iRobot Corporation v. Wang Chung / Yieldco / jason pomeroy / Pomeroy and Company Inc.
Claim Number: FA2104001943027
Complainant is iRobot Corporation (“Complainant”), represented by Halle B. Markus of Venable LLP, District of Columbia, USA. Respondents are Wang Chung / Yieldco / jason pomeroy / Pomeroy and Company Inc. (“Respondents”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <storeirobot.com>, <irobotcanada.com>, <irobotaustralia.com> and <irobotuk.com> (“the Domain Names”), registered with GoDaddy.com, 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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 27, 2021. The Forum received payment on April 27, 2021.
On April 28, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the Domain Names are registered with GoDaddy.com, LLC and that Respondents are the current registrants of the names. GoDaddy.com, LLC has verified that Respondents are bound by the GoDaddy.com, LLC registration agreement 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 May 3, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 24, 2021 by which Respondents could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondents’ registrations as technical, administrative, and billing contacts, and to postmaster@storeirobot.com, postmaster@irobotcanada.com, postmaster@irobotaustralia.com and postmaster@irobotuk.com. Also on May 3, 2021, 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’ registrations as technical, administrative and billing contacts.
Having received no response from Respondents, the Forum transmitted to the parties a Notification of Respondent Default.
On May 25, 2021, 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 Respondent.
Complainant requests that the domain name 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).
Complainant contends that all of the Domain Names are owned by the same entity because they all currently resolve, or previously resolved, to websites that appear visually identical to Complainant’s website and purport to sell the same or similar parts and accessories for Complainant’s products. Further, the websites associated with the Domain Names <storeirobot.com> and <irobotcanada.com> display a copyright notice identifying Robotics Corp Limited as the owner of the sites. According to the Better Business Bureau database, Robotics Corp Ltd has the same PO Box address as “Pomeroy and Company Inc.”, which is evidence of common ownership of these companies. The Panel notes that two of the Domain Names were registered on the same day and that all the Domain Names are registered with the same registrar.
In the absence of any evidence to the contrary, all the above circumstances demonstrate sufficient commonality as between the Domain Names to satisfy the Panel that they are commonly owned or controlled by a single person who is using multiple aliases. Henceforth this decision will refer to Wang Chung / Yieldco / jason pomeroy / Pomeroy and Company Inc. as “Respondent”.
A. Complainant
Complainant, iRobot Corporation, is a global consumer robotics company. Complainant has rights in the IROBOT mark based upon numerous registrations, including with the United States Patent and Trademark Office (“USPTO”). The Domain Names are essentially identical and confusingly similar to Complainant’s IROBOT mark.
Respondent does not have rights or legitimate interests in the Domain Names. Respondent is not authorized to use Complainant’s IROBOT mark and is not commonly known by the Domain Names. Additionally, Respondent does not use the Domain Names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses them to pass itself off as Complainant and offer goods related to Complainant’s business or fails to make any active use of the Domain Names.
Respondent registered and uses the Domain Names in bad faith. Respondent has displayed a pattern of bad faith through a previous UDRP case with Complainant. Respondent also passes itself off as Complainant for commercial gain by offering competitive goods under Complainant’s mark. Additionally, Respondent had actual knowledge of Complainant’s rights in the IROBOT mark when it registered 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 shown that it has rights in the IROBOT mark based upon numerous registrations with the USPTO, including Reg. No. 2,831,865, registered April 13, 2004. Each of the domain names <storeirobot.com>, <irobotcanada.com>, <irobotaustralia.com> and <irobotuk.com> contains Complainant’s IROBOT mark in its entirety, merely adding geographic or generic words, none of which suffice to distinguish any of the Domain Names from the mark. The inconsequential “.com” generic top-level domain (“gTLD”) may be ignored. Accordingly. The Panel finds each of the Domain Names to be confusingly similar to Complainant’s IROBOT mark.
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.
(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 <irobotcanada.com> domain name was registered on September 17, 2016, the <storeirobot.com> domain name was registered on December 9, 2020, and the <irobotaustralia.com> and <irobotuk.com> domain names were registered on December 17, 2020, in each case long after Complainant has shown that its IROBOT mark had become distinctive and widely known. Complainant also owns and uses the <irobotstore.com> domain name to resolve to its main website at “www.irobot.com”. The websites to which the Domain Names resolve or previously resolved have or had the look and feel of Complainant’s own website, purporting to sell authentic batteries, parts and accessories for Complainant’s robotic cleaning devices.
These circumstances, together 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). The Respondent has made no attempt to do so.
In the circumstances of this case, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.
Complainant has established this element.
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of a domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.
(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
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The Panel is satisfied, having regard to the circumstances set out in relation to the second element, that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites and of the products on its websites.
Accordingly, the Panel finds that Respondent registered and is using the Domain Names in bad faith in the circumstances set out in Paragraph 4(b)(iv) of the Policy.
Complainant has established this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <storeirobot.com>, <irobotcanada.com>, <irobotaustralia.com> and <irobotuk.com> domain names be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: May 27, 2021
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