LTWHP, LLC v. Cai Qian
Claim Number: FA2204001991968
Complainant is LTWHP, LLC (“Complainant”), represented by Eric Perrott of Gerben Perrott, PLLC, District of Columbia, USA. Respondent is Cai Qian (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <itlottosale.com>, registered with Name.com, Inc..
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.
The Honorable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 12, 2022; the Forum received payment on April 12, 2022.
On April 13, 2022, Name.com, Inc. confirmed by e-mail to the Forum that the <itlottosale.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, Inc. 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 April 14, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 4, 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@itlottosale.com. Also on April 14, 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 May 10, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honorable Neil Anthony Brown QC 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 made the following contentions.
Complainant owns the portfolio of LOTTO Marks used in connection with products sold in physical and online retail stores in connection with clothing, accessories, sporting foods and footwear. Complainant has rights in the LOTTO mark through its registrations with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. 1,378,169, registered May 30, 2006). See Compl. Ex. A. Respondent’s <itlottosale.com> domain name is identical or confusingly similar to Complainant’s mark as it incorporates the mark in its entirety and adds the words “it” and the “sale” alongside the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <itlottosale.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its LOTTO mark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead passes off as Complainant in furtherance of a phishing scheme.
Respondent registered and uses the <itlottosale.com> domain name in bad faith. Respondent disrupts Complainant’s business for commercial gain by impersonating Complainant and phishing for user information.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that owns the portfolio of LOTTO marks used in connection with products sold in physical and online retail stores and on its website.
2. Complainant has established its trademark rights in the LOTTO mark through its registrations with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. 1,378,169, registered May 30, 2006).
3. Respondent registered the <itlottosale.com> domain name on November 7, 2020.
4. Respondent uses the disputed domain name to pass itself off as Complainant in furtherance of a phishing scheme.
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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the LOTTO mark through its registrations with the USPTO (e.g. Reg. 1,378,169, registered May 30, 2006). See Compl. Ex. A. Registration with the USPTO is generally sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i). See Brooks Sports, Inc. v. Joyce Cheadle, FA 1819065 (Forum Dec. 28, 2018) (finding that Complainant’s registration of the BROOKS mark with the USPTO sufficiently conferred its rights in the mark under Policy ¶ 4(a)(i).”). Therefore, as the Panel agrees, it finds Complainant has rights in the LOTTO mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s LOTTO mark. Complainant argues that Respondent’s <itlottosale.com> domain name is identical or confusingly similar to the LOTTO mark. Under Policy ¶ 4(a)(i), adding the letters “it”, the country code for Italy, the generic word “sale” and the “.com” gTLD are generally regarded as insufficient to differentiating a disputed domain name from a mark it incorporates, enabling a finding that the domain name is confusingly similar to the relevant trademark. See Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> is confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name is immaterial to the analysis under Policy ¶ 4(a)(i)). The disputed domain name incorporates the LOTTO mark and adds the words “it” and “sale” alongside the “.com” gTLD. The objective internet user would take this to mean the sale of official Lotto products in Italy, Therefore, as the Panel agrees, it finds Respondent’s domain name is confusingly similar to the LOTTO mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also 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”).
(a) Respondent has chosen to take Complainant’s LOTTO mark and to use it in its domain name adding only the terms “it” for Italy and “sale” to the mark;
(b) Respondent registered the <itlottosale.com> domain name on November 7, 2020;
(c) Respondent uses the disputed domain name to pass itself off as Complainant in furtherance of a phishing scheme;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent is not commonly known by the <itlottosale.com> domain name, nor has Complainant authorized or licensed Respondent to use its LOTTO mark in the disputed domain name. Under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS Information may demonstrate that a Respondent is not commonly known by a disputed domain name, while a lack of evidence demonstrating otherwise may affirm a Complainant’s assertion that it never granted Respondent a license to use the mark. See Warner Bros. Entertainment Inc. v. José Gallardo, FA 1712001763166 (Forum Jan. 20, 2018) (“Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <hogwartsmystery.com> domain name, and that Complainant has licensed or otherwise authorized Respondent to use the HOGWARTS mark for any reason. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “José Gallardo,” 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)(ii).”). The WHOIS of record lists Respondent as “Cai Qian”, and nothing in the record rebuts Complainant’s assertion that it never authorized or licensed Respondent to use its mark in the disputed domain name. See Registrar Verification Email. Therefore, as the Panel agrees, it finds Respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent does not use the <itlottosale.com> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), passing off as Complainant in furtherance of a phishing scheme on a disputed domain name’s resolving website is generally not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See iFinex Inc. v. Yuri Hefetz / Genie-Solution, FA 1789385 (Forum July 9, 2018) (holding that the respondent’s mimicing the complainant’s website in order to cause existing or potential customers to falsely believe they are setting up a new account with the complainant is prima facie evidence of the respondent’s lack of rights and legitimate interests in the disputed domain name). Complainant provides a screenshot of the disputed domain name’s resolving website, which shows Complainant’s mark and purports to sell Complainant’s products. See Compl. Ex. F. Complainant also provides a screenshot of an email from an internet user who attempted to purchase products from the website but who did not received them. See Compl. Ex. E. Complainant argues that this demonstrates that Respondent is likely operating a fake online shop to collect personal and credit card information from users wishing to purchase the products advertised. As the Panel agrees, it finds Respondent is not using the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <itlottosale.com> domain name in bad faith. Under Policy ¶¶ 4(b)(iii) and (iv), passing off as a Complainant in emails and on a disputed domain name’s resolving website to phish for user information is generally considered evidence of bad faith disruption for commercial gain. 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.”). Complainant provides a screenshot of the disputed domain name’s resolving website, which shows Complainant’s mark and purports to sell Complainant’s products. See Compl. Ex. F. Complainant also provides a screenshot of an email from an internet user who attempted to purchase products from the website but did not receive them. See Compl. Ex. E. Complainant argues this evidence demonstrates that Respondent is likely operating a fake online shop to collect personal and credit card information from users wishing to purchase the products advertised. As the Panel agrees, it finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <itlottosale.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown QC
Panelist
Dated: May 12, 2022
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page