Woot LLC v. hh hh
Claim Number: FA2210002018183
Complainant is Woot LLC (“Complainant”), represented by David J. Diamond of Richard Law Group, Inc., Texas. Respondent is hh hh (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <woot.work>, 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to Forum electronically on October 31, 2022; Forum received payment on October 31, 2022.
On Oct 31, 2022, NameCheap, Inc. confirmed by e-mail to Forum that the <woot.work> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the names. 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 November 3, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 23, 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@woot.work. Also on November 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 30, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed James Bridgeman SC 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
Complainant claims rights in the WOOT and WOOT! trademarks and service marks established by its ownership of the portfolio of United States registrations and extensive use of the mark since complainant launched its services in 2004, and submits that has developed substantial reputation having become ranked as number one among the “Top 100 Retail Companies” of the fastest growing private companies in America followed by its highly publicized acquisition by Amazon.com in 2010.
Complainant submits that consumers have come to recognize the WOOT and WOOT! marks as indicators of high quality retail services.
Complainant alleges that the disputed domain name is identical to its WOOT mark and confusingly similar to its WOOT! mark, as it incorporates Complainant’s WOOT trademark in its entirety, adding only the top level domain (TLD) “.work”.
The addition of the generic Top Level Domain (“gTLD”) extension <.work> TLD does not distinguish the disputed domain name from Complainant’s registered marks. See, e.g., Postmates Inc. v. Cgee, FA2002001885467 (FORUM Mar. 19, 2020) (“[T]he Panel concludes that Respondent’s <postmates.work> domain name is identical to Complainant’s POSTMATES trademark.”).
Complainant next alleges that Respondent has no rights or legitimate interests in the disputed domain name arguing that Respondent is not commonly known by Complainant’s marks and the WHOIS currently identifies Respondent as “hh hh”.
Complainant adds that Respondent is not affiliated with Complainant in any way. Respondent is not licensed by Complainant to use Complainant’s WOOT and WOOT! marks. Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods and services. See Broadcom Corp. v. Ibecom PLC, FA0411000361190 (FORUM Dec. 22, 2004) (finding no rights or legitimate interests where there was nothing in the record to indicate that respondent was commonly known by the domain name).
Referring to screen captures of the website to which the disputed domain name resolves, which have been submitted in evidence in annexed to the Complaint, Complainant further argues that Respondent is using the disputed domain name to impersonate Complainant to offer a competing retail service as well as to deceive unsuspecting third parties into disclosing personal identification information in a phishing scheme.
Complainant contends that it’s WOOT! logo is prominently displayed in the header of the website to which domain name resolves. Complainant adds that the website also includes reference to “an amazon company,” and furthermore displays copies of Complainant’s Mortimer and Monte cartoon characters which are associated with Complainant’s services provided to the public.
Furthermore Complainant submits that the exhibited screen captures show that Respondent is impersonating Complainant on the website domain name resolves by: (1) using Complainant’s WOOT-OFF! mark; (2) providing Complainant’s Carrollton, Texas business address, email address of Complainant’s copyright agent, and a phone number beginning with the same 214 area code as Complainant’s contact number in the footer of Respondent’s landing page; and (3) copying Complainant’s privacy notice and terms and conditions.
Complainant argues that Respondent’s use of Complainant’s name and logos, trademarks, characters, color scheme, contact information, and copies of Complainant’s policies to impersonate Complainant and promote Respondent’s retail service is likely to confuse and mislead the public as to Respondent’s affiliation with Complainant and the legitimacy of Respondent’s retail service, which constitutes passing off and is not a fair, nominative, or otherwise legitimate use of the disputed domain name under the Policy. See Mulberry Co. (Design) Ltd. v. Chen, WIPO Case D2010-1718 (“[The] disputed domain names are being used by the Respondent for websites which falsely appear to be affiliated, connected, or associated with the Complainant. In this Panel’s view, such use and purpose of the disputed domain names without the authorization of the trade mark owner shows that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names or a bona fide offering of goods and services”).
Complainant adds that impersonating Complainant to mislead and defraud third parties in a phishing scheme is also not a bona fide or legitimate use of the domain name under the Policy. See Woot LLC v. 猩猩, FA2208002007177 (FORUM Sept. 6, 2022) (finding no bona fide or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii) where the respondent’s webpages displayed “Complainant’s mark and logo and identif[ied] Amazon—Complainant’s parent company” and sought to pass off respondent as affiliated with Complainant to phish for consumers’ information).
Furthermore, Complainant argues that Respondent’s use of the disputed domain name which is confusingly similar to Complainant’s well-known trademark to promote a competing retail service offered by Respondent is not a bona fide or otherwise legitimate use. See Marvin Lumber and Cedar Company v. Chan, FA1205001442493 (FORUM June 7, 2012) (finding that “sell[ing] products and services in direct competition with those that Complainant offers” is “neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use pursuant to Policy 4(c)(i) and 4(c)(iii)”).
