Spyderco, Inc. v. jun zhang
Claim Number: FA2203001987011
Complainant is Spyderco, Inc. (“Complainant”), represented by Miriam Trudell of Sheridan Ross P.C., Colorado, USA. Respondent is jun zhang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <spydercoknivescn.com>, 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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 4, 2022; the Forum received payment on March 4, 2022.
On March 8, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <spydercoknivescn.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 March 9, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 29, 2022 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@spydercoknivescn.com. Also on March 9, 2022, 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 April 4, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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 manufactures and sells knives and related accessories. Complainant has rights in the SPYDERCO trademark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., 1,965,458, registered Apr. 2, 1996). The <spydercoknivescn.com> domain name is confusingly similar to Complainant’s trademark because Respondent has incorporated the entire trademark and added the generic word “knives,” the country code “cn” for China, and the “.com” generic top level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <spydercoknivescn.com> domain because Respondent is not commonly known by the disputed domain name and is not authorized to use Complainant’s SYPDERCO trademark. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the disputed domain to pass itself off as affiliated with Complainant.
Respondent has registered and uses the <spydercoknivescn.com> domain name in bad faith. Respondent uses the disputed domain to pass itself off as affiliated with Complainant for commercial gain. Further, Respondent used a privacy service to shield its identity. Finally, Respondent had constructive and actual knowledge of Complainant’s rights in the SYPDERCO trademark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner the following trademark registrations, registered with the United States Patent and Trademark Office (“USPTO”):
No. 1,965,458 SPYDERCO (word), registered April 2, 1996 for goods in Intl Class 8; and
No. 2,169,685 SPYDERCO (word), registered June 30, 1998 for services in Intl Class 35.
The Complainant is also owner the following national trademark registrations in the People's Republic of China (the home country of the Respondent):
No. 5759357 SPYDERCO (word), registered April 14, 2011 for goods in Intl Class 8;
No. 4759598 SPYDERCO (word), registered May 7, 2008 for goods in Intl Class 8;
No. 9030792 SPYDERCO (word), registered January 21, 2012 for goods in Intl Class 18;
No. 9030791 SPYDERCO (word), registered January 21, 2012 for goods in Intl Class 20;
No. 9030790 SPYDERCO (word), registered January 21, 2012 for goods in Intl Class 25;
No. 9030789 SPYDERCO (word), registered January 21, 2012 for services in Intl Class 35;
No. 8145149 SPYDERCO (word), registered April 20, 2011 for goods in Intl Class 25; and
No. 19191337 SPYDERCO (logo), registered December 21, 2017 for services in Intl Class 35.
The disputed domain name <spydercoknivescn.com> was registered on July 12, 2018.
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 Complainant claims rights in the SPYDERCO trademark through its registrations with the United States Patent and Trademark Office (USPTO), as well as the China National Intellectual Property Administration (CNIPA) (e.g., USPTO Reg. 1,965,458, registered Apr. 2, 1996; CNIPA Reg. 5759357, registered April 14, 2011, etc). Registration with multiple trademark agencies is generally sufficient in demonstrating rights in a trademark under Policy ¶ 4(a)(i). See Red Hat, Inc. v. Muhammad Shahzad, FA 1787738 (Forum June 19, 2018) (“Registration of a mark with multiple trademark agencies is sufficient to demonstrate rights to a mark per Policy ¶ 4(a)(i).”). Complainant has provided copies of Trademark Certificates from both USPTO and CNIPA. Therefore, the Panel find that Complainant has rights in the trademark SPYDERCO under Policy ¶ 4(a)(i).
The <spydercoknivescn.com> domain name is confusingly similar to Complainant’s trademark because Respondent has incorporated the entire trademark, and added a descriptive word, a geographic indicator, and a gTLD. Domain names which incorporate the entire trademark are generally considered confusingly similar, while adding a gTLD generally creates no distinction between a complainant’s trademark and a disputed domain name under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Further, adding a descriptive word or a geographic indicator does not create a sufficient distinction. See Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (finding that by adding the term “security” to the complainant’s VANCE mark, which described the complainant’s business, the respondent “very significantly increased” the likelihood of confusion with the complainant’s mark); see also Avaya Inc. v. Evelyn Dayda / Avaya Unlimited Sources LLC, FA 1611255 (Forum May 4, 2015) (finding that as “the ‘usa’ portion of the disputed domain name is a generic geographic term, the internet user will assume that the domain name deals with the activities of Complainant in the USA and that it will lead to a website dealing with that subject. The domain name is therefore confusingly similar to the AVAYA mark and the Panel so finds.”). Here, Respondent has incorporated the entire trademark, and added the descriptive word “knives,” and the letters “cn,” and the “.com” gTLD, and these changes may not create a sufficient distinction between Complainant’s mark and the disputed domain name. The letters “cn” may reference China, and geographic indicators do not create a sufficient distinction. Furthermore, the addition of the word “knives” may only add to the confusing similarity as it references Complainant’s products, namely knives and knife accessories. Therefore, the Panel find that Respondent’s domain name is confusingly similar to Complainant’s trademark per Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first 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, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Complainant claims that Respondent does not have rights or legitimate interests in the <spydercoknivescn.com> domain name because Respondent is not commonly known by the disputed domain name and is not associated with Complainant or authorized to use Complainant’s SPYDERCO trademark. When no response is submitted, WHOIS information can be used to show that a respondent 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.”). Additionally, lack of authorization to use a complainant’s trademark may demonstrate that the respondent is not commonly known by the disputed domain name. See Bittrex, Inc. v. Operi Manaha, FA 1815225 (Forum Dec. 10, 2018) (concluding that the respondent was not commonly known by the <appbittrex.com> domain name where the WHOIS information listed Respondent as “Operi Manaha,” and nothing else in the record suggested Respondent was authorized to use the BITTREX mark.).
