Aquatalia IP LLC and RTW Retailwinds Acquisition LLC v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2210002018398
Complainant is Aquatalia IP LLC and RTW Retailwinds Acquisition LLC (“Complainant”), represented by Renee Reuter, Missouri, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aqutalia.com>, registered with Godaddy.Com, Llc.
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.
Charles A. Kuechenmeister, Panelist.
Complainant submitted a Complaint to Forum electronically on October 31, 2022; Forum received payment on October 31, 2022.
On November 1, 2022, Godaddy.Com, Llc confirmed by e-mail to Forum that the <aqutalia.com> domain name (the Domain Name) is registered with Godaddy.Com, Llc and that Respondent is the current registrant of the name. Godaddy.Com, Llc has verified that Respondent is bound by the Godaddy.Com, Llc 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 7, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of November 28, 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@aqutalia.com. Also on November 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 December 5, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Charles A. Kuechenmeister 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 a Response from Respondent.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: Multiple Complainants
Two parties, Aquatalia IP LLC and RTW Retailwinds Acquisition LLC, filed this administrative proceeding as Complainants. The rules governing multiple complainants are Rule 3(a) and Forum’s Supplemental Rule 1(e). Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint in accordance with the Policy and these Rules.” Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as the “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.” Previous panels have interpreted Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In this case, the Complaint alleges that Aquatalia IP LLC and TRW Retailwinds Acquisitions are both owned by the same company, Saadia Group LLC. In support, the Complainants submitted printouts of articles posted on two different websites describing the acquisition of the two named Complainants by Saadia Group LLC (Complaint Exhibits A and B). Common ownership of both entities is similar to a subsidiary relationship, which has often been held to establish the required nexus between complainants. Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. kim seong su, FA1904001840242 (Forum June 3, 2019) (“Skechers U.S.A., Inc. II is a wholly owned subsidiary of Skechers U.S.A., Inc. . . . As the two Complainants in this case are in fact closely related, being part of the same company structure, the Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, and the Panel will therefore treat them together as a single entity in this proceeding.”), Bed Bath & Beyond Procurement Co, Inc. et al. v. shaoxuan li / lishaoxuan, FA1902001829423 (Forum Mar. 11, 2019). The same is true of intellectual property holding companies and their corporate parents. Guess? IP Holder L.P. and Guess?, Inc. v. New Ventures Services, Corp., FA1901001825019 (Forum Feb. 10, 2019) (“Complainant Guess IP Holder is a holding company concerned with Complainant Guess, Inc.’s intellectual property. The Panel therefore finds that the two Complainants (herein referred to collectively as Complainant) have a sufficient nexus to each other and to the matters complained of such that they shall be treated as if a single entity”). It is thus proper for both named Complainants to file and prosecute this single Complaint. The Panel will treat them as a single entity for the purposes of this proceeding. All references to “Complainant” in this Decision, even though in the singular, are to both named Complainants.
A. Complainant
Complainant operates in the e-commerce industry. Its AQUATALIA mark is registered with the United States Patent and Trademark Office (“USPTO”). Respondent’s <aqutalia.com> Domain Name is confusingly similar to Complainant’s mark as it wholly incorporates the AQUATALIA mark, merely omitting a letter “a” and adding the “.com” generic top-level-domain (“gTLD”).
Respondent has no rights or legitimate interests in the Domain Name. Complainant has not authorized, licensed, or otherwise permitted Respondent to use its mark, Respondent is not commonly known by the Domain Name, the Domain Name is a typosquatted version of Complainant’s mark, and Respondent is not using the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, the website resolving from the Domain Name attempts to install malware on the computer of persons who visit the site.
Respondent registered and uses the Domain Name in bad faith. It had constructive and actual knowledge of Complainant’s rights in the AQUATALIA mark when it registered the Domain Name, it uses the Domain Name to install malware on Internet users’ computers, it disrupts Complainant’s business, it has made a practice of registering and using infringing domain names, and it used a privacy service to register the Domain Name.
B. Respondent
Respondent did not submit a Response in 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 a complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(1) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the 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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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. Nevertheless, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. 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”), WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), at ¶ 4.3 (“In cases involving wholly unsupported and conclusory allegations advanced by the complainant, . . . panels may find that—despite a respondent’s default—a complainant has failed to prove its case.”).