Complainant next alleges that the disputed domain name was registered and used in bad faith arguing that Respondent’s impersonation of Complainant, as reflected in the exhibited screen captures, demonstrates that Respondent registered the disputed domain name with actual knowledge of Complainant’s WOOT Marks. See Woot LLC v. 猩猩, FA2208002007177 (FORUM Sept. 6, 2022) (“The Panel infers, due to the notoriety of Complainant’s [WOOT] mark and the manner of use of the disputed domain names that Respondent had actual knowledge of Complainant’s rights in the [WOOT] mark at the time of registering the disputed domain names”).
Complainant adds that Respondent’s registration of the disputed domain name with actual knowledge of Complainant’s rights is evidence of bad faith registration and use with regard to Policy ¶ 4(a)(iii). See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that “[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse”).
Furthermore, Complainant contends that Respondent is using the disputed domain name, Complainant’s name and logo, Complainant’s color scheme, and other express misrepresentations to pass itself off as Complainant, and this demonstrates bad faith under Policy ¶¶ 4(b)(iii) and (iv). See Woot LLC v. Not Disclosed Not Disclosed, FA1906001849637 (FORUM July 25, 2019) (finding bad faith under Policy ¶¶ 4(b)(iii) and (iv) where respondent used “the disputed domain name to pass off as Complainant to disrupt Complainant’s business, for its own commercial gain”).
Additionally, Complainant argues that Respondent’s attempt to commercially benefit, unfairly and opportunistically, from the goodwill associated with Complainant’s WOOT and WOOT! marks, and to conduct a diversion shows bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See V Secret Catalogue, Inc. v. Little, FA0407000301728 (FORUM Sept. 2, 2004) (“Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv)”).
Complainant further submits that Respondent’s use of the disputed domain name in furtherance of a phishing scheme is additional evidence of bad faith. See Woot LLC v. 猩猩, FA2208002007177 (FORUM Sept. 6, 2022) (“Complainant argues that Respondent attempts to pass itself off as affiliated with Complainant in furtherance of a phishing scheme. Therefore, the Panel finds that Respondent registered and uses the disputed domains in bad faith.”).
It is also contended that Respondent’s promotion of a competing retail service disrupts Complainant’s business and falls under Policy ¶ 4(b)(iii). See, e.g., Instron Corp. v. Kaner, FA0608000768859 (FORUM Sept. 21, 2006) (finding the use of a disputed domain name to operate a competing website to constitute bad faith under Policy ¶ 4(b)(iii)).
Finally, Complainant refers to the fact that Respondent is using a privacy shield to conceal his/her/their identity on the published WHOIS also evidences bad faith. Microsoft Corp. and Skype v. Contact Privacy Inc. Customer 0126766269, FA1303001491615 (FORUM May 6, 2013) (“Respondent registered the disputed domain name using a privacy service. In the commercial context, this raises the rebuttable presumption of bad faith registration and use. Respondent has done nothing to rebut this presumption. That alone justifies a finding of bad faith”).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant provides online retail services on its website at <www.woot.com> and is the owner of the following portfolio of trademark and service mark registrations in the United States of America:
· United States registered service mark WOOT (design), registration number 3,012, 788, registered on the Principal Register on November 8, 2005 for services in international class 35;
· United States registered trademark WOOT!, registration number 3,012, 780, registered on the Principal Register on September 9, 2008 for goods in international class 25;
· United States registered trademark and service mark WOOT!, registration number 3,397,587, registered on the Principal Register on May 18, 2008 for goods and services in international classes 28, 35 and 38;
· United States registered service mark WOOT!, registration number 4,098,136, registered on the Principal Register on February 14, 2012 for services in international class 35;
· United States registered trademark WOOT! (Design) registration number 5,041,342, registered on the Principal Register on September 13, 2016 for goods in international class 9;
· United States registered service mark WOOT! (design), registration number 4,664,240, registered on the Principal Register on December 30, 2014 for services in international class 41;
· United States registered service mark WOOT! (design), registration number 4,664,242, registered on the Principal Register on December 30, 2014 for services in international class 45;
· United States registered service mark WOOT! (design), registration number 4,731, 952, registered on the Principal Register on May 5, 2015 for services in international class 35.
The disputed domain name <woot.work> was registered on September 21, 2022 and resolves to develop website purporting to impersonate Complainant and offer competing ranges of general merchandise for sale.
There is no information available about Respondent except for that which is provided in the Complaint, the Registrar’s WHOIS, and the information provided by the Registrar in response to the request by the Forum for details of the registration of the disputed domain name for the purposes of this proceeding.
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 has provided convincing, uncontested evidence that it has rights in the WOOT and WOOT! trademarks and service marks, established by the ownership of the portfolio of USPTO registrations described above and the extensive use of the mark in its online retail business which it has illustrated in screen captures annexed to the Complaint.
The disputed domain name <woot.work> consists of Complainant’s WOOT mark in its entirety and the element “woot” in the WOOT! mark.
