Not a Real Holding Company, Inc. v. Nano Techan
Claim Number: FA2209002013326
Complainant is Not a Real Holding Company, Inc. (“Complainant”), USA represented by Ashly I. Boesche of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, Illinois. Respondent is Nano Techan (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <schitts-creek.shop>, registered with NameCheap, 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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to Forum electronically on September 23, 2022; Forum received payment on September 23, 2022.
On September 24, 2022, NameCheap, Inc. confirmed by e-mail to Forum that the <schitts-creek.shop> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 September 27, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 17, 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@schitts-creek.shop. Also on September 27, 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, Forum transmitted to the parties a Notification of Respondent Default.
On October 20, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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
i) Complainant claims rights in the SCHITT’S CREEK mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,964,319 registered January 21, 2020). The SCHITT’S CREEK mark has become well-known for Complainant’s popular branded products due to Complainant’s extensive promotion and use of the SCHITT’S CREEK mark. The disputed domain name is identical or confusingly similar to Complainant’s SCHITT’S CREEK mark as it wholly incorporates the mark, simply adds a hyphen between “SCHITT’S” and “CREEK,” and the “.shop” generic top-level domain (“gTLD”).
ii) Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its SCHITT’S CREEK mark in the disputed domain name. This WHOIS information is evidence that Respondent is not commonly known as the disputed domain name. Respondent does not use the domain name in connection with any bona fide offering of goods or services, nor a legitimate non-commercial or fair use. The disputed domain name’s resolving website is offering unauthorized or counterfeit goods as well as
genuine SCHITT’S CREEK merchandise. Respondent is engaged in typosquatting, which further evidences a lack of rights or legitimate interests in the disputed domain name.
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent uses the confusingly similar nature of the disputed domain name in order to attract users with a false impression of association with Complainant and disrupt Complainant’s business. The disputed domain name’s resolving website offers unauthorized or counterfeit goods as well as genuine SCHITT’S CREEK merchandise.
B. Respondent
Respondent did not submit a Response in this proceeding.
1. Complainant has established rights in the SCHITT’S CREEK mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,964,319 registered January 21, 2020).
2. The disputed domain name was registered on December 1, 2021.
3. The disputed domain name’s resolving website offers unauthorized or counterfeit goods as well as genuine SCHITT’S CREEK merchandise.
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 claims rights in the SCHITT’S CREEK mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,964,319 registered January 21, 2020). Registration with the USPTO is generally sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i). See Ecolab USA Inc. v. (name redacted), FA 2003001888902 (Forum Apr. 20, 2020) (“Complainant’s ownership of a USPTO registration for ECOLAB is sufficient to demonstrate its rights in a mark for the purposes of Policy ¶ 4(a)(i).”). As Complainant provides evidence of its registration with the USPTO, the Panel finds Complainant has rights in the SCHITT’S CREEK mark under Policy ¶ 4(a)(i).
Complainant argues that the disputed domain name <schitts-creek.shop> is identical or confusingly similar to Complainant’s SCHITT’S CREEK mark. The disputed domain name fully incorporates Complainant’s mark, simply adds a hyphen between “SCHITT’S” and “CREEK,” and the “.shop” generic top-level domain (“gTLD”). Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
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”).
Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed to Respondent any rights in the SCHITT’S CREEK mark. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The Panel notes that the WHOIS information for the disputed domain name lists the registrant as “Nano Techan.” Additionally, there is no evidence to suggest that Respondent was authorized to use Complainant’s mark in the disputed domain name. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate non-commercial or fair use. Complainant specifically points out that the disputed domain name’s resolving website offers unauthorized or counterfeit goods as well as genuine SCHITT’S CREEK merchandise. Complainant provides screenshots of the disputed domain name's resolving webpage showing the use of Complainant’s mark and offering sale for the goods which are in competition with those of Complainant. Thus, the Panel finds that Respondent does not provide a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. 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 has no rights or legitimate interests in the disputed domain name.
Complainant contends that Respondent registered and uses the disputed domain name in bad faith. Respondent uses the confusingly similar nature of the disputed domain name in order to attract users with a false impression of association with Complainant and disrupt Complainant’s business. The disputed domain name’s resolving website offers unauthorized or counterfeit goods as well as genuine SCHITT’S CREEK merchandise.
Use of a disputed domain name to pass off as a complainant and offer competing or counterfeit versions of its products may be evidence of bad faith per Policy ¶ 4(b)(iii) and (iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business), see also Guess? IP Holder L.P. and Guess?, Inc. v. LI FANGLIN, FA 1610067 (Forum Apr. 25, 2015) (finding respondent registered and used the domain name in bad faith per Policy ¶ 4(b)(iii) because the respondent used the resolving website to sell the complainant’s products, using images copied directly from the complainant’s website), see also 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 has provided the Panel with screenshots of the disputed domain name's resolving website displaying elements of Complainant's SCHITT’S CREEK mark, while displaying the message prominently that it is “The Official Schitts Creek Merchandise Store” while Respondent is not affiliated with or related in any way to Complainant, nor is Respondent licensed or authorized to use the SCHITT’S CREEK mark. Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) or (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <schitts-creek.shop> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: October 24, 2022
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