See, Inc. v. yong guo
Claim Number: FA2301002026780
Complainant is See, Inc. (“Complainant”), represented by Hope V. Shovein of Brooks Kushman P.C., Michigan, USA. Respondent is yong guo (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cheap-seeshop.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.
The Honorable Neil Anthony Brown KC as Panelist.
Complainant submitted a Complaint to Forum electronically on January 9, 2023; Forum received payment on January 9, 2023.
On January 12, 2023, Name.com, Inc. confirmed by e-mail to Forum that the <cheap-seeshop.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 January 18, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 7, 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@cheap-seeshop.com. Also on January 18, 2023, 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 February 10, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil
Anthony Brown KC 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,
See, Inc. is in the eyewear business. Complainant asserts rights in the SEE
mark based upon registration with the United States Patent and Trademark Office
(“USPTO”) (e.g., Reg. no. 2,254,048, registered June 15, 1999). See
Compl. Ex. 3. Respondent’s <cheap-seeshop.com>
is confusingly similar to
Complainant’s SEE trademark because
it fully incorporates the mark and adds the generic words “cheap-“ and “shop”
and the generic top-level domain name(“gTLD”) “.com”.
Respondent does not have rights or legitimate interests
in the <cheap-seeshop.com> domain name. Respondent is not licensed
or authorized to use Complainant’s SEE
mark and is not commonly known by the
disputed domain name. Respondent also does not use the disputed domain name for
any bona fide offering of goods or services or legitimate noncommercial
or fair use. Rather, Respondent attempts passing off as Complainant to
sell counterfeits of Complainant’s goods.
Respondent registered and uses the <cheap-seeshop.com> domain name in bad faith. Respondent has a pattern of bad faith registration from prior proceedings. Respondent registered and uses the disputed domain name to disrupt Complainant’s business by creating a likelihood of confusion for commercial gain. Respondent had actual knowledge of Complainant’s rights in the SEE mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the premium eyewear industry.
2. Complainant has established its rights in the SEE mark based upon registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. no. 2,254,048, registered June 15, 1999).
3. Respondent registered the <cheap-seeshop.com> domain name on June 23, 2022.
4. Respondent has caused the domain name to be used to attempt to pass itself off as Complainant so as to sell counterfeits of 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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the SEE mark based upon registration of the mark with the USPTO (e.g., Reg. no. 2,254,048, registered June 15, 1999). See Compl. Ex. 3. Registration of a mark with the USPTO is considered a valid showing of rights under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”); see also Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Since Complainant has provided evidence of registration of the SEE mark with the USPTO, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s SEE mark. Complainant argues that the <cheap-seeshop.com> domain name is confusingly similar to Complainant’s SEE trademark because it fully incorporates the mark and adds the generic words “cheap-“and “shop” and the gTLD “.com”. The addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i). See Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Svensson Viljae, FA 1784650 (Forum June 1, 2018) (finding confusing similarity where “[t]he disputed domain name <skechers-outlet.com> adds a hyphen and the generic term ‘outlet’ to Complainant's registered SKECHERS mark, and appends the ‘.com’ top-level domain.”). Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s SEE mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s SEE mark and to use it in its domain name, adding the generic words “cheap-“and “shop” which does not negate the confusing similarity between the trademark and the domain name;
(b) Respondent registered the <cheap-seeshop.com> domain name on June 23, 2022;
(c) Respondent has caused the domain name to be used to attempt to pass itself off as Complainant so as to sell counterfeits of Complainant’s goods;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent does not have rights or legitimate interests in the <cheap-seeshop.com> domain name because Respondent is not licensed or authorized to use Complainant’s SEE mark and is not commonly known by the disputed domain name. 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 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)). 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 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 WHOIS information for the disputed domain name lists the registrant as “yong guo.” See Registrar Verification Email. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);
(f) Complainant contends Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent attempts passing itself off as Complainant to sell counterfeits of Complainant’s goods. Respondent’s use of a domain name to resolve to a website that mimics the color scheme associated with complainant and displays counterfeit versions of complainant’s products for purchase in an attempt to pass itself off as complainant, does not constitute a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii). See Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015) (finding no bona fide offering of goods or legitimate noncommercial or fair use existed where Respondent used the resolving website to sell products branded with Complainant’s MERRELL mark, and were either counterfeit products or legitimate products of Complainant being resold without authorization); see also Dell Inc. v. Devesh Tyagi, FA 1785301 (Forum June 2, 2018) (“Respondent replicates Complainant’s website and displays Complainant’s products. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (iii).”). Here, Complainant provides screenshots of its website and the disputed domain name’s resolving webpage showing similar websites and offerings of Complainant’s product or counterfeit products. See Complaint III.B.25. Thus, the Panel finds Respondent does not provide a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a formal Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant contends that Respondent has a pattern of bad faith registration, judging from prior proceedings. Respondent engages in bad faith pursuant to Policy ¶ 4(b)(ii) where the respondent has been unsuccessful in multiple previous UDRP cases. See DIRECTV, LLC v. michal restl c/o Dynadot, FA 1788826 (Forum July 5, 2018) (“The record contains evidence of Respondents previous eleven UDRP actions, all of which resulted in the transfer of the domain names, thus establishing bad faith per Policy ¶ 4(b)(ii).”). Here, Complainant provides a list of prior UDRP proceedings submitted to have resulted in transfer of domain names and hence to findings against Respondent. See Complaint III.D.36. Thus, the Panel finds that Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(ii).
Secondly, Complainant submits that Respondent registered and uses the disputed domain name to disrupt Complainant’s business by creating a likelihood of confusion for commercial gain. Use of a domain name to offer counterfeit goods does constitute bad faith under Policy ¶¶ 4(b)(iii) & 4(b)(iv). See Ontel Products Corporation v. waweru njoroge, FA1762229 (Forum Dec. 22, 2017) (“Respondent’s primary offering seem to be counterfeits of Complainant’s toy car products. Respondent’s use of the <magictrackscars.com> domain name is thus disruptive to Complainant’s business per Policy ¶ 4(b)(iii)”); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain). Here, the Panel notes that Complainant provides screenshots of its website and the disputed domain name’s resolving webpage showing similar websites and offerings of Complainant’s product or counterfeit products. See Complaint III.B.25. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) & 4(b)(iv).
Thirdly, Complainant argues Respondent had actual knowledge of Complainant’s rights in the SEE mark because of Respondent’s use of the mark. Per Policy ¶ 4(a)(iii), actual knowledge of a complainant’s trademark rights is sufficient to establish bad faith and can be demonstrated by the use the respondent makes of the domain name. See Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). Here, the Panel notes that Complainant provides screenshots of its website and the disputed domain name’s resolving webpage showing similar websites and offerings of Complainant’s products or counterfeit products. See Complaint III.B.25. As the Panel agrees, it finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cheap-seeshop.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC
Panelist
Dated: February 13, 2023
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page