Airship Group, Inc. v. 林 凡
Claim Number: FA2212002022990
Complainant is Airship Group, Inc. (“Complainant”), USA, represented by Karen A. Webb of Fenwick & West LLP, California. Respondent is 林 凡 (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gummicubehk.com>, registered with Name.com, 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 December 6, 2022; Forum received payment on December 6, 2022.
On December 7, 2022, Name.com, Inc. confirmed by e-mail to Forum that the disputed 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 December 13, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 3, 2023 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@gummicubehk.com. Also on December 13, 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 January 5, 2023, 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 has rights in the GUMMICUBE mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,220,366, registered October 9, 2012). The disputed domain name is confusingly similar because it wholly incorporates Complainant’s mark differing only through the additions of the geographic term “hk” and the “.com” generic top-level domain (“gTLD”).
ii) 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 Respondent to use the GUMMICUBE mark in any way. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Respondent uses the disputed domain to pass off as Complainant and engages in a phishing scheme.
iii) Respondent registered and uses the disputed domain in bad faith. Respondent uses the disputed domain to pass off as Complainant in furtherance of a phishing scheme. Furthermore, Respondent had actual knowledge of Complainant’s rights in the GUMMICUBE mark prior to registration of the disputed domain.
B. Respondent
Respondent did not submit a response in this proceeding.
1. The disputed domain name was registered on September 15, 2022.
2. Complainant has established rights in the GUMMICUBE mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,220,366 registered October 9, 2012).
3. Respondent has copied the look and feel of Complainant’s legitimate website and is using Complainant’s identical name, font and logo on its website.
4. The disputed domain name’s resolving website uses the identical stylization of the mark GUMMICUBE that Complainant uses on its official GUMMICUBE website, <gummicube.com>, features Complainant’s exact GUMMICUBE logo, includes the words “an Airship Company” underneath the GUMMICUBE mark (just as Complainant’s website says “an Airship Company” underneath the GUMMICUBE mark on its official GUMMICUBE website), and uses the same blue and white color scheme Complainant uses on its official GUMMICUBE website.
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 GUMMICUBE mark through its registration with the USPTO (e.g., Reg. No. 4,220,366, registered October 9, 2012). Registration of a mark with a trademark agency such as the USPTO is generally sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). As Complainant provides evidence of registration with the USPTO, the Panel finds Complainant has established rights in the GUMMICUBE mark under Policy ¶ 4(a)(i).
Complainant argues that the disputed domain name <gummicubehk.com> is confusingly similar to Complainant’s GUMMICUBE mark because it incorporates wholly Complainant’s mark and is merely followed by the geographic term “hk” which is short for “hong kong” adding the “.com” gTLD. The addition of a geographic term and gTLD generally fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Dell Inc. v. SNAB Corporation, FA 1785051 (Forum May 30, 2018) (finding the inclusion of a geographic term did not distinguish the domain name and increased possible confusion, as “[t]he geographic term “hyderabad” is also suggestive of Complainant as Complainant has corporate offices in Hyderabad, India.”). Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s mark per 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 argues Respondent lacks rights or legitimate interest in the disputed domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been given license or consent to use the GUMMICUBE mark or register domain names using Complainant’s 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 Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). 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 Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The unmasked WHOIS information for the disputed domain lists the registrant as “林 凡.” Nothing in the records suggests that Respondent was given rights to use the GUMMICUBE mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name and was not granted use of Complainant’s mark per Policy ¶ 4(c)(ii).
Complainant argues that Respondent uses the disputed domain name to pass itself off as Complainant. The Panel notes from the screenshots of the disputed domain name’s resolving website and Complainant’s own website that the disputed domain name resolves to a website that substantially imitates Complainant’s website. Respondent has copied the look and feel of Complainant’s legitimate website and is using Complainant’s identical name, font and logo on its website. Specifically, the disputed domain name’s resolving website uses the identical stylization of the mark GUMMICUBE that Complainant uses on its official GUMMICUBE website, <gummicube.com>, features Complainant’s exact GUMMICUBE logo, includes the words “an Airship Company” underneath the GUMMICUBE mark (just as Complainant’s website says “an Airship Company” underneath the GUMMICUBE mark on its official GUMMICUBE website), and uses the same blue and white color scheme Complainant uses on its official GUMMICUBE website. The Panel finds that the use of the disputed domain name to pass off as Complainant fails to make a bona fide offering of goods and services or a legitimate noncommercial or fair use per Policy ¶ 4(c)(i) and 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 alleges that Respondent uses the disputed domain name to pass itself off as Complainant and conduct a phishing scheme to Internet users seeking technical support for Complainant’s services. Using an infringing domain name to pass off as a trademark holder in furtherance of a phishing scheme may demonstrate bad faith disruption of Complainant’s business, as well as attraction to commercial gain under Policy ¶¶ 4(b)(iii) and (iv). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”). As previously noted, Complainant provides a screenshot of the disputed domain name’s resolving website that substantially imitates Complainant’s website and attempts to obtain information from Internet users by deceptively imitating Complainant. Thus, the Panel finds bad faith registration and use of the disputed domain name under Policy ¶¶ 4(b)(iii) and (iv).
Complainant further contends that Respondent had actual knowledge of Complainant’s rights in the GUMMICUBE mark at the time of registering the disputed domain name. As noted above, Complainant provides a screenshot of the disputed domain name’s resolving website that substantially imitates Complainant’s website and attempts to obtain information from Internet users by deceptively imitating Complainant. The Panel infers, due to the manner of use of the disputed domain name that Respondent had knowledge of Complainant’s rights in the GUMMICUBE mark at the time of its registering the disputed domain name, and finds that Respondent registered the disputed domain in bad faith under 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 <gummicubehk.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: January 7, 2023
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