PopOut, Inc. v. Ghotts Tunch
Claim Number: FA2009001912522
Complainant is PopOut, Inc. (“Complainant”), represented by David A. W. Wong of Barnes & Thornburg LLP, California, USA. Respondent is Ghotts Tunch (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <shippodelivery.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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 16, 2020; the Forum received payment on September 16, 2020.
On September 16, 2020, NameSilo, LLC confirmed by e-mail to the Forum that the <shippodelivery.com> 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 September 21, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 13, 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@shippodelivery.com. Also on September 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 October 16, 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Popout, Inc., provides an online shipping platform at the website www.goshippo.com and under the trademark SHIPPO. This service connects businesses with the best package shipping options from companies such as UPS, FedEx, and DHL. Complainant has rights in the SHIPPO mark based on use in commerce dating back to 2014 and registration with various national offices such as the United States Patent and Trademark Office (USPTO), the Australian Trademarks Register, and the European Intellectual Property Office (EUIPO), as of 2017. Respondent’s <shippodelivery.com> domain name, registered on June 15, 2020, is confusingly similar to Complainant’s SHIPPO mark because it merely adds the generic term “delivery” and the “.com” generic top level domain (“gTLD”) to the mark.
Respondent does not have rights or legitimate interests in the <shippodelivery.com> domain name. Respondent is not commonly known by the disputed domain name and does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to impersonate Complainant in order to phish for the personal and financial information of consumers.
Respondent registered and uses the <shippodelivery.com> domain name in bad faith. Respondent uses the disputed domain name to impersonate Complainant and attract users to Respondent’s own website for commercial gain. Additionally, Respondent has constructive and/or actual knowledge of Complainant’s rights in the SHIPPO mark based upon Respondent’s deliberate use of this distinctive mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to multiple trademarks in which Complainant has rights;
(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:
(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 and supported 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 argues that Respondent’s <shippodelivery.com> domain name is confusingly similar to Complainant’s mark because it merely adds the generic term “delivery” and the “.com” gTLD to Complainant’s SHIPPO mark. Under Policy ¶ 4(a)(i), the addition of a generic term and gTLD to a mark is typically insufficient to distinguish the domain name from the mark. See Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).”) Complainant notes that the disputed domain name is particularly confusing for consumers because the term “delivery” directly refers to the services offered by Complainant and Respondent intentionally attempts to impersonate Complainant via the domain name and resolving webpage. Thus, the Panel finds that the disputed domain name is confusingly similar to the SHIPPO 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 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 does not have rights or legitimate interests in the <shippodelivery.com> domain name because Respondent is not commonly known by the disputed domain name. In considering this issue, WHOIS information can be used to show that a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”) Here, the WHOIS information lists “Ghotts Tunch” as the registrant of the <shippodelivery.com> domain name and no other information suggests that Respondent is known otherwise. Thus, the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the disputed domain name to pass itself off as Complainant in order to phish for consumers personal and financial information. Use of a disputed domain name to pass oneself off as a complainant and engage in fraudulent activity is not considered a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Bittrex, Inc. v. Caroline Alves Maia, FA 1796113 (Forum Aug. 6, 2018) (finding the respondent’s attempt to pass itself off as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was “virtually identical, with the same color scheme, the same layout and the same substantive content.”); see also DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”); see additionally Enterprise Holdings, Inc. v. I S / Internet Consulting Services Inc., FA 1785242 (Forum June 5, 2018) (“On its face, the use of a domain name that is confusingly similar to the mark of another in order to facilitate a phishing scheme cannot be described as either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii).”) Complainant provides screenshots of the resolving webpages for the disputed domain name that feature Complainant’s SHIPPO mark and its graphic logo. It is apparent that Respondent’s site further mimics the appearance and content of Complainant’s own legitimate website. Complainant contends that Respondent uses the disputed domain name and resolving website to impersonate Complainant and deceive consumers seeking Complainant’s services in order to phish for their personal and financial information. Respondent has made no reply or other submission in this case and the Panel finds, by a preponderance of the available evidence, that Respondent is not using the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant argues that Respondent had constructive and/or actual knowledge of Complainant’s rights in the SHIPPO mark based on the distinctiveness of the mark and registration with various national trademark offices such as the USPTO. While Panels have determined that constructive notice is typically insufficient for a finding of bad faith, Panels have found actual knowledge based on the fame and notoriety of a mark. See The Am. Auto. Assoc., Inc. v. Zag Media Corp., FA 1226952 (Forum Nov. 13, 2008) ("Mere constructive knowledge is insufficient to support a finding of bad faith."); see also 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”). Complainant has cited the “the continuous, significant, and substantially exclusive use of the Shippo Marks” and claimed that it is “a well-known provider of shipping and delivery services”. However, the only evidence that Complainant has submitted on this point is copies of its trademark registration certificates and screenshots of its own websites. While these items may demonstrate the existence of trademark rights, they do not speak to the scope of such rights or of Complainant’s business, or to how such mark has been received by, and any reputation it may have with the consuming public. Nevertheless, it is clear that Respondent had actual knowledge of Complainant’s SHIPPO mark and its business based on the content of the <shippodelivery.com> website.
Complainant argues that Respondent registered and uses the <shippodelivery.com> domain name in bad faith because Respondent uses the disputed domain name to pass itself off as Complainant and attract consumers to Respondent’s own website for commercial gain. Under Policy ¶ 4(b)(iv), the use of a disputed domain name to pass oneself off as a complainant and attract Internet users for commercial gain is evidence of bad faith registration and use. See American Cheerleader Media, LLC. v. ilir shoshi / cheer, FA 1592319 (Forum Jan. 20, 2015) (“The Panel here finds that Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) as … Respondent utilizes a logo and stylized font identical to Complainant’s own, as well as Complainant’s copyrighted images and text in an attempt to pass itself off as Complainant.”); See also Sister Sister LLC and James Charles Dickinson p/k/a “James Charles" v. Khanh Nguyen Van, FA 1911687 (Forum Oct. 8, 2020) (“Under Policy ¶¶ 4(b)(iii) and (iv), attempting to pass off as a Complainant by mimicking their website and attempting to sell Complainant’s goods without authorization or counterfeit goods is considered bad faith disruption for commercial gain.”) Complainant provides screenshots of the resolving webpages for the disputed domain that feature Complainant’s SHIPPO mark and logo and which mimic the appearance of Complainant’s own website. The site also contains a “get a quote” form in which users are invited to input their name, email address, and other personal information. There is also a phone number that users may call. Complainant contends that Respondent uses the disputed domain to deliberately impersonate it and deceive consumers into believing Respondent’s website is actually Complainant’s for the purpose of harvesting personal information and ultimately committing fraud. Respondent has not participated in this case and so does not dispute these assertions or otherwise provide any explanation for its actions. Therefore, as Respondent is passing itself off as Complainant and seeking to obtain personal information from users who visit its website, the Panel finds that Respondent has registered and is using 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 <shippodelivery.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: October 19, 2020
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page