POC Sweden AB d/b/a POC North America v. Abfedh Rvsd
Claim Number: FA2210002014788
Complainant is POC Sweden AB d/b/a POC North America (“Complainant”), represented by Morgan T. Nickerson of K&L Gates LLP, Massachusetts. Respondent is Abfedh Rvsd (“Respondent”), CN.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pocsports.store>, registered with Name.com, Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to Forum electronically on October 5, 2022; Forum received payment on October 5, 2022.
On October 6, 2022, Name.com, Inc. confirmed by e-mail message addressed to Forum that the <pocsports.store> 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 7, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 27, 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 the attention of postmaster@pocsports.store. Also on October 7, 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 single-member Panel, Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Operating under the name and mark POC, Complainant designs, manufactures and sells a variety of helmets, eyewear, body armor, apparel and accessories for snow sports and cycling worldwide.
Complainant holds a registration for the POC trademark and service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 4,475,281, registered January 28, 2014.
Complainant does business online via the domain name <na.pocsports.com>.
Respondent registered the domain name <pocsports.store> on June 27, 2022.
The domain name is confusingly similar to Complainant’s POC mark.
Complainant sells its products online exclusively through a network of authorized dealers.
Respondent is not authorized to sell Complainant’s products.
Respondent is not licensed or otherwise authorized to use Complainant’s POC mark.
Respondent has not been commonly known by the disputed domain name.
Respondent does not use the domain name for either a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Rather, Respondent uses the domain name to sell online, and for profit, but at deeply discounted prices, goods purporting to be those of Complainant, but
which
may instead be counterfeits.
Respondent does not have rights to or legitimate interests in the domain name.
Respondent
knew of Complainant and its rights in the POC mark prior to registering the
domain name.
Respondent both registered and now uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark and service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
Preliminary Issue: Language Of The Proceeding
In the ordinary course, UDRP Rule 11(a) provides that the language of this proceeding should be the language of the registration agreement governing the challenged domain name. That language is Chinese. However, Complainant has requested that the language of the proceeding should instead be English. In support of this request, Complainant submits that:
(i) the disputed domain name wholly contains English words and characters;
(ii) the content of the website resolving from the domain name is entirely in English; and
(iii) these facts demonstrate Respondent’s proficiency in English;
Respondent does not contest any of these assertions. Moreover, it appears that to require Complainant to translate the documents required to prosecute this proceeding into Chinese would put Complainant to a substantial financial burden and would unnecessarily delay this proceeding. For these reasons, and because UDRP Rule 11(a) permits this Panel to proceed in a language other than that of the governing registration agreement “having regard to the circumstances of the administrative proceeding,” we conclude that it would be in the interests of justice to grant Complainant’s request. See, for example, The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (a panel there exercising its discretion under the cited Rule in deciding that the language of a proceeding should be English, notwithstanding the different language of the pertinent registration agreement, based on evidence that a respondent had command of the English language).
Accordingly, this proceeding will be conducted in the English language.
By reason of its registration of the POC trademark and service mark with a national trademark authority, the USPTO, Complainant has established that it has rights in that mark sufficient to satisfy the requirement of Policy ¶ 4(a)(i) that it demonstrate standing to pursue its claim against Respondent in this proceeding. This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here China). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy¶4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the central question posed by Policy¶4(a)(i), we conclude from a review of the record that Respondent’s <pocsports.store> domain name is confusingly similar to Complainant’s POC trademark and service mark. The domain name incorporates the mark in its entirety, with only the addition of the generic term “sports,” which identifies the nature of Complainant’s business, plus the generic Top Level Domain (“gTLD”) “.store,” an allusion to Complainant’s online marketing business model. These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See, for example, MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018):
The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the … mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.
See also Allianz of Amer. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding that adding to a mark a gTLD and the generic term “finance,” which described a UDRP complainant’s financial services business conducted under that mark, did not distinguish the resulting domain name from the mark under Policy¶4(a)(i)).
Further see Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum September 27, 2002):
[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy¶4(a)(i) analysis.
This is because every domain name requires a gTLD or other TLD.
Under Policy¶4(a)(ii), Complainant must make out a prima facie showing that Respondent has neither rights to nor legitimate interests in the <pocsports.store> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See, for example, Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum, August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP¶4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See, for example, Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy¶4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <pocsports.store> domain name, that Respondent is not authorized to sell Complainant’s products and that Complainant has not licensed or otherwise authorized Respondent to use the POC mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Abfedh Rvsd,” 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). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner).
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the contested domain name to sell online, and for profit, but at deeply discounted prices, goods purporting to be those of Complainant, but which may instead be counterfeits. This employment is neither a bona fide offering of goods or services by means of the domain name under Policy¶4(c)(i) nor a legitimate noncommercial or fair use of it under Policy¶4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum August 19, 2015) (finding no bona fide offering of goods or services and no legitimate noncommercial or fair use of a domain name that was confusingly similar to the mark of a UDRP complainant existed where a respondent used a website resolving from the domain name to sell products branded with that complainant’s mark, and where counterfeit products of that complainant were being resold on the same website without that complainant’s authorization).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy¶4(a)(ii).
We are persuaded by the evidence that Respondent’s employment of the challenged <pocsports.store> domain name, as detailed in the Complaint, disrupts Complainant’s business. Under Policy¶4(b)(iii), this stands as proof of Respondent’s bad faith in using the domain name. See, for example, Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum August 19, 2015), supra:
Complainant alleges that Respondent uses the … domain name for the purpose of disrupting Complainant’s business operations because it uses the resolving website to sell products that are either counterfeit versions of Complainant’s, or else, genuine versions being resold without authorization…. Past panels have found either use to constitute disruption under Policy¶4(b)(iii), thereby showing bad faith use. See Juicy Couture, Inc. v. Chinasupply, FA 1222544 (Forum Oct. 13, 2008) (holding that the selling of counterfeit versions of a complainant’s products disrupted the complainant’s business and is evidence of bad faith registration and use); see also 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).”).
It is also plain from the evidence that Respondent knew of Complainant and its rights in the POC mark when it registered the <pocsports.store> domain name. This demonstrates Respondent’s bad faith in registering it. See, for example, iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum January 1, 2018):
Respondent’s prior knowledge [of a UDRP complainant’s mark, and, therefore, its bad faith registration of a confusingly similar domain name] is evident from … Respondent’s use of its trademark[-]laden domain name to direct internet traffic to a website which is a direct competitor of Complainant.
The Panel thus finds that Complainant has met its obligations of proof under
Policy¶4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the domain name <pocsports.store> be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: November 7, 2022
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