PopSockets LLC v. Jing Wang
Claim Number: FA2001001878868
Complainant is PopSockets LLC (“Complainant”), represented by Benjamin T. Horton of Marshall, Gerstein & Borun LLP, Illinois, USA. Respondent is Jing Wang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain name at issue are <custompopgrips.com> and <custompopsgrip.com>, registered with Chengdu West Dimension Digital Technology Co., Ltd.
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 January 14, 2020; the Forum received payment on January 14, 2020.
On January 14, 2020, Chengdu West Dimension Digital Technology Co., Ltd. confirmed by e-mail to the Forum that the <custompopgrips.com> and <custompopsgrip.com> domain names are registered with Chengdu West Dimension Digital Technology Co., Ltd. and that Respondent is the current registrant of the names. Chengdu West Dimension Digital Technology Co., Ltd. has verified that Respondent is bound by the Chengdu West Dimension Digital Technology Co., Ltd. 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 January 20, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 10, 2020 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@custompopgrips.com, postmaster@custompopsgrip.com. Also on January 20, 2020, 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 February 17, 2020, 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant, PopSockets LLC., is one of the United States’ leading providers of grip and mount accessories for handheld electronic devices. Complainant has rights in a number of trademarks that incorporate the word “pop” such as POP, POPGRIP, POPSOCKET, POPWALLET, POPTOP, and others, through its use in commerce dating back to 2011 and its registration with multiple government registration agencies including the United States Patent and Trademark Office (“USPTO”) dating back to 2014. These registrations create a rebuttable presumption that the marks are inherently distinctive. Complainant also uses certain domain names, including <popsockets.com> and <popgrips.com>, to display a website that promotes the sale of its products. Each of Respondent’s <custompopgrips.com> and <custompopsgrip.com> domain names, registered on March 28, 2019 and July 20, 2019 respectively, is confusingly similar to Complainant’s marks. Respondent incorporates the POP and POPGRIP marks in their entirety and adds the generic term “custom”, the letter “s”, and “.com” generic top-level domain (“gTLD).
Respondent has no rights or legitimate interests in the <custompopgrips.com> and <custompopsgrip.com> domain names. Respondent is not licensed or authorized to use Complainant’s marks and is not commonly known by the disputed domain names. Respondent also fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Respondent attempts to pass itself off as Complainant by selling unauthorized or possibly counterfeit versions of Complainant’s products.
Respondent registered and uses the <custompopgrips.com> and <custompopsgrip.com> domain names in bad faith as Respondent attempts to disrupt Complainant’s business by passing itself off as Complainant for commercial gain. Furthermore, Respondent had actual knowledge of Complainant’s rights in Complainant’s marks due to its extensive use of such marks and copyrighted product images on its webpages.
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”).
Preliminary Issue: Language of Proceedings
The Registration Agreement for the disputed domain names is in the Chinese language. However, Complainant requests that this administrative proceeding be conducted in the English language pursuant to UDRP Rule 11(a). It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as particularly compelling to demonstrate a respondent’s understanding of the language requested by a complainant are: WHOIS information which establishes Respondent in a country which would demonstrate familiarity with the requested language; the language of the words making up the disputed domain name; the language used in the website that resolves from the disputed domain name; and the language used in any correspondence from a respondent. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). Additional factors may include past cybersquatting activity by the respondent; the language in which a complainant conducts its business; the cost and/or delay that would be involved in translating the documents in a given case into the language used in the registration agreement for the disputed domain names; and the relative prejudice that might be caused to either party based upon language selection. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”)
Pursuant to UDRP Rule 11(a), this Panel finds that persuasive evidence has been adduced by Complainant to indicate the likelihood that the Respondent is conversant and proficient in the English language. The disputed domain names are made up of English words and the content of Respondent’s websites appears entirely in the English language. After considering the circumstance of the present case, the Panel decides that the proceedings should be conducted in English. This decision, notwithstanding, it is noted that the FORUM has sent its notices to the Respondent in both the English and Chinese languages.
