URS DEFAULT DETERMINATION


Shimano, Inc. v. Super Dynadot et al.
Claim Number: FA2207002005408


DOMAIN NAME

<shimano-fishingreels.xyz>


PARTIES


   Complainant: Shimano, Inc. of Osaka, Japan
  
Complainant Representative: Jeffer Mangels Butler & Mitchell, LLP of Los Angeles, CA, United States of America

   Respondent: Super Privacy Service LTD c/o Dynadot of San Mateo, CA, US
  

REGISTRIES and REGISTRARS


   Registries: XYZ.COM LLC
   Registrars: DYNADOT LLC

EXAMINER


   The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Examiner in this proceeding.
   Antonina Pakharenko-Anderson, as Examiner

PROCEDURAL HISTORY


   Complainant Submitted: July 22, 2022
   Commencement: July 26, 2022
   Default Date: August 10, 2022
   Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules").

RELIEF SOUGHT


   Complainant requests that the domain name be suspended for the life of the registration.

STANDARD OF REVIEW


   Clear and convincing evidence.

FINDINGS and DISCUSSION



   Findings of Fact: Shimano, Inc. (Shimano) owns the federally registered and incontestable trademark SHIMANO (the “SHIMANO Mark”). The SHIMANO Mark is the subject of numerous trademark registrations throughout the world, including, among many others, U.S. Trademark Reg. Nos. 989509, 1606477, 1663779, and 2658068. The goods in connection with which the SHIMANO Mark is registered include, among many other items, fishing rods, reels, and lures, and bicycle parts and other cycling related items. Shimano is currently using the SHIMANO mark in connection with these goods, which fact can be confirmed by reviewing Shimano’s official website at <shimano.com> and its various regional websites, which are listed at https://www.shimano.com/en/Global/index.html. The Respondent did not submit a Response. Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.

  

Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.


[URS 1.2.6.1] The registered domain name(s) is/are identical or confusingly similar to a word mark:
  (i) for which the Complainant holds a valid national or regional registration and that is in current use; or
  (ii) that has been validated through court proceedings; or
  (iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.

Determined: Finding for Complainant 


The domain name <shimano­fishingreels.xyz> (the “Domain Name”) incorporates the entirety of the SHIMANO Mark and combines the SHIMANO Mark with (1) “fishing” – a generic word identifying the context and utility of goods made and sold by Shimano and linked to the Shimano Mark, and (2) “reels” – a generic word identifying a good made and sold by Shimano and linked to the Shimano Mark. Web users encountering the Domain Name will mistakenly believe that they can purchase authentic Shimano-branded products at the Domain, which is not the case. (See 3M Company v. Kabir S Rawat, FA 1725079 (Forum May 9, 2017); Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other). Therefore, the Examiner believes that the disputed domain name is identical to the Complainant’s trademark and consequently the Examiner finds that requirement set forth under Paragraph 1.2.6.1. of the URS Procedure has been satisfied.


[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.

Determined: Finding for Complainant 


The Complainant provided prima facie evidence that the Respondent does not have rights or legitimate interests in respect of the disputed domain name and is not using the Domain Name in connection with a bona fide offering of goods or services. Registrant is not commonly known by “shimano­fishingreels.xyz.” Registrant is not making a legitimate non­commercial or fair use of the SHIMANO Mark in the Domain Name. The Respondent, in the absence of any response, has not shown any facts or elements to justify rights or legitimate interests in the disputed domain name. Based on the above, the Examiner finds that the Respondent lacks any rights or legitimate interests with respect to the disputed domain names as per the requirement set forth under Paragraph 1.2.6.2. of the URS Procedure.


[URS 1.2.6.3] The domain name(s) was/were registered and is being used in bad faith.
  a. Registrant 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 documented out-of pocket costs directly related to the domain name; or
  b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; or
  c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
  d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant's web site 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 Registrant's web site or location or of a product or service on that web site or location.

Determined: Finding for Complainant 


The Registrant is using the Domain Name to operate a scam website (the “Website”) that sells purports to sell fishing equipment including reels and rods. Shimano also sells fishing equipment under the registered Shimano Mark, including reels and rods. The Website falsely associates the Shimano Mark with products that are not made or sold by Shimano, thereby luring consumers to send money and disclose personal information based on the false expectation that they will, in return, receive authentic, high-quality Shimano products. In this way, the Registrant is deliberately using counterfeits of the SHIMANO Mark to lure consumers to the Website and/or defraud them. Registrant is intentionally attempting to attract, for its own commercial gain, Internet users to the Website by creating a likelihood of confusion with the SHIMANO Mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s Website or the products advertised thereon. These findings lead to the obvious conclusion that the disputed domain name has been registered in bad faith. Therefore, the Examiner finds that the requirement set forth under Paragraph 1.2.6.3. of the URS Procedure has been satisfied by the Complainant.


FINDING OF ABUSE or MATERIAL FALSEHOOD


The Examiner may find that the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods.

The Examiner finds as follows:


  1. The Complaint was neither abusive nor contained material falsehoods. 

DETERMINATION


After reviewing the parties submissions, the Examiner determines that the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain name(s) be SUSPENDED for the duration of the registration:

  1. shimano-fishingreels.xyz

 

Antonina Pakharenko-Anderson
Examiner
Dated: August 13, 2022

 

 

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