Shopify Inc. v. Deborah R. Heacock
Claim Number: FA2009001913182
Complainant is Shopify Inc. (“Complainant”), represented by Richard J. Groos of King & Spalding LLP, United States. Respondent is Deborah R. Heacock (“Respondent”), United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <shopify.us>, registered with Dynadot, LLC.
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 September 21, 2020; the Forum received payment on September 21, 2020.
On September 23, 2020, Dynadot, LLC confirmed by e-mail to the Forum that the <shopify.us> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On September 23, 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@shopify.us. Also on September 23, 2020, a 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 19, 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 Paragraphs 1 and 2 of the Rules for usTLD Dispute Resolution Policy (the "Rules") to communicate with the parties via Electronic and Written Notices, as defined in Rule 1. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy and Rules, the related Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is an ecommerce company offering a platform for the operation of online and mobile retail stores.
Complainant holds a registration for the SHOPIFY trademark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 3,840,412, registered August 31, 2010.
Respondent registered the domain name <shopify.us> on March 9, 2013.
The domain name is confusingly similar to Complainant’s SHOPIFY mark.
Respondent has not been commonly known by the domain name.
Respondent has not been licensed or otherwise authorized by Complainant to use the SHOPIFY mark.
Respondent is not making a bona fide offering of goods or services via the domain name nor a legitimate noncommercial or fair use of it, in that Respondent makes no active use of the domain name.
Respondent has no rights to or legitimate interests in the domain name.
The address listed for Respondent in the relevant WHOIS record is not a valid address, inasmuch as Google Maps is unable to locate any such address, so that Respondent has provided false and misleading WHOIS information when registering the domain name.
Respondent knew of Complainant’s rights in the SHOPIFY mark when it registered the domain name.
Respondent has 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 substantively identical and 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered or 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”).
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel may draw upon UDRP decisions as applicable in rendering its decision in this proceeding.
Complainant has rights in the SHOPIFY trademark sufficient for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See, for example, Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA 1625332 (Forum July 17, 2015):
Registration of a mark with a governmental authority … is sufficient to establish rights in the mark for purposes of Policy ¶ 4(a)(i).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <shopify.us> domain name is both substantively identical and confusingly similar to Complainant’s SHOPIFY trademark. The domain name incorporates the mark in its entirety, with only the addition of the country-code Top-Level Domain (“ccTLD”) “.us.” Many panels have found that the addition of a ccTLD or other TLD to the mark of another in forming a domain name is irrelevant in determining the question of identity or confusing similarity under Policy ¶ 4(a)(i). See, for example, Blue Cross and Blue Shield Assoc. v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018):
A TLD (whether a gTLD, … or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to and legitimate interests in the <shopify.us> 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)-(iv), 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 there is nothing in the record before us suggesting that Respondent is the owner or beneficiary of a trademark or service mark that is identical to the <shopify.us> domain name. We conclude, therefore, that Respondent has no claim of rights to or legitimate interests in the domain name under Policy ¶ 4(c)(i). See, for example, Pepsico, Inc. v. Becky, FA 117014 (Forum September 3, 2002), finding that, because there was no evidence showing that a respondent owned a trademark or service mark reflecting a specific domain name, it could not lay claim to rights or legitimate interests in that domain name under Policy ¶ 4(c)(i).
We next observe that Complainant asserts, without objection from Respondent, that, although the <shopify.us> domain name was first registered on March 9, 2013, Respondent still makes no active use of it (a practice called “passive holding”). Because Respondent makes no use of the domain name, it cannot be said to use it in connection with a bona fide offering of goods or services within the contemplation of Policy ¶ 4(c)(ii). See Morgan Stanley v. Francis Mccarthy / Baltec Marine LLC, FA 1785347 (Forum June 8, 2018):
Inactive holding of a domain name does not qualify as a bona fide offering of goods or services ….
We turn then to Complainant’s contention, which Respondent does not deny, that Respondent has not been commonly known by the <shopify.us> domain name. In this connection we note that the pertinent WHOIS information identifies the registrant of the domain name only as “Deborah R. Heacock,” 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)(iii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018), finding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent only as “Bhawana Chandel.”
Finally, under this head of the Policy, because Respondent evidently has not made any active use of the disputed domain name from the time of its initial registration more than seven years ago to the present, we cannot conclude that Respondent is now making a legitimate noncommercial or fair use of it within the meaning of Policy ¶ 4(c)(iv).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
It remains only for us to consider the question whether Respondent has registered or is using the challenged <shopify.us> domain name in bad faith. We take the two prongs of this question in order.
We have already found that Respondent does not conduct any commercial or non-commercial business by means of the domain name, and this appears to have been true for the entire period of more than seven years of its existence. We also note that Complainant alleges, without contravention by Respondent, that the address listed for it in the relevant WHOIS record is not a valid address, so that it appears that Respondent has taken affirmative steps to ensure that its whereabouts cannot be determined, thus to frustrate any efforts to communicate with it. Further, it seems scarcely possible to conceive of any legitimate use to which Respondent might put a domain name the substance of which consists entirely of the registered mark of another. It is likewise difficult, if not impossible, to imagine that Respondent was unaware of this fact when it registered the domain name. Finally, in this connection, we have found that Respondent has no rights to or legitimate interests in the domain name. In light of all of these considerations, we are compelled to conclude that Respondent has registered the contested domain name in bad faith. See, for example, Telstra Corp. Ltd. v. Nuclear Marshmallows, D2000-003 (WIPO February 18, 2000):
Has the Complainant proved that the domain name "has been registered in bad faith" by the Respondent? … Respondent does not conduct any legitimate commercial or non-commercial business activity .... [T]he … Respondent has taken deliberate steps to ensure that its true identity cannot be determined and communication with it cannot be made…. [Moreover] it is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the domain name …. It is also not possible to conceive of a plausible situation in which the Respondent would have been unaware of this fact at the time of registration. These findings, together with the finding … that the Respondent has no rights or interests in the domain name, lead the Administrative Panel to conclude that the domain name … has been registered by the Respondent in bad faith.
We are also convinced by the evidence that Respondent knew of Complainant’s rights in the SHOPIFY mark when it registered the <shopify.us> domain name. This further demonstrates Respondent’s bad faith in registering it. See, for example, AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum December 24, 2018):
The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration … under Policy ¶ 4(a)(iii).
As to whether the <shopify.us> domain name has also been used in bad faith, it was long ago established that, in appropriate circumstances, the utter failure of a registrant to make any active use of a domain name may be taken as proof of its use of that domain name in bad faith. See, for example, Telstra Corp., supra:
[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.
The evidence before us demonstrates that the challenged domain name has remained passively held for more than seven years, and this in the absence of any evidence even of preparations for its eventual use. Taken together with the considerations set out above, this persuades us that Respondent is using the domain name in bad faith. See Telstra Corp., supra. See also CommScope, Inc. of North Carolina v. Zhuang Yan / WANGYONG, FA 1764026 (Forum February 14, 2018):
Respondent’s domain names do not have resolving websites. Using a domain name to resolve to an inactive website (or no website at all) indicates bad faith registration and use.
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 usTLD Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <shopify.us> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: November 5, 2020
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