Garret Gordon / Qloud Products, LLC v. Shanshan Huang / This domain name is for sale
Claim Number: FA2001001879256
Complainant is Garret Gordon / Qloud Products, LLC (“Complainant”), represented by Garret Allen Gordon of Qloud Products, LLC, United States. Respondent is Shanshan Huang / This domain name is for sale (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <groovyscrub.com>, registered with NameSilo, 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.
Charles A. Kuechenmeister, Panelist.
Complainant submitted a Complaint to the Forum electronically on January 16, 2020; the Forum received payment on January 16, 2020.
On January 16, 2020, NameSilo, LLC confirmed by e-mail to the Forum that the <groovyscrub.com> domain name (the Domain Name) is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 January 21, 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@groovyscrub.com. Also on January 21, 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 Charles A. Kuechenmeister 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.
Two parties, Garret Gordon and Qloud Products, LLC, filed this administrative proceeding as Complainants. The rules governing multiple complainants are Rule 3(a) and the Forum’s Supplemental Rule 1(e). Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint in accordance with the Policy and these Rules.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as the “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.” Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In this case, the Complaint offers no written description or explanation of whatever business relationship may exist between Mr. Gordon and Qloud Properties, LLC but Mr. Gordon’s email address as set forth in the Complaint is ggordon@qloudproducts.com. The Complaint states in various places as follows: “I filed the trademark application on July 15, 2015,” and “complainant sells a product called GroovyScrub.” The trademark GROOVYSCRUB was registered to Qloud Products, LLC with the United States Patent and Trademark Office (USPTO), and the address for that firm as shown on the TESS report submitted as Amended Complaint Exhibit A is in the same city, Orlando Florida, as the address listed for Mr. Gordon in the Complaint. On this evidence, the Panel is persuaded that Mr. Gordon has at least a controlling interest or principal executive office in Qloud Products, LLC, and this constitutes a sufficient nexus among them to enable each of them to claim rights in the Domain Name. Under these circumstances it is proper for both Complainants to file and prosecute a single Complaint. The Panel will treat them as a single entity for the purposes of this proceeding. All references to “Complainant” in this Decision, even though in the singular, are to both named Complainants.
A. Complainant
Complainant has rights in the GROOVYSCRUB mark based upon its registration of the mark with the USPTO (Reg. No. 4,966,346, registered May 24, 2016).
Respondent has no rights or legitimate interests in the Domain Name. Respondent offers the web site for sale and also uses it to host advertising links.
Respondent registered and is using the Domain Name in bad faith because it attempts to sell the Domain Name, and prevents Complainant from using the Domain Name itself, which it would prefer.
B. Respondent
Respondent did not submit a Response in this proceeding.
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 Complainant to prove each of the following three elements to obtain an order cancelling or transferring the Domain Name:
(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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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. Nevertheless, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. 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”), WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), at ¶ 4.3 (“In cases involving wholly unsupported and conclusory allegations advanced by the complainant, . . . panels may find that—despite a respondent’s default—a complainant has failed to prove its case.”).
The Panel finds as follows with respect to the matters at issue in this proceeding:
The GROOVYSCRUB mark was registered to Complainant with the USPTO (Reg. No. 4,966,346) on May 24, 2016 (Amended Complaint Exhibit 1). This registration is sufficient to establish Complainant’s rights in that mark for the purposes of Policy ¶ 4(a)(i). Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark).
Respondent’s <groovyscrub.com> Domain Name is identical or confusingly similar to Complainant’s mark as it incorporates the GROOVYSCRUB mark verbatim, merely adding the generic top level domain (gTLD) “.com.” This change is not sufficient to distinguish the Domain Name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). 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). The WIPO Overview 3.0 at ¶ 1.7, states that the test for confusing similarity “typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name.” Notwithstanding the changes described above, Complainant’s mark is clearly recognizable within the Domain Name.
For the reasons set forth above, the Panel finds that the Domain Name is identical or confusingly similar to the GROOVYSCRUB mark, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. 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”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to the respondent of the dispute, the respondent has used or has made demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because it is not being used for any purpose other than to offer it for sale and to offer advertising links. These allegations are addressed as follows:
Amended Complaint Exhibit 3 is a screenshot of the GoDaddy web site as of October 4, 2015, which offers the Domain Name for sale at a price of $950.00. Amended Complaint Exhibit 4 is a screenshot of the web site resolving from the Domain Name as of January 16, 2020. It features links to web sites offering various products and services including “women scrubs,” “scrub uniforms,” “nursing scrub,” “cheap scrub sets” and other products and services unrelated to scrub clothing. It also states that the Domain Name is for sale at a price of $8,500.00. Offering to sell a domain name to the general public is evidence that a respondent lacks rights or legitimate interests in the name for the purposes of Policy ¶ 4(a)(ii). 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name).
Likewise, using a confusingly similar domain name to operate a pay-per-click web site does not qualify as a bona fide offering of goods or services for the purposes of Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use for the purposes of Policy ¶ 4(c)(iii)). Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
Apart from its allegations of links to other web sites, Complainant did not address the examples of ways in which a respondent might establish rights or legitimate interests in a domain name pursuant to Policy ¶ 4(c). Nevertheless, the evidence Complainant offered is sufficient to establish a prima facia case that Respondent has no such rights or interests. First, as discussed above in connection with the pay-per-click allegations, Respondent is not using the Domain Name in connection with a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii).