Finally, use of a privacy service may also indicate that a Respondent is not commonly known by the complainant’s trademark or the disputed domain name. See Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). Here, there is no evidence available in the WHOIS information to suggest that Respondent is known by/as <spydercoknivescn.com> and no information suggests that Complainant authorized Respondent to use the SPYDERCO trademark. Rather, Respondent did not provide any identifying information and Complaint presumes Respondent used a privacy service to shield such information. The Registrar was subsequently able to confirm that the registrant of the domain is “jun zhang.” Therefore, the Panel find that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
The Complainant argues that Respondent does not use the <spydercoknivescn.com> domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), past panels have found no bona fide offering of goods or services, nor any legitimate noncommercial or fair use where the respondent uses the domain name to pass itself off as affiliated with the complainant. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name). Here, the resolving webpage displays Complainant’s trademark and logo as well as photos and models which appear on Complainant’s own webpage. Moreover, Respondent’s “About” page states that the Respondent’s resolving webpage is the “Chinese official website” of Complainant. Therefore, the Panel find that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii).
Complainant argues that Respondent has registered and uses the <spydercoknivescn.com> domain in bad faith because it registered the domain to create bad faith attraction for commercial gain through passing off as affiliated with Complainant. Registration and use of a disputed domain name which is essentially identical to a complainant’s trademark, and using that domain to falsely pass oneself off as affiliated with the complainant for commercial gain is clear evidence of bad faith per Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”); see also Russell & Bromley Limited v. Li Wei Wei, FA 1752021 (Forum Nov. 17, 2017) (finding the respondent registered and used the at-issue domain name in bad faith because it used the name to pass off as the complainant and offer for sale competitive, counterfeit goods).
Here, as discussed above, Complainant argues that Respondent uses the disputed domain name to host a webpage where it passes itself off as affiliated with Complainant. Furthermore, the webpage offers for sale products which are competitive with Complainant, and which Complainant suspects are counterfeit products of its own legitimate products, thereby potentially benefiting commercially from the confusion. The Panel agrees and find that Respondent has registered and uses the disputed domain in bad faith under Policy ¶ 4(b)(iv).
Second, Complainant argues that Respondent has registered and uses the <spydercoknivescn.com> domain in bad faith because of Respondent’s use of a privacy service to shield its identity, which is evidence of bad faith. See Phoenix Niesley-Lindgren Watt v. Contact Privacy Inc., Customer 0150049249, FA 1800231 (Forum Sept. 6. 2018) (“In a commercial context, using a WHOIS privacy service raises the rebuttable presumption of bad faith registration and use of the disputed domain name. An honest merchant in the marketplace does not generally try to conceal the merchant’s identity. Good faith requires honesty in fact. Respondent did nothing to rebut this presumption of bad faith. Therefore, the Panel will find bad faith registration and use for this reason.”). Here, as discussed above, Respondent failed to provide any identifying or contact information and Complaint believes Respondent used a privacy service to hide its identity. Again, the Panel agrees and find that Respondent has registered and uses the disputed domain in bad faith.
Finally, Complainant argues that Respondent registered the <spydercoknivescn.com> domain in bad faith because Respondent had constructive and actual knowledge of Complainant’s rights in the SPYDERCO trademark prior to registering the disputed domain name. While constructive knowledge alone is not sufficient to establish bad faith, actual knowledge may be evidence of bad faith per Policy ¶ 4(a)(iii). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”). Here, Complainant argues that Respondent had constructive knowledge given Complainant’s prior registration of the trademark with the USPTO.
Further, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the trademark given that its trademark is well-known. Additionally, actual knowledge may be found given that Respondent’s resolving webpage displays Complainant’s trademark and logo as well as competing or potentially counterfeit products. Therefore, the Panel agrees and find that Respondent registered the disputed domain in bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <spydercoknivescn.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: April 13, 2022
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