The Panel finds as follows with respect to the matters at issue in this proceeding:
The AQUATALIA mark was registered to Krasnow Enterprises Ltd with the USPTO (Reg. No. 4,349,879) on June 11, 2013 and was subsequently assigned to Complainant (TESS printout included in Amended Complaint Exhibit D). Complainant’s ownership of this registration establishes its rights in the mark for the purposes of Policy ¶ 4(a)(i). DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrates its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). As assignee and current owner of the June 2013 USPTO registration, Complainant has sufficient rights in the AQUATALIA mark to bring and maintain this proceeding.
Respondent’s <aqutalia.com> Domain Name is identical to Complainant’s mark as it wholly incorporates the AQUATALIA mark, merely omitting a letter “a” and adding the “.com” gTLD. These changes do not distinguish the Domain Name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). Twitch Interactive, Inc. v. zhang qin, FA 1626511 (Forum Aug. 4, 2015) (finding, “The relevant comparison then resolves to the trademark, TWITCH, with the term, ‘titch,’ which, as can be readily seen, merely removes the letter ‘w’ from the trademark. In spite of that omission the compared integers remain visually and aurally very similar and so Panel finds them to be confusingly similar for the purposes of the Policy.”), Roche Therapeutics Inc. v. Williams Shorell, FA 1684961 (Forum Aug. 30, 2016) (“Complainant asserts Respondent’s <boniva.top> domain name is identical to the BONIVA mark. The addition of a generic top level domain to a mark does not differentiate the domain from said mark under Policy ¶ 4(a)(i).”). The WIPO Overview 3.0, at ¶ 1.7, states that the test for confusing similarity “typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name.” Notwithstanding the changes described above, Complainant’s mark is clearly recognizable within the Domain Name.
For the reasons set forth above, the Panel finds that the Domain Name is identical or confusingly similar to the AQUATALIA mark, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. 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”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) Before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;
(ii) The respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) The respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) Complainant has not authorized, licensed, or otherwise permitted Respondent to use the mark, (ii) Respondent is not commonly known by the Domain Name, (iii) the Domain Name is a typosquatted version of Complainant’s mark, and (iv) Respondent is not using the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, the website resolving from it attempts to install malware on the computer of persons who visit the site. These allegations are addressed as follows:
Complainant states that it has never authorized or permitted Respondent to use its mark. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name), Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”).
The information furnished to Forum by the registrar lists “Carolina Rodriguez / Fundación Commercio Electrónico” as the registrant of the Domain Name. Neither of these names bears any resemblance to the Domain Name. Evidence could, of course, in a given case demonstrate that the respondent is commonly known by a domain name different from the name in which it registered the domain name, e.g., the case of a domain name incorporating the brand name of a specific product offered by and associated with the respondent. In the absence of any such evidence, however, and in cases where no response has been filed, UDRP panels have consistently held that WHOIS evidence of a registrant name which does not correspond with the domain name is sufficient to prove that the respondent is not commonly known by the domain name. Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same), 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 is satisfied that Respondent has not been commonly known by the Domain Name for the purposes of Policy ¶ 4(c)(ii).
By registering the Domain Name with a subtle misspelling of Complainant’s mark, omitting one of the three “a”s in Complainant’s mark, Respondent is guilty of typosquatting, which is the intentional misspelling of a protected trademark to take advantage of typing errors made by Internet users seeking the web sites of the owners of the mark. Engaging in typosquatting is inconsistent with rights or legitimate interests in a domain name. Macy’s Inc. and its subsidiary Macy’s West Stores, Inc. v. chen wenjie c/o Dynadot Privacy, FA1404001552918 (Forum May 21, 2014) (“Respondent’s disputed domain names are typosquatted versions of Complainant’s registered mark. Typosquatting shows a lack of rights or legitimate interests.”).
