panel finds, upon a preponderance of the limited evidence before it, that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <puppyfinds.info> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: November 15, 2019
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