Fox Factory, Inc. v. Mgde Jgde
Claim Number: FA2209002013922
Complainant is Fox Factory, Inc. (“Complainant”), represented by W. Bruce Patterson of Patterson + Sheridan, LLP, Texas, USA. Respondent is Mgde Jgde (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <foxfactorysale.com>, registered with Name.com, Inc..
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 Panelist in this proceeding.
Paul DeCicco, David Sorkin, Panelists, and Sandra J. Franklin, Panel Chair.
Complainant submitted a Complaint to Forum electronically on September 28, 2022; Forum received payment on September 28, 2022.
On September 29, 2022, Name.com, Inc. confirmed by e-mail to Forum that the <foxfactorysale.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 October 3, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 24, 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@foxfactorysale.com. Also on October 3, 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 November 3, 2022, pursuant to Complainant's request to have the dispute decided by a three-member Panel, Forum appointed Paul DeCicco, David Sorkin, as Panelists, and Sandra J. Franklin, as Panel Chair.
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
1. Respondent’s <foxfactorysale.com> domain name is confusingly similar to Complainant’s FOX FACTORY mark.
2. Respondent does not have any rights or legitimate interests in the <foxfactorysale.com> domain name.
3. Respondent registered and uses the <foxfactorysale.com> domain name in bad faith.
B. Respondent did not file a Response.
Complainant offers suspension system services and holds a registration for the FOX FACTORY mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 5,584,002, registered on October 16, 2018).
Respondent registered the <foxfactorysale.com> domain name June 9, 2022, and uses it to pass off as Complainant and to offer Complainant’s goods.
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 Panel finds that Complainant has rights in the FOX FACTORY mark through its registration with the USPTO. See Target Brands, Inc. v. jennifer beyer, FA 1738027 (FORUM July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”)
Respondent’s <foxfactorysale.com> domain name uses Complainant’s FOX FACTORY mark and simply adds the term “sale” along with the “.com” gTLD. Adding a generic or descriptive term and a gTLD is insufficient to distinguish a disputed domain name from the mark it incorporates. See Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per 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.”) Therefore, the Panel finds that Respondent’s <foxfactorysale.com> domain name is confusingly similar to Complainant’s FOX FACTORY mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 argues that Respondent has no rights or legitimate interests in the disputed domain name, as Respondent is not commonly known by the <foxfactorysale.com> domain name, and Complainant has not authorized or licensed Respondent to use its FOX FACTORY mark. The WHOIS information for the disputed domain name lists the registrant as “Mgde Jgde.” Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name, and thus has no rights 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)); see also 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).
Complainant contends that Respondent is not using the <foxfactorysale.com> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use, as Respondent uses the disputed domain name to pass off goods as Complainant’s goods. Purporting to sell a Complainant’s goods while displaying their mark and products is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Fadal Engineering, LLC v. DANIEL STRIZICH,INDEPENDENT TECHNOLOGY SERVICE INC, FA 1581942 (Forum Nov. 13, 2014) (finding that Respondent’s use of the disputed domain to sell products related to Complainant without authorization “does not amount to a bona fide offering of goods or services under policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”) Complainant provides screenshots of the disputed domain name’s resolving website, showing that Respondent purports to sell Complainant’s goods and displays Complainant’s mark and logo throughout the site. The Panel finds that this is not a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus Respondent has no rights under Policy ¶¶ 4(c)(i) or (iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <foxfactorysale.com> domain name in bad faith by disrupting Complainant’s business. Under Policy ¶ 4(b)(iii), using a disputed domain name to disrupt a Complainant’s business is evidence of bad faith registration and use. See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”) The Panel finds that Respondent’s use of the disputed domain name to purport to offer Complainant’s goods is a bad faith disruption of Complainant’s business under Policy ¶ 4(b)(iii).
Complainant also contends that Respondent registered and uses the <foxfactorysale.com> domain name in bad faith by diverting users to its website where it offers Complainant’s products. The Panel agrees and finds that this is evidence of bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See Fanuc Ltd v. Mach. Control Servs., FA 93667 (Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products).
The Panel finds that Complainant has satisfied 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 <foxfactorysale.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul DeCicco, Panelist
David Sorkin, Panelist
Sandra J. Franklin, Panelist and Chairperson
Dated: November 5, 2022
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