Complainant’s WOOT mark is the initial, dominant and only element in the disputed domain name aside from the gTLD extension <.work>.
The absence of the exclamation point “!” in the disputed domain name does not prevent a finding of confusing similarity with the WOOT! trademark and service mark.
In the circumstances of this proceeding, neither does the gTLD <.work> extension prevent a finding of confusing similarity with the WOOT and WOOT! trademarks and service marks as it would be considered by Internet users to be a necessary technical requirement for a domain name registration,
This Panel finds therefore that the disputed domain name is confusingly similar to the WOOT and WOOT! trademarks and service marks in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights legitimate interests in the disputed domain name arguing that
· Respondent is not commonly known by Complainant’s WOOT and WOOT! trademarks and service marks and the WHOIS currently identifies Respondent as “hh hh”;
· Respondent is not affiliated with Complainant in any way;
· Respondent is not licensed by Complainant to use the WOOT and WOOT! marks;
· Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods and services;
· the screen captures of the website to which the disputed domain name resolves, which have been submitted in evidence in annexed to the Complaint, show that Respondent is using the disputed domain name to impersonate Complainant to offer a competing retail service as well as to deceive unsuspecting third parties into disclosing personal identification information in a phishing scheme;
· the screen captures furthermore show that Complainant’s WOOT! logo is prominently displayed in the header of the website to which domain name resolves and the website also includes reference to “an amazon company,” and furthermore displays copies of Complainant’s Mortimer and Monte cartoon characters which are associated with Complainant’s services it defies of the public;
· the exhibited screen captures also show that Respondent is impersonating Complainant on the website domain name resolves by: (1) using Complainant’s WOOT-OFF! mark; (2) providing Complainant’s Carrollton, Texas business address, email address of Complainant’s copyright agent, and a phone number beginning with the same 214 area code as Complainant’s contact number in the footer of Respondent’s landing page; and (3) copying Complainant’s privacy notice and terms and conditions;
· the exhibits also show that Respondent is using Complainant’s name and logos, trademarks, characters, color scheme, contact information, and copies of Complainant’s policies to impersonate Complainant and promote Respondent’s retail service is likely to confuse and mislead the public as to Respondent’s affiliation with Complainant and the legitimacy of Respondent’s retail service, which constitutes passing off and is not a fair, nominative, or otherwise legitimate use of the disputed domain name under the Policy;
· such impersonation of Complainant to mislead and defraud third parties in a phishing scheme is also not a bona fide or legitimate use of the domain name under the Policy;
· neither is Respondent’s use of the disputed domain name which is confusingly similar to Complainant’s well-known trademark to promote a competing retail service offered by Respondent is not a bona fide or otherwise legitimate use.
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.
Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
The evidence adduced shows that the disputed domain name <woot.work> was registered on September 21, 2022, long after Complainant acquired its rights in the WOOT and WOOT! marks and expanded its goodwill and reputation in 2010, acquiring a global profile, by becoming an AMAZON company as shown for example in the New York Times article on the acquisition which has been adduced in evidence in the Complaint.
WOOT is a coined word. It has no obvious meaning other than as Complaiant trademark and service mark and is the only element in the disputed domain name, and so in the absence of any evidence to the contrary, this Panel must find that is improbable that the registrant of the disputed domain name was unaware of Complainant, its eponymous website, its WOOT and WOOT! marks and the goodwill and reputation which Complainant had established in the marks when the disputed domain name was chosen and registered.
This Panel finds therefore that on the balance of probabilities the disputed domain name was registered in bad faith with Complainant in mind, intending to take predatory advantage of Complainant, its goodwill and reputation in the WOOT and WOOT! marks.
The uncontested evidence adduced by Complainant also shows that the disputed domain name is being used as the address of a website that purports to sell retail goods online in an attempt to impersonate Complainant. Respondent’s website creates the impression that it is Complainant’s website by using Complainant’s marks within the disputed domain name and also using Complainant’s name and logos, trademarks, characters, color scheme, contact information, and copies of Complainant’s policies on the website to which the disputed domain name resolves in a clear attempt to impersonate Complainant.
Such use of the disputed domain name is likely to confuse and mislead the public as to Respondent’s affiliation with Complainant and the legitimacy of Respondent’s retail service, which is clearly Respondent’s intention.
Complainant has alleged, but not provided any evidence that Respondent is engaged in phishing. Such a serious allegation should not be made as a bare assertion without supporting evidence.
This Panel finds therefore that the disputed domain name is being used on bad faith as a website address to attract and confuse Internet users, who are misled to believe that Respondent’s website is in some was associated with Complainant, which it is not.
As this Panel has found that the disputed domain name was registered and is being used in bad faith Complainant has satisfied the third and final element of the test in 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 <woot.work> domain name be TRANSFERRED from Respondent to Complainant.
____________________________________
James Bridgeman SC
Panelist
Dated: December 1, 2022
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