Etsy, Inc. v. V\U0169 Le \U0110inh / Quoc Phu Ta / Tuyet Trinh Nguyen Thi / Dinh Tuan Le / Vinh Quynh Ngo / Le Dinh Vu
Claim Number: FA2010001918959
Complainant is Etsy, Inc. (“Complainant”), represented by David A. W. Wong of Barnes & Thornburg LLP, New York, USA. Respondents are V\U0169 Le \U0110inh / Quoc Phu Ta / Tuyet Trinh Nguyen Thi / Dinh Tuan Le / Vinh Quynh Ngo / Le Dinh Vu (“Respondents”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <etsyhoodie.com>, <etsylinda.com>, <etsymark.com>, <etsymarks.com>, <etsymarts.com>, <etsymerry.com>, <etsyshirt.com>, <etsysmart.com>, <etsystars.com>, <etsystock.com> and <etsystory.com>, registered with GoDaddy.com, LLC and <etsymilan.com>, registered with NameCheap, Inc. (the “Domain Names”).
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 30, 2020. The Forum received payment on October 30, 2020.
On
November 2, 2020 GoDaddy.com, LLC confirmed by e-mail to
the Forum that the <etsyhoodie.com>,
<etsylinda.com>, <etsymark.com>, <etsymarks.com>,
<etsymarts.com>, <etsymerry.com> and <etsyshirt.com>
domain names are registered with GoDaddy.com, LLC and their current
registrant is V\u0169 Le \u0110inh; that the <etsysmart.com>
domain name is registered with GoDaddy.com, LLC and its current registrant is Quoc
Phu Ta; that the <etsystars.com> domain name is registered
with GoDaddy.com, LLC and its current registrant is Tuyet Trinh Nguyen Thi;
that the <etsystock.com> domain name is registered with
GoDaddy.com, LLC and its current registrant is Vinh Quynh Ngo; and that
the <etsystory.com>, domain name is registered with
GoDaddy.com, LLC and its current registrant is Dinh Tuan Le.
On November 5, 2020 NameCheap, Inc. confirmed by e-mail to the Forum that the <etsymilan.com> domain name is registered with NameCheap, Inc. and its current registrant is Le Dinh Vu.
GoDaddy.com, LLC and NameCheap, Inc. have verified that Respondents are bound by the GoDaddy.com, LLC and NameCheap, Inc. registration agreements and have thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 10, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 30, 2020 by which Respondents could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondents’ registration as technical, administrative, and billing contacts, and to postmaster@etsyhoodie.com, postmaster@etsylinda.com, postmaster@etsymark.com, postmaster@etsymarks.com, postmaster@etsymarts.com, postmaster@etsymerry.com, postmaster@etsyshirt.com, postmaster@etsysmart.com, postmaster@etsystars.com, postmaster@etsystock.com, postmaster@etsystory.com, postmaster@etsymilan.com. Also on November 10, 2020, the Written Notice of the Complaint, notifying Respondents of the e-mail addresses served and the deadline for a Response, was transmitted to Respondents via post and fax, to all entities and persons listed on Respondents’ registration as technical, administrative and billing contacts.
Having received no response from Respondents, the Forum transmitted to the parties a Notification of Respondent Default.
On December 2, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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 Respondents.
Complainant requests that the Domain Names be transferred from Respondents to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
Paragraph 3(c) of the Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder”. Paragraph 1(d) of the Forum's Supplemental Rules defines “The Holder of a Domain Name Registration” as “the single person or entity listed in the registration information, as verified by the Registrar, at the time of commencement” and sub-paragraph 1(d)(i) provides that a Complainant wishing to make an argument for a single Respondent having multiple aliases must comply with Supplemental Rules 4(c) and 17(a)(i).
In the absence of any evidence to the contrary, the Panel is satisfied that the Domain Names are registered by the same domain name holder. Henceforth this decision will refer to V\U0169 Le \U0110inh / Quoc Phu Ta / Tuyet Trinh Nguyen Thi / Dinh Tuan Le / Vinh Quynh Ngo / Le Dinh Vu as “Respondent”.
A. Complainant
Complainant is the world leader in providing an outlet for the buying and selling of arts, crafts, and handmade and vintage goods. Complainant asserts rights in the ETSY mark due to its registration with the United States Patent and Trademark Office (“USPTO”). Respondent’s Domain Names are confusingly similar to Complainant’s ETSY mark.
Respondent lacks rights or legitimate interests in the Domain Names as Respondent is not commonly known by the Domain Names nor did Complainant authorize Respondent to use the ETSY mark in any way. Respondent fails to make a bona fide offering of goods or services or legitimate or noncommercial use. Instead, Respondent uses the Domain Names to divert those seeking Complainant’s website and services.
Respondent registered and uses the Domain Names in bad faith as Respondent attempts to confuse and divert Internet users who are seeking Complainant’s services. Respondent had actual knowledge of Complainant’s rights in the ETSY mark prior to the registration of the Domain Names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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 rights in the ETSY mark due to its registration with the USPTO, Reg. No. 3,179,782, registered on December 5, 2006. The Domain Names are confusingly similar to Complainant’s ETSY mark. Each incorporates the mark in its entirety and adds a generic term such as “shirt,” “hoodie,” or “stock” among others, none of which distinguish any of the Domain Names from Complainant’s mark, and the inconsequential “.com” generic top-level domain (‘gTLD’), which may be ignored.
Complainant has established this element.
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or 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) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The Domain Names were registered on the dates listed below:
<etsyshirt.com> October 22, 2019
<etsymark.com> November 27, 2019
<etsyhoodie.com> December 12, 2019
<etsylinda.com>, <etsymarts.com> and <etsymerry.com> February 11, 2020
<etsymilan.com> May 28, 2020
<etsymarks.com> May 31, 2020
<etsysmart.com> June 19, 2020
<etsystars.com> July 1, 2020
<etsystory.com> July 13, 2020
<etsystock.com> July 15, 2020
These circumstances, coupled with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain names on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the domain names. See 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”).
Respondent has made no attempt to do so. In the circumstances of this case, the Panel finds that Respondent has no rights or legitimate interests in respect of the domain names.
Complainant has established this element.
(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 who 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
Accordingly, the Panel finds that all the Domain Names were registered and are being used in bad faith.
Complainant has established this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <etsyhoodie.com>, <etsylinda.com>, <etsymark.com>, <etsymarks.com>, <etsymarts.com>, <etsymerry.com>, <etsyshirt.com>, <etsysmart.com>, <etsystars.com>, <etsystock.com>, <etsystory.com> and <etsymilan.com> domain names be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: December 7, 2020
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