Complainant asserts rights in a family of POP-formative marks, including POP and POPGRIP, based upon registration of such marks with multiple government agencies including with the USPTO. Registration of a mark with multiple trademark organizations is sufficient to establish rights in said mark per Policy ¶ 4(a)(i). See Astute, Inc. v. Raviprasath C / Astute Solution Pvt Ltd, FA 1546283 (Forum Apr. 9, 2014) (finding that registrations with two major trademark agencies is evidence enough of Policy ¶ 4(a)(i) rights in the ASTUTE SOLUTIONS mark.) Here, Complainant has provided the Panel with copies of its USPTO and UKIPO registration information for its POP-formative marks. Therefore, the Panel finds that Complainant has rights in its asserted marks per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <custompopgrips.com> and <custompopsgrip.com> domain names are confusingly similar to its marks, as Respondent merely adds a modifier and a gTLD to the mark. Additions of a generic and/or descriptive terms and a gTLD to a complainant’s mark does not negate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Additionally, although Complainant does not argues this, the Panel may note that Respondent also adds the letter “s” to the Complainant’s marks in both domain names. Misspelling of a complainant’s mark, either by adding or removing letters may not sufficiently mitigate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Am. Online, Inc. v. David, FA 104980 (Forum Apr. 10, 2002) (“The misspelling of a famous mark does not diminish the confusingly similar nature between the marks and the disputed domain names.”) Here, Complainant argues that Respondent incorporates the POP-formative marks, specifically the POP and POPGRIP marks in their entirety, and adds the generic term “custom”, the letter “s”, and the “.com” gTLD. Therefore, the Panel finds that each of Respondent’s <custompopgrips.com> and <custompopsgrip.com> domain names are confusingly similar to Complainant’s 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). Should it succeed in this 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 argues that Respondent lacks rights or legitimate interests in the <custompopgrips.com> and <custompopsgrip.com> domain names as Respondent is not commonly known by the disputed domain names nor has Respondent been given license or consent to use Complainant’s marks or register domain names using such marks. In considering this issue WHOIS information may be used to determine whether a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). 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 names list the registrant as “Jing Wang” and, in the absence of any Response or other submission by Respondent, there is no other evidence to suggest that Respondent is known otherwise or that it is authorized to use any of the Complainant’s marks. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent attempts to pass itself off as Complainant by selling unauthorized versions of Complainant’s products. Use of a disputed domain name to pass oneself off as a complainant and sell or advertise complainant’s products is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See The Lincoln Electric Company v. Privacy protection service - whoisproxy.ru, FA 1651493 (Forum Jan. 13, 2016) (noting that, as Respondent used the disputed domain to promote Complainant’s distributor without license to do so, Respondent did not demonstrate any bona fide offering of goods or services or any legitimate noncommercial or fair use). Here, Complainant has provided the Panel with screenshots of the websites that resolve from Respondent’s <custompopgrips.com> and <custompopsgrip.com> domain names. These show Complainant’s POP, POPSOCKETS, and POPGRIP marks as well as certain of Complainant’s graphics which are the subject of copyright registration certificates, copies of which are also provided by Complainant. All of this leads the Panel to the conclusion that Respondent is attempting to confuse consumers and imply that the products sold on its websites are Complainant’s genuine products. Furthermore, the websites contain no indication of the lack of any relationship between Respondent and Complainant so, even assuming that genuine products are being distributed through these websites, the standard in the seminal case of Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO November 6, 2001) has not been met. Therefore, the Panel finds that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant asserts that Respondent had actual knowledge of Complainant’s rights in the POP-formative marks prior to registration of the <custompopgrips.com> and <custompopsgrip.com> domain names. Actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain name is an adequate foundation upon which to build a case of bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (bad faith found where “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 a complainant’s mark prominently on a display may be evidence of actual knowledge prior to registration of the disputed domain name. See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Here, Complainant argues that Respondent’s knowledge of Complainant’s mark prior to registering the disputed domain names is apparent from the notoriety of Complainant’s trademark and from Respondent’s use of the domain names to pass itself off as Complainant and offer its unauthorized products. In support, it submits a number of media articles mentioning its marks as well as screenshots of Respondent’s websites that show extensive use of the marks. Therefore, the Panel finds that Respondent had actual knowledge of Complainant’s rights in Complainant’s marks prior to registration of the disputed domain names.
Complainant next argues that Respondent registered and uses the <custompopgrips.com> and <custompopsgrip.com> domain names in bad faith as Respondent attempts to disrupt Complainant’s business by passing itself off as Complainant and selling Complainant’s products. Use of a domain name to intentionally disrupt and attract consumers to a website for commercial gain by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the website constitutes bad faith per Policy ¶¶ 4(b)(iii) and (iv). See Guess? IP Holder L.P. and Guess?, Inc. v. LI FANGLIN, FA 1610067 (Forum Apr. 25, 2015) (finding respondent registered and used the domain name in bad faith per Policy ¶ 4(b)(iii) because the respondent used the resolving website to sell the complainant’s products, using images copied directly from the complainant’s website); see also Nike Innovate v. Vija Martinsson, FA1701188 (Forum Dec. 22, 2016) (“[p]anels have found a respondent acted in bad faith when its passing off behavior served to attract Internet users for commercial gain”). As previously mentioned, Complainant has provided the Panel with screenshots of Respondent’s resolving webpages that show Respondent displaying Complainant’s mark, various copyright protected graphics owned by Complainant, and purporting to offer Complainant’s products (or similar products) for sale. In light of this evidence and with no counter evidence or arguments by Respondent, the Panel finds that Respondent is seeking to disrupt Complainant’s business as well as attract users to its websites for commercial gain based upon a likelihood of confusion. It thus registered and is using the disputed domain names in bad faith per Policy ¶¶ 4(b)(iii) and (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 <custompopgrips.com> and <custompopsgrip.com> domain names be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: February 18, 2020
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