Wyze Labs, Inc. v. Limoux Store
Claim Number: FA2002001883900
Complainant is Wyze Labs, Inc. (“Complainant”), represented by Jacob P. Dini, Washington, USA. Respondent is Limoux Store (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <wyzecam.store>, <wyze-store.com>, and <wyze.store>, registered with NameCheap, Inc..
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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 19, 2020; the Forum received payment on February 19, 2020.
On February 20, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <wyzecam.store>, <wyze-store.com>, and <wyze.store> domain names are registered with NameCheap, Inc. and that Respondent is the current registrant of the names. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 24, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 16, 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@wyzecam.store, postmaster@wyze-store.com, postmaster@wyze.store. Also on February 24, 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 22, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant relies on its rights in the WYZE and WYZECAM trademarks listed below and claims that it generates substantial sales from online orders through its website <wyze.com>, which incorporates its well-known and registered WYZE mark.
Complainant submits that each of the disputed domain names <wyzecam.store>, <wyze-store.com>, and <wyze.store> is confusingly similar to Complaint’s WYZE mark.
As each of the disputed domain names incorporate the entire WYZE or WYZECAM mark in the domain name, Complainant argues that this is sufficient to establish confusing similarity. The addition of the descriptive word “store” in each case is insufficient to dispel confusion. Wal-Mart Stores, Inc. v. MacLeod, D2000-0662 (WIPO Sept. 21, 2000) (“[A] domain name is ‘identical or confusingly similar’ to a trademark for purposes of the Policy when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name.”). Likewise, Complainant submits that the addition of the gTLD extensions (<.com> an <.store>) do not dispel confusion.
Complainant asserts that neither Respondent nor the disputed domain names are affiliated with or authorized by Complainant. Complainant alleges that Respondent is making unauthorized use of Complainant’s intellectual property on the websites to which the disputed domain names resolve, purporting to offer Complainant’s goods at discounted prices which suggests that Respondent may be using the websites to operate a scam. Such use cannot constitute bona fide, fair or noncommercial use.
Complainant further alleges that the disputed domain names are being used by Respondent for commercial gain. Robert Bosch GmbH v. Asia Ventures, Inc. Case No. D2005-0946 (WIPO Nov. 2, 2005) (no fair use where “there is a use with the intention of commercial gain of the disputed domain name.”). In support of this assertion, Complainant refers to the annexes to the Complainant which contain screenshots and search reports and alleges that <wyzecam.store> and <wyze-store.com> as of February 9, 2020 resolved to identical websites that purported to offer Complainant’s branded goods at discounted prices. As of the date of the Amended Complaint, the disputed domain name <wyze.store> resolved to a website purporting to offer apps for sale and had previously for a short period resolved to a website purporting to sell face masks. As of the date of the Complaint, the disputed domain name <wyzecam.store> was inactive.
Complainant submits that when a complainant makes out a prima facie case, the burden shifts to the respondent to show that it did in fact have rights and a legitimate interest in the domain names by showing it is using the domains for a bona fide offering of goods or under fair use.
Complainant submits that the disputed domain names were registered in bad faith. Complainant argues that Respondent knew of Complainant and its rights to the WYZE mark prior to registering the disputed domain names because the disputed domain names were registered in January and February 2020, whereas Complainant had been using the WYZE marks in connection with its smart home products for nearly two years.
Complainant alleges that Respondent is also acting in bad faith because Respondent used and is using the WYZE marks to mislead consumers to believe that the websites to which the disputed domain names have resolved, were and are affiliated with Complainant or otherwise using the disputed domain names which are confusingly similar to the WYZE mark to misdirect Internet traffic. In addition to using the WYZE marks in the disputed domain names, the websites to which the disputed domain names resolve have prominently displayed the WYZE marks on their home pages suggesting some affiliation or association with Complainant when no such affiliation or association exists. Complainant submits that such use, especially in combination with Respondent’s prior knowledge of Complainant’s rights to the WYZE mark, constitutes bad faith registration and use. Dell Inc. v. Priyadarshi, FA 1811046 (Forum Nov. 3, 2018) (finding bad faith registration and use where respondent’s website disrupted complainant’s business to commercially benefit from complainant’s mark by diverting internet traffic using the mark).
Additionally, Complainant submits that Respondent’s current use of the <wyze.store> domain name is in bad faith because Respondent is using the WYZE mark to attract visitors and redirect internet traffic to a website selling commercial products. Use in this manner constitutes bad faith registration and use. Adidas AG v. Amori, FA 1329852 (Forum July 21, 2010) (respondent’s use of disputed domains to display links to various other sites that do not compete to Complainant’s products found to be in bad faith).
Lastly, because the disputed domain name <wyzecam.store> is inactive and resolves to an “error page” instead of a website, Complainant submits that holding a confusingly similar domain without active use has been found to be evidence of bad faith use and registration. VideoLink, Inc. v. Xantech Corp., FA 1608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use under Policy ¶ 4(a)(iii).”).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant manufactures smart home products, including smart home cameras, light bulbs, and smart plugs.
