X Trademarks The Spot LLC v. Zhi Chao Yang
Claim Number: FA2111001971950
Complainant is X Trademarks The Spot LLC (“Complainant”), represented by Alexis Crawford Douglas of K&L Gates LLP, Illinois, USA. Respondent is Zhi Chao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pirateeship.com>, registered with West263 International Limited.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 4, 2021; the Forum received payment on November 4, 2021. The Complaint was received in English.
On November 9, 2021, West263 International Limited confirmed by e-mail to the Forum that the <pirateeship.com> domain name is registered with West263 International Limited and that Respondent is the current registrant of the name. West263 International Limited has verified that Respondent is bound by the West263 International Limited 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 November 11, 2021, the Forum served the English language Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of December 2, 2021 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@pirateeship.com. Also on November 11, 2021, the Chinese and English language 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 December 8, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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.
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case and the fact that Respondent has failed to object to proceeding in English, the Panel decides that the proceeding should be in English.
A. Complainant
Complainant contends as follows:
Complainant, X Trademarks The Spot LLC, is a Wyoming limited liability company.
Complainant exclusively licenses its trademarks to Pirate Ship, a company that helps small businesses buy postage and print shipping labels with UPS and USPS postage.
Complainant has rights in the PIRATE SHIP mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <pirateeship.com> domain name is confusingly similar to Complainant’s mark since it incorporates Complainant’s mark in its entirety, adding the letter “e” between “pirate” and “ship” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <pirateeship.com> domain name. Respondent is not commonly known by the at-issue domain name, nor has Complainant authorized Respondent to use the PIRATE SHIP mark. Additionally, Respondent does not use the domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use because the domain name resolves to a parked website that displays pay-per-click hyperlinks related to Complainant’s business.
Respondent registered and uses the <pirateeship.com> domain name in bad faith because Respondent has intentionally attempted to attract Internet users for commercial gain and to disrupt Complainant’s business. Specifically, Respondent uses the website at <pirateeship.com> as an advertising portal site for multiple businesses, misdirecting Internet users who mistype the <pirateship.com> domain name to Complainant’s website. Respondent likely receives revenue when misdirected Internet users click on the links. Moreover, Respondent had constructive and/or actual knowledge of Complainant’s rights in the PIRATE SHIP mark because Respondent’s <pirateeship.com> domain name is nearly identical to Complainant’s mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the PIRATE SHIP mark.
Complainant’s rights in PIRATE SHIP existed prior to Respondent’s registration of the at-issue domain name.
Respondent is not authorized to use Complainant’s trademarks.
Respondent’s at-issue domain name addresses a parked website that displays pay-per-click hyperlinks related to Complainant’s business.
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”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a USPTO trademark registration for the PIRATE SHIP mark establishes Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(I). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
The at-issue domain name consists of Complainant’s PIRATE SHIP trademark less its domain name impermissible space, with the letter “e” inserted after the marks first term and with all followed by the top level domain name “.com.” The differences between the at-issue <pirateeship.com> domain name and Complainant’s PIRATE SHIP trademark are insufficient to distinguish the domain name from Complainant’s trademark for the purposes of the Policy. Therefore, the Panel finds pursuant to Policy ¶ 4(a)(i) that Respondent’s <pirateeship.com> domain name is confusingly similar to Complainant’s PIRATE SHIP trademark. See Enterprise Holdings, Inc. v. Tynia Coleman / New Life Family Ministries, FA 1333282 (Forum Aug. 10, 2010) (holding that “the mere addition of the letter ‘e’ and a gTLD to a registered trademark generates confusing similarity between the disputed domain name and Complainant’s mark under Policy ¶ 4(a)(i)); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
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 the at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).
The WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Zhi Chao Yang” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by the <pirateeship.com> domain name or by PIRATE SHIP. The Panel therefore concludes that Respondent is not commonly known by the <pirateeship.com> domain name for the purposes of Policy ¶ 4(c)(ii). See SPTC, Inc. and Sotheby’s v. Tony Yeh shiun, FA 1810835 (Forum Nov. 13, 2018) (finding no rights or legitimate interests in the <sothebys.email> domain name where the WHOIS identified Respondent as “Tony Yeh shiun,” Complainant never authorized or permitted Respondent to use the SOTHEBY’S mark, and Respondent failed to submit a response.).
