PopSockets LLC v. wang jing
Claim Number: FA2001001880306
Complainant is PopSockets LLC (“Complainant”), represented by Benjamin T. Horton of Marshall, Gerstein & Borun LLP, Illinois, USA. Respondent is wang jing (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <logopopgrip.com>, registered with Alibaba Cloud Computing (Beijing) Co., Ltd.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 23, 2020; the Forum received payment on January 23, 2020.
On February 4, 2020, Alibaba Cloud Computing (Beijing) Co., Ltd. confirmed by e-mail to the Forum that the <logopopgrip.com> domain name is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. and that Respondent is the current registrant of the name. Alibaba Cloud Computing (Beijing) Co., Ltd. has verified that Respondent is bound by the Alibaba Cloud Computing (Beijing) 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 February 10, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 2, 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@logopopgrip.com. Also on February 10, 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 March 5, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Preliminary Issue: Language Of The Proceeding
In the ordinary course, UDRP Rule 11(a) provides that the language of this proceeding should be the language of the registration agreement governing the challenged domain name. That language is Chinese. However, Complainant has requested that the language of the proceeding should instead be English. In support of this request, Complainant submits that:
(i) the disputed domain name wholly contains English words and characters;
(ii) the content of the website resolving from the domain name is entirely in English;
(iii) the currency identified on the resolving website is US dollars;
(iv) these facts demonstrate Respondent’s proficiency in
English;
(v) Complainant is not conversant with Chinese; and
(vi) translating the documents required to prosecute this
proceeding in Chinese would put Complainant to a substantial financial burden and would unnecessarily delay this proceeding.
Respondent does not contest any of these assertions. For that reason, and because UDRP Rule 11(a) permits this Panel to proceed in a language other than that of the governing registration agreement “having regard to the circumstances of the administrative proceeding,” we conclude that it would be in the interests of justice for us to grant Complainant’s request. See, for example, The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (a panel there exercising discretion in deciding that the language of a proceeding should be English, notwithstanding the different language of the pertinent registration agreement, based on evidence that a respondent had command of the English language).
Accordingly, this proceeding will be conducted in the English language.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is one of the United States’ leading providers of grip and mount accessories for handheld electronic devices.
Complainant holds a registration for the POPGRIP rough its registration with multiple government registration agencies including, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 5,757,735, registered May 21, 2019.
Respondent registered the domain name <logopopgrip.com> on or about August 14, 2019.
The domain name is confusingly similar to Complainant’s POPGRIP mark.
Respondent has not been commonly known by the domain name.
Respondent is not licensed or otherwise authorized to use Complainant’s POPGRIP mark.
Respondent fails to use the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Rather, Respondent uses the domain name to pass itself off online as being Complainant in an effort to confuse Internet users and divert them to a website that purports to offer Complainant’s authentic products, but which are in fact counterfeit.
Respondent profits from this employment of the domain name.
Respondent has no rights to or legitimate interests in the domain name.
Respondent has engaged in a pattern of bad faith registration and use of domain names.
Respondent’s use of the domain name disrupts Complainant’s business.
Respondent knew of Complainant’s rights in the POPGRIP mark prior to registering the domain name.
Respondent registered and uses the domain name in bad faith.
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; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same 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:
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory. See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). But see 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 has rights in the POPGRIP trademark sufficient for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See, for example, Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration of a mark with the USPTO was sufficient to establish a UDRP complainant’s rights in that mark for purposes of demonstrating the complainant’s standing to advance a complaint against a domain name holder).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here China). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <logopopgrip.com> domain name is confusingly similar to Complainant’s POPGRIP trademark. The domain name incorporates the mark in its entirety, merely adding the generic term “logo,” which can be taken to relate to an aspect of Complainant’s business, plus the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See, for example, Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum January 22, 2016) (finding that the addition of a generic term and gTLD to the mark of another in creating a domain name was insufficient to distinguish one from the other under Policy ¶ 4(a)(i)).
See also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum September 27, 2002):
[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
This is because every domain name requires a gTLD or other TLD.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to and legitimate interests in the <logopopgrip.com> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the domain name <logopopgrip.com>, and that Complainant has not licensed or otherwise authorized Respondent to use the POPGRIP mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “wang jing,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner). See also Navistar International Corporation v. N Rahmany, FA 620789 (Forum June 8, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent fails to make a bona fide offering of goods or services by means of the <logopopgrip.com> domain name or a legitimate noncommercial or fair use of it, in that, Respondent uses the domain name to pass itself off online as being Complainant in an effort to confuse Internet users and divert them to a website that purports to offer Complainant’s authentic products, but which are in fact counterfeit. This employment is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum August 19, 2015) (finding no bona fide offering of goods or services or legitimate noncommercial or fair use existed where a respondent used a website resolving from a challenged domain name to sell products branded with a UDRP complainant’s mark which products were either counterfeit products or legitimate products of Complainant being resold without authorization). See also Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum September 14, 2006) (finding that a respondent’s use of a UDRP complainant’s mark in a domain name employed to redirect Internet users to that respondent’s own website for commercial gain did not constitute either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii)).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s use of the contested <logopopgrip.com> domain name, as alleged in the Complaint, disrupts Complainant’s business. Under Policy ¶ 4(b)(iii), this stands as proof of Respondent’s bad faith in registering and using the domain name. See, for example, Ontel Products Corporation v. waweru njoroge, FA1762229 (Forum December 22, 2017):
Respondent’s primary offering seem to be counterfeits of Complainant’s … products. Respondent’s use of the … domain name is thus disruptive to Complainant’s business per Policy ¶ 4(b)(iii).
We are also convinced by the evidence that Respondent’s employment of the <logopopgrip.com> domain name, which we have found to be confusingly similar to Complainant’s POPGRIP trademark, is an attempt by Respondent to profit from the confusion thus caused among Internet users as to the possibility of Complainant’s association with the domain name. Under Policy ¶ 4(b)(iv), this too stands as proof of Respondent’s bad faith in registering and using the domain name. See, for example, H-D Michigan, LLC v. Ross, FA 1250712 (Forum April 23, 2009) (determining that a respondent’s selling of counterfeit products created a likelihood of confusion among Internet users as to the possibility of a UDRP complainant’s affiliation with a disputed domain name, thus allowing that respondent to profit from such confusion, and demonstrating bad faith registration and use of the domain name under Policy ¶ 4(b)(iv)).
Finally, under this head of the Policy, it is plain from the record that Respondent knew of Complainant and its rights in the POPGRIP mark when it registered the <logopopgrip.com> domain name. This further illustrates Respondent’s bad faith in registering it. See, for example, Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum February 6, 2014):
The Panel … here finds actual knowledge [by a respondent of a UDRP complainant’s rights in a mark at the time a disputed domain name was registered, and thus that respondents bad faith in registering the domain name] through the name used for the domain and the use made of it.
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <logopopgrip.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 11, 2020
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page