Complainant is the owner of the following trademark registrations:
• United States registered trademark WYZE, registration number 5482810, registered on May 2, 2018 on the Principal Register for goods and services in international classes 9 and 35;
• United States registered trademark WYZE (figurative), registration number 5482811, registered on May 29. 2018 on the Principal Register for goods and services in international classes 9 and 35;
• United States registered trademark WYZECAM, registration number 5493860 registered on June 12, 2018, on the Principal Register for goods in international class 9;
• United States registered trademark WYZECAM, registration number 5515380, registered on July 10, 2018 for goods in international class 9.
Complainant has an established Internet presence and is the owner of the domain name <wyze.com> which resolves to its website.
The disputed domain names <wyzecam.store>, <wyze.store> and <wyze-store.com> were respectively registered on January 20, 2020, January 29, 2020, and February 3, 2020. The Registrar has confirmed that each of the disputed domain names are registered to Respondent.
The disputed domain names and <wyzecam.store> and <wyze-store.com> as of February 9, 2020 resolved to identical websites that purported to offer Complainant’s branded goods at discounted prices; As of the date of the Amended Complaint, the disputed domain name <wyze.store> resolved to a website purporting to offer apps for sale and had previously for a short period resolved to a website purporting to sell face masks. As of the date of the Complaint, the disputed domain name <wyzecam.store> was inactive.
There is no information available about Respondent, who has availed of a privacy service to conceal his identity, except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the Forum’s request for verification of the registration details for the disputed domain name in the course of 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 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 has adduced convincing uncontested evidence of its rights in the WYZE mark established through its abovementioned trademark registrations and its use of the mark in its smart home appliances business.
Each of the disputed domain names <wyzecam.store>, <wyze.store> and <wyze-store.com> incorporate the entire WYZE mark and <wyzecam.store> incorporates the WYZECAM mark. There are no other elements other than a hyphen in the case of <wyze-store.com> and the gTLD extensions (<.com> and <.store>).
Complainant’s WYZE mark is the initial and dominant element in each of the disputed domain names and is the only distinctive element in the <wyze.store> and <wyze-store.com>. The disputed domain name <wyzecam.store> is identical to Complainant’s WYZECAM mark. The other elements, namely the hyphen and the gTLD extensions <.com> and <.store> may be ignored for the purposes of comparison as they as they would be perceived as being technical necessities in the circumstances.
This Panel finds therefore finds therefore that the disputed domain names <wyze.store> and <wyze-store.com> are confusingly similar to Complainant’s WYZE mark and that the disputed domain name <wyzecam.store> is identical to Complainant’s WYZECAM mark.
Complainant has therefore satisfied the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names arguing that there is also no indication that Respondent is commonly known by the disputed domain names; that neither Respondent nor the disputed domain names are affiliated with or authorized by Complainant; that Respondent is making unauthorized use of Complainant’s intellectual property on the websites to which the disputed domain names resolve, purporting to offer Complainant’s goods at discounted prices; that such use suggests that Respondent may be using the websites to operate a scam; that the disputed domain names are being used by Respondent for commercial gain.
As Complainant submits, it is well established that the onus rests on Complainant to make a prima facie case and in such circumstances the burden of production shifts to Respondent to show that it has rights and a legitimate interest in the disputed domain names. Respondent has failed to file any response to the Complaint and so has failed to discharge the burden of production. In the circumstances this Panel must find that on the balance of probabilities Respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
On the evidence adduced, on the balance of probabilities Respondent was aware of Complainant and its rights to the WYZE mark prior to registering the disputed domain names. The disputed domain names were registered in January and February 2020 at which time Complainant had been using the WYZE marks in connection with its smart home products for nearly two years.
The subsequent use of the disputed domain names to target Complainant’s products supports this finding.
The evidence also shows that Respondent used and is using the WYZE marks to mislead consumers into believing the websites to which the disputed domain names have resolved, were and are affiliated with Complainant or otherwise using the disputed domain names which are confusingly similar to the WYZE mark to misdirect Internet traffic. Since the disputed domain names were registered they appear to have been used in a haphazard way, resolving to websites that purport to offer Complainant’s goods at discounted rates, to offer facemasks for sale and in the case of <wyzecam.store> to be inactive as of the date of the Complaint. Taken together such use is indicative of registration and use to take predatory advantage of Complainant’s goodwill to misdirect Internet traffic.
This Panel finds therefore that on the balance of probabilities, Respondent has intentionally used the disputed domain names, and each of them, attempting to attract, for commercial gain, Internet users to its web sites by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship ,affiliation, or endorsement of its web sites and is therefore using the disputed domain name in bad faith.
Furthermore this Panel finds that in the case of <wyzecam.store>, Respondent is passively holding the disputed domain name in bad faith, which when taken with the fact that Respondent has used a privacy service to shield its identity, allows this Panel to find in favor of Complaint.
This Panel finds therefore that the disputed domain name was registered and is being used in bad faith as Complainant has therefore succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) it is entitled to succeed in its application for transfer of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wyzecam.store>, <wyze-store.com>, and <wyze.store> domain names be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: March 23, 2020
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