Respondent uses the <pirateeship.com> domain name to address a parked page featuring pay-per-click hyperlinks related to Complainant. The webpage prominently features links to “USPS Shipping Software,” and “Free USPS Shipping Software.” Complainant’s use of the domain name in this manner fails to show either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”); see also, McGuireWoods LLP v. Mykhailo Loginov / Loginov Enterprises d.o.o, FA1412001594837 (Forum Jan. 22, 2015) (“The Panel finds Respondent’s use of the disputed domain names to feature parked hyperlinks containing links in competition with Complainant’s legal services is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶ 4(a)(ii).
As discussed below without limitation, bad faith circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, Respondent’s use of the at-issue domain name to refer a webpage displaying pay-per-click links that compete with Complainant shows Respondent’s bad faith under Policy ¶ 4(b)(iii) and under Policy ¶ 4(b)(iv). See Transamerica Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1798316 (Forum Aug. 20, 2018) (“Respondent's use of the domain name to link to competitors of Complainant, presumably generating pay-per-click or referral fees for Respondent, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv).”); see also Zynex Medical, Inc. v. New Ventures Services, Corp, FA 1788042 (Forum July 2, 2018) (“The resolving webpage [] appears to display [competing] links such as “Electrical Stimulation” and “Physical Therapy Software.” Accordingly, the Panel agrees that Respondent disrupts Complainant’s business and attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) & (iv).”). Notably, Respondent’s offering of competing products via the confusingly similar <pirateeship.com> domain name indicates Respondent’s intent to create a likelihood of confusion between its domain name and Complainant’s trademark. Such confusion is calculated to result in the false perception that Respondent’s <pirateeship.com> domain name is sponsored by, or affiliated with, Complainant thereby further indicating Respondent’s bad faith under Policy ¶ 4(b)(iv).
Next, Respondent engages in typosquatting. Typosquatting is a practice whereby a domain name registrant deliberately introduces typographical errors or misspellings into a trademark and then uses the resulting string in a domain name. The registrant hopes that internet users will inadvertently type the malformed string when searching for content related to the domain name’s target trademark; or upon viewing the domain name will confound the two. The typosquatting registrant may then further exploit the internet users’ confusion. Here, Respondent inserts an extra “e” into Complainant’s PIRATE SHIP trademark then incorporates the misspelling in the at-issue domain name. At a glance, the at-issue domain name is easily confused with Complainant’s trademark and Complainant’s official website at <pirateship.com>. It is also likely that internet users may at times inadvertently add an extra “e” when trying to type Complainant’s actual domain name and then be waylaid by Respondent’s <pirateeship.com> website. Typosquatting, in itself, indicates bad faith under Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
Moreover, Respondent had actual knowledge of Complainant’s rights in the PIRATE SHIP mark when it registered <pirateeship.com> as a domain name. Respondent’s actual knowledge is evident from Respondent’s typosquatting of the Complainant’s PIRATE SHIP trademark as discussed elsewhere herein; and from Respondent’s display of the term “PIRATE ESHIP” as well as competitive links on its <pirateeship.com> website. Respondent’s registration and use of a confusingly similar domain name with knowledge of Complainant’s rights in such domain name shows Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii). See InfoSpace, Inc. v. Greiner, FA 227653 (Forum Mar. 8, 2004) (“Respondent’s domain name is a simple and popular variation of a trademark commonly used by typosquatters – the addition of the “www” prefix to a known trademark, in this case the DOGPILE mark. Such a domain name evidences actual knowledge of the underlying mark prior to the registration of the domain name, and as Respondent failed to submit any evidence to counter this inferrence [sic], Respondent’s actions evidence bad faith registration of the disputed domain name.”); see also, Norgren GmbH v. Domain Admin / Private Registrations Aktien Gesellschaft, FA1501001599884 (Forum Feb. 25, 2014) (holding that the respondent had actual knowledge of the complainant and its rights in the mark, thus demonstrating bad faith registration under Policy ¶ 4(a)(iii), where the respondent was using the disputed domain name to purposely host links related to the complainant’s field of operation).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pirateeship.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: December 9, 2021
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