Second, the information furnished to the Forum by the registrar lists the registrant of the Domain Name as “Shanshan Huang / This domain name is for sale.” Neither of these names bears any resemblance to the Domain Name. Evidence could, of course, in a given case demonstrate that the respondent is commonly known by a domain name different from the name in which it registered the domain name, e.g., the case of a domain name incorporating the brand name of a specific product offered by and associated with the respondent. In the absence of any such evidence, however, UDRP panels have consistently held that WHOIS evidence of a registrant name which does not correspond with the domain name is sufficient to prove that the respondent is not commonly known by the domain name. Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name), 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). The Panel is satisfied that Respondent has not been commonly known by the Domain Name as contemplated by Policy ¶ 4(c)(ii).
The evidence furnished by Complainant establishes the required prima facie case. On that evidence, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the 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 the respondent’s web site or location or of a product of service on the respondent‘s web site or location.
The evidence of Respondent’s conduct discussed above in the rights or legitimate interests analysis also supports a finding of bad faith registration and use, based upon one or more of the foregoing grounds articulated in the Policy and upon additional grounds adopted by UDRP panels over the years. First, as discussed above, Respondent is and has since October 2015 been offering to sell the Domain Name for prices ranging from $950.00 to $8,500.00. These prices are well above the costs directly related to the registration. Respondent registered the Domain Name on July 20, 2015 (Amended Complaint Exhibit 2), only five days after Complainant filed its application for registration of its mark with the USPTO (Amended Complaint Exhibit 1) and had listed it for sale by October of that same year. This is persuasive evidence that attempting to sell the Domain Name for a price in excess of the costs directly related to it was its primary motive in registering the Domain Name. A respondent’s general offer to sell a domain name under these circumstances has been held to be evidence of bad faith for the purposes of Policy ¶ 4(b)(i). Airbnb, Inc. v. Super Privacy Service LTD c/o Dynadot, FA 1821386 (Forum Jan. 10, 2019) (“Complainant argues that Respondent registered and uses the <airbnbb.com> domain name in bad faith by offering it for sale. The Panel agrees and finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(i).”).
Second, Respondent is clearly using the Domain Name to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its web site, as described in Policy ¶ 4(b)(iv). Respondent obtains commercial gain from its use of the Domain Name and the resolving web site. Pay-per-click sites are common on the Internet. Under the most common forms of business arrangements relating to these sites, when a visitor to Respondent’s site clicks on one of the links which appear there, Respondent receives compensation from the various web site owners who are forwarded from the site. Most likely, Respondent receives compensation based upon the number of hits the downstream web site owners get from being linked to Respondent’s web site. AllianceBernstein LP v. Texas International Property Associates, Case No. D2008-1230 (WIPO, 2008) (the domain name resolved to a search directory site with links to third-party vendors and the panel inferred that the respondent received click-through-fees when site visitors clicked on those links), and Brownells, Inc. v. Texas International Property Associates, Case No. D2007-1211 (WIPO, 2007), (finding in similar cases that a respondent intentionally attempted to attract internet searchers for commercial gain).
Finally, it is evident that Respondent had actual knowledge of Complainant and its mark when it registered the Domain Name. As discussed above, Respondent registered the Domain Name only five days after Complainant applied for USPTO registration of its mark. Trademark applications filed with the USPTO are public records and are fully available to any person who might inquire. Further, the GROOVYSCRUB mark is unique and whimsical. It is not likely that a person seeking to register a Domain Name for legitimate purposes would create such a name on its own—it had to have selected this name because Complainant had created and was already using it in commerce. Respondent copied it verbatim into the Domain Name. This was no coincidence—Respondent obviously learned about the name from Complainant’s trademark application. Policy ¶ 4(b) recognizes that mischief can assume many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005), Bloomberg Finance L.P. v. Domain Admin - This Domain is For Sale on GoDaddy.com / Trnames Premium Name Services, FA 1714157 (Forum Mar. 8, 2017) (determining that Policy ¶ 4(b) provisions are merely illustrative of bad faith, and that the respondent’s bad faith may be demonstrated by other allegations of bad faith under the totality of the circumstances). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and registering a confusingly similar domain name with actual knowledge of a complainant’s rights in its mark has often been held to be evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Complainant notes correctly that Respondent’s registration of the Domain Name prevents it from using this Domain Name itself, which it prefers over the <groovy-scrub.com> domain name it currently uses. This implicates Policy ¶ 4(b)(ii), but in this case there is no evidence of a pattern of such conduct. Under these circumstances, the Panel cannot find that Respondent’s conduct falls within the provisions of Policy ¶ 4(b)(ii).
Nevertheless, for the three reasons first set forth above, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <groovyscrub.com Domain Name be TRANSFERRED from Respondent to Complainant
Charles A. Kuechenmeister, Panelist
February 18, 2020
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