Complaint Exhibit H is a screenshot of the website to which Internet traffic for the Domain Name is redirected. It displays a figure resembling a space creature and the message “Click ‘Allow’ if you are not a robot.” The Complaint states that an unsuspecting user who landed on this site could be tricked into clicking the “Allow” button, which could allow malware to be installed on the visitor’s computer. Complainant’s counsel apparently did not click on the “Allow” button out of concern that doing so would upload malicious malware onto her computer. Thus, there is no evidence demonstrating conclusively that malware would be installed, but the facts presented raise substantial likelihood that it would be, and there is no evidence from Respondent controverting Complainant’s allegations. Using a confusingly similar domain name to distribute malware is neither a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use within the meaning of Policy ¶¶ 4(c)(iii). Snap Inc. v. Domain Admin / Whois Privacy Corp., FA 1735300 (Forum July 14, 2017) (“Use of a disputed domain name to offer malicious software does not constitute a bona fide offering or a legitimate use per Policy ¶ 4(c)(i) & (iii).”), 24/7 Real Media Inc. v. Schultz, D2009-0043 (WIPO Mar. 5, 2009) (finding no bona fide offering of goods and services when the respondent used the disputed domain name for the distribution of malware or hostile software), Google Inc. v. Gridasov, FA 474816 (Forum July 5, 2005) (finding the respondent’s use of the disputed domain name, which attempted to download malicious computer software onto Internet users’ computers, was not 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)).
The evidence furnished by Complainant establishes the required prima facie case. On that evidence, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’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 the respondent’s web site or location or of a product or service on the respondent‘s web site or location.
The evidence of Respondent’s conduct discussed above in the rights or legitimate interests analysis also supports a finding of bad faith registration and use.
Complainant asserts that Respondent had constructive knowledge of Complainant and its AQUATALIA mark when it registered the Domain Name in November 2019 (WHOIS report submitted as Complaint Exhibit C shows creation date). Arguments of bad faith based on constructive notice are generally rejected. Panels have most frequently declined to find bad faith based upon constructive knowledge. The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). Nevertheless, it is evident that Respondent had actual knowledge of Complainant and its mark when it registered the Domain Name. Complainant’s AQUATALIA mark was registered in 2013 and had been used in commerce at least as early as the October 2012 filing date shown on the USPTO registration certificate included in Complaint Exhibit D. Further, Complainant’s mark is well-known throughout the world (list of countries in which Complainant’s mark is registered submitted as Complaint Exhibit E). It is unique, arbitrary and whimsical in nature and would not normally be chosen as the domain name for a business except to target Complainant. Respondent copied it verbatim, with a subtle misspelling, into the Domain Name. This does not fit within any of the circumstances listed in Policy ¶ 4 (b), but that paragraph recognizes that mischief can manifest in many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., D-2004-0955 (WIPO January 5, 2005). The list of circumstances set forth in Policy ¶ 4(b) is non-exclusive, allowing for consideration of additional factors in an analysis for bad faith, and registering a confusingly similar domain name with actual knowledge of a complainant’s rights in its mark is evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Next, as discussed above, Respondent is guilty of typosquatting. This also does not fit precisely within any of the circumstances listed in Policy ¶ 4(b) but given the non-exclusive nature of that paragraph, registering a typosquatted domain name has been held to be bad faith for the purposes of Policy ¶ 4(a)(iii). Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) (finding the respondent engaged in typosquatting—and thus registered and used the at-issue domain names in bad faith—where the names consisted of the complainant’s mark with small typographical errors introduced therein), Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.”).
Finally, as discussed above, it is extremely likely that Respondent uses the Domain Name to install malware on the computers of unsuspecting visitors to the website to which the Domain Name directs traffic. In light of the nonexclusive nature of Policy ¶ 4(b), using a confusingly similar domain name to install malicious malware onto other persons’ computers is, in and of itself, patently in bad faith for the purposes of Policy ¶ 4(a)(iii). eNom, Incorporated v. Muhammad Enoms General delivery / Enoms.com has been registered just few days after Enom.com, therefore could not have been regstere, FA1505001621663 (Forum July 2, 2015) (“In addition, Respondent has used the disputed domain name to install malware on Internet users’ devices. The Panel finds that this is bad faith under Policy ¶ 4(a)(iii).”), Twitter, Inc. v. Kiribati Media / Kiribati 200 Media Limited, FA1502001603444 (Forum Mar. 19, 2015) (“Using the disputed domain name to download malicious software into unsuspecting viewers’ computers evidences Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aqutalia.com> Domain Name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
December 